Trials@uspto.gov
`571-272-7822
`
` Paper 27
`
` Date: June 22, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00336
`Patent 10,259,021 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JON M. JURGOVAN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
` Paper 27
`
` Date: June 22, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00336
`Patent 10,259,021 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JON M. JURGOVAN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2021-00336
`Patent 10,259,021 B2
`
`
`I. INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively “Petitioner”) filed a Petition for inter partes review of
`
`claims 1–19 of U.S. Patent No. 10,259,021 B2 (Ex. 1001, “the ’021 patent”).
`
`Paper 3 (“Pet.”). GUI Global Products, Ltd., D/B/A Gwee (“Patent Owner”)
`
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Upon review of
`
`these papers, we instituted inter partes review, pursuant to 35 U.S.C. § 314,
`
`as to claims 1–19 based on the challenges set forth in the Petition. Paper 11
`
`(“Decision to Institute” or “Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 15, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`
`Response (Paper 18, “Pet. Reply”), and Patent Owner filed a Sur-reply
`
`(Paper 19, “Sur-reply”). On April 12, 2022, we held an oral hearing. A
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`transcript of the hearing is of record. Paper 26 (“Tr.”).
`
`For the reasons that follow, we conclude that Petitioner has proven by
`
`a preponderance of the evidence that claims 1–19 of the ’021 patent are
`
`unpatentable.
`
`A. Related Matters
`
`The parties indicate that related district court litigations are GUI
`
`Global Prods., Ltd. d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624
`
`(S.D. Tex.) and GUI Global Prods., Ltd. d/b/a Gwee v. Apple, Inc., No.
`
`4:20-cv-02652 (S.D. Tex.). Pet. 76–77; Papers 8, 9. The parties also
`
`indicate that the ’021 patent is the subject of a petition filed by Apple, Inc. in
`
`IPR2021-00471. Papers 8, 9.1
`
`
`1 Petitioner inadvertently refers to the listed “IPR” cases as “IPR2020” rather
`than “IPR2021.” Paper 9, 3.
`
`2
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`B. The ’021 Patent
`
`The Specification of the ’021 patent describes how an apparatus may
`
`be used for cleaning view screens of electrical devices. Ex. 1001, 1:32–34.
`
`The ’021 patent aims to address the lack of convenient cleaning materials
`
`faced by users’ portable electronic devices. Id. at 1:54–2:8.
`
`In one embodiment, a cleaning component for cleaning a view screen
`
`of an electronic device is coupled to a first case of the electronic device
`
`using magnetic attractive force. Id. at 2:13–18, Fig. 1B.
`
`Figure 1B is illustrative and is reproduced below.
`
`
`
`Figure 1B shows a side view of a cleaning component. Id. at 4:33–34.
`
`Cleaning component 100 includes ferromagnetic or ferrimagnetic substrate
`
`102 covered by cleaning material 101, such as a fabric or a cloth. Id. at
`
`6:26–46.
`
`In another embodiment, a second case receives the cleaning
`
`component and also “functions to protect an electronic device’s primary
`
`case.” Id. at 2:42–55; Fig. 3.
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`3
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`Figure 3 is illustrative and is reproduced below.
`
`
`
`
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`Figure 3 shows a computer case configured to receive a cleaning
`
`component. Id. at 4:41–42. Laptop 300 has rectangular indentation 302
`
`dimensioned for receiving cleaning component 303 which has a magnet. Id.
`
`at 8:58–65.
`
`Figure 5A is also illustrative and is reproduced below.
`
`
`
`Figure 5A shows “a lateral type phone case configured to receive a
`
`cleaning component.” Id. at 4:45–46. Case 500 includes body 504 “which
`
`functions to hold a smart phone” and a lid having tip 501, side 502, hinge
`
`507, and cleaning component 503. Id. at 10:9–14.
`
`
`
`The cleaning component is secured and adhered to a case via
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`“dimensional stability to increase the security with which the cleaning
`
`components are adhered to the case.” Id. at 11:40–45; Fig. 9.
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`4
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`Patent 10,259,021 B2
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`Figure 9 is illustrative and is reproduced below.
`
`
`
`Figure 9 shows a cleaning component “employing a structural feature
`
`to enhance adhesion.” Id. at 4:56–57. Device 901 has raised section 902
`
`that is configured to fit within recess 904 of cleaning component 903. Id. at
`
`
`
`11:45–47.
`
`Still in another embodiment, the cleaning component has a magnetic
`
`element that activates or deactivates a magnetic switch. Id. at 3:1–3. The
`
`’021 patent describes “activating or deactivating a device having a magnetic
`
`switch” as a “secondary application[]” and that “cleaning devices” “may
`
`also be manufactured without a cleaning component for use with the
`
`secondary application.” Id. at code (57); see also id. at 11:59–62 (explaining
`
`that the cleaning component may be able to activate magnetic switches on
`
`devices having switches). Thus, a device “may or may not include cleaning
`
`capabilities but will include a rare earth magnet or magnets” for “additional
`
`functionality.” Id. at 16:30–32, 16:40–42.
`
`5
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`Figure 24 is illustrative and is reproduced below.
`
`
`
`
`
`
`
`Figure 24 shows a tablet computer having a switching device. Id. at
`
`5:49–50. Tablet computer 2400 has switching device 2401 that “is
`
`selectively coupled to the front of the portable electronic device 2402
`
`outside of the view screen 2403.” Id. at 18:5–9. A “magnetic switch is
`
`normally disposed with the portable electronic device but is shown [in
`
`Figure 24] for illustration purposes (2404).” Id. at 18:10–12. The ’021
`
`patent describes that the switching component “may be picked up” and the
`
`switching device “is either applied directly to the magnetic switch or applied
`
`to either side of the switch and then slid past it to activate or deactivate the
`
`portable electronic device.” Id. at 18:13–18.
`
`
`
`Figure 25, reproduced below, shows a side view of the switching
`
`device in Figure 24. Id. at 5:51–52, 18:19–20.
`
`
`
`Figure 25 shows switching device 2401 having bottom surface 2501,
`
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
`
`
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`6
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`disposed therebetween. Id. at 18:19–21, 18:23–25. Tab 2503 “on the top
`
`surface” facilitates manipulation of switching device 2401. Id. at 18:22–23.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–19 of the ’021 patent. Claim 1 is an
`
`independent claim, and claims 2–19 depend therefrom. Claim 1 is
`
`reproduced below.
`
`1. A system comprising:
`
`a portable switching device coupled to a portable electronic
`device;
`
`wherein:
`
`the switching device and the electronic device are
`configured
`to selectively couple
`to each other
`employing magnetic force;
`
`the switching device comprises a first case;
`
`the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
`
`a first magnet is fully disposed within the electronic
`device;
`
`the electronic device comprises at least one element
`selected from the group consisting of beveled edges,
`ridges, recessed areas, grooves, slots, indented shapes,
`bumps, raised shapes, and combinations thereof;
`configured to correspond to complementary2 surface
`elements on the switching device;
`
`the portable switching device is configured to activate,
`deactivate or send into hibernation the portable
`electronic device; and
`
`
`2 Per a Certificate of Correction, “complimentary” was changed to
`“complementary.” See IPR2021-00471, Ex. 1001, 27.
`
`7
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`when coupled, the first case functions to protect the second
`case.
`
`Ex. 1001, 21:38–22:7.
`
`D. Instituted Grounds of Unpatentability
`
`We instituted inter partes review based on the following grounds of
`
`unpatentability under 35 U.S.C. § 103(a)3 as follows (Dec. 8, 38):
`
`Claim(s) Challenged
`1–9, 11–15, 19
`10
`16, 17
`18
`
`
`
`35 U.S.C §
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Kim4
`Kim, Koh5
`Kim, Lee6
`Kim, Jiang7
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`Here, Petitioner alleges that the ’021 patent has a November 3, 2011
`effective filing date. Pet. 7–9. Patent Owner does not contest Petitioner’s
`assertions as to the November 3, 2011 effective filing date. See generally
`PO Resp. Because the November 3, 2011 effective filing date is before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. § 103.
`4 U.S. Pat. Appl. Pub. No. US 2010/0227642 A1, published Sept. 9, 2010
`(Ex. 1010, “Kim”).
`5 Korean Pat. Pub. No. 10-2008-0093178, published Oct. 21, 2008
`(Ex. 1012, 16–30, “Koh”). Petitioner provides a certified English-language
`translation of Koh (Ex. 1012, 1–15). Any reference to Koh hereinafter will
`be to the English-language translation.
`6 U.S. Pat. Appl. Pub. No. US 2010/0298032 A1, published Nov. 25, 2010
`(Ex. 1013, “Lee”).
`7 U.S. Pat. No. US 5,946,121, issued Aug. 31, 1999 (Ex. 1014, “Jiang”).
`
`8
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`II. DISCUSSION
`
`A. Principles of Law
`
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). A patent
`
`claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
`
`the claimed subject matter and the prior art are such that the subject matter,
`
`as a whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations
`
`including (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`skill in the art; and (4) when in evidence, objective evidence of
`
`nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe
`
`Kiaei, who testifies that a person having ordinary skill in the art “would have
`
`had at least a bachelor’s degree in electrical engineering, computer science,
`
`
`8 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
`
`9
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`or a similar field and one year of experience in consumer electronics product
`
`design” and that “[m]ore education can supplement practical experience and
`
`vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the
`
`declaration testimony of Dr. Mark Horenstein, who applies a similar
`
`definition and testifies that a person having ordinary skill in the art “would
`
`have been someone having either a bachelor’s degree in electrical
`
`engineering, computer science, or mechanical engineering with some level
`
`of post-baccalaureate electronic device or system design experience, or
`
`someone with an equivalent level of experience and training through other
`
`means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further
`
`testifies that “Dr. Kiaei’s definition of a POSITA9 is somewhat different
`
`than mine, nevertheless my opinions in This Declaration would be the same
`
`regardless of whether or not my description or Dr. Kiaei’s description of a
`
`POSITA is used.” Ex. 2004 ¶ 25.
`
`We adopt Petitioner’s definition of the level of skill for purposes of
`
`this Decision, except that we delete the phrase “at least” to avoid ambiguity
`
`in the definition of the level of skill. Patent Owner’s proposed level
`
`overlaps substantially with Petitioner’s proposed level. Even if we adopted
`
`Patent Owner’s proposed level, the outcome would remain the same.
`
`C. Claim Construction
`
`In an inter partes review, “[claims] of a patent . . . shall be construed
`
`using the same claim construction standard that would be used to construe
`
`the [claims] in a civil action under 35 U.S.C. 282(b), including construing
`
`the [claims] in accordance with the ordinary and customary meaning of such
`
`[claims] as understood by one of ordinary skill in the art and the prosecution
`
`
`9 Person of ordinary skill in the art.
`
`10
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`history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`
`For purposes of this Decision, we need not expressly construe any
`
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`
`are in controversy, and only to the extent necessary to resolve the
`
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`
`in the context of an inter partes review).
`
`D. Asserted Obviousness of Claims 1–9, 11–15, and 19 over Kim
`
`1. Kim
`
`Kim describes a mobile terminal that allows a sub-device to be
`
`attached thereto or detached therefrom. Ex. 1010 ¶ 3. Coupling and
`
`separation of a main device and a sub-device of the mobile terminal allow
`
`controlling an operation and a state of the mobile terminal. Id. ¶ 9. The
`
`mobile terminal includes a sub-device having an input/output unit and is
`
`attached to or detached from the mobile terminal, a controller configured to
`
`receive a user input via a certain communication path from the sub-device
`
`when the sub-device is separated, and control elements and applications of
`
`the mobile terminal according to the user input. Id. ¶ 10.
`
`Figure 1 is illustrative and is reproduced below.
`
`11
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`Figure 1 shows a schematic diagram of a mobile terminal. Id. ¶ 14.
`
`Mobile terminal 100 includes wireless communication unit 110, audio/video
`
`(A/V) input unit 120, user input unit 130, sensing unit 140, output unit 150,
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`memory 160, interface unit 170, controller 180, and power supply 190. Id.
`
`¶ 72. “More or less components may alternatively be implemented.” Id.
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`¶ 71. A/V input unit 120 may provide audio or video signal input via
`
`camera 121 to mobile terminal 100. Id. ¶ 84. Sensing unit 140 may detect
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`12
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`an open/close status or the state of mobile terminal 100. Id. ¶ 88. Output
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`150 may include display 151. Id. ¶ 95. Display 151 may have a transparent
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`organic light-emitting diode (TOLED) display. Id. ¶¶ 97–98.
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`“Embodiments may be used singly and/or by being combined together.” Id.
`
`¶ 179.
`
`Figure 7 is illustrative and is reproduced below.
`
`
`
`Figure 7 shows a mobile terminal including a main device and a sub-
`
`device. Id. ¶ 21. Main device 100 can be detachably attached to one or
`
`more sub-devices 300a–300n. Id. ¶ 181. Main device 100 may include
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`coupling unit 210 for mechanically coupling sub-devices 300a–300n,
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`coupling detection unit 220 that detects whether or not sub-devices
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`300a–300n are coupled, and connection unit 230 that allows signals or data
`
`to be transmitted or received between main device 100 and sub-devices
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`300a–300n. Id. ¶ 182. “Each of the sub-devices 300 may be configured to
`
`13
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`include all the same elements as those of the main device.” Id. ¶ 187.
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`“[W]hen the sub-device 300 is coupled to the main device 100, the main
`
`device 100 may automatically change its operation mode or an operation
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`mode of the sub-device.” Id. ¶ 195. Sub-device 300 may include frame 303
`
`(shown in Figure 9b). Id. ¶ 199. The structures for coupling sub-device 300
`
`are in accordance to the types of main device 100 which include “bar type,
`
`slide type, folder type, swing type, swivel type, watch time, and the like.”
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`Id. ¶ 210. A “magnet may be respectively attached to one side of the main
`
`device 100 and one side of the sub-device 300, to easily couple or separate
`
`(i.e., couple or de-couple) the main device 100 and the sub-device.” Id.
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`¶ 203. Main device 100 may have a recess corresponding to the shape and
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`size of sub-device 300, in which a magnet may be installed. Id.
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`14
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`Figure 11B is illustrative and is reproduced below.
`
`
`
`Figure 11B shows a structure for coupling or separating a sub-device
`
`to a folder type main device. Id. ¶ 25. A sub-device may be coupled to a
`
`main device via press-fitting coupling member 510 to position within a
`
`recess or hook formed in the main device. Id. ¶ 218. Alternatively, a
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`magnet may be provided in the main device such that third body 300 has a
`
`member that can be attached to the magnet, may be coupled while allowing
`
`“the first body 100a and the second body 100b may be folded or unfolded
`
`regardless of the coupling or separating of the sub-device.” Id. “Here, the
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`15
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`third body may be overlapped to be coupled to one of the first and second
`
`bodies in a state that the first and second bodies are coupled,” but “the
`
`method of coupling the third body to the first body in an overlapping
`
`manner” are only “described for the brevity.” Id. ¶ 217.
`
`Figure 15A is illustrative and is reproduced below.
`
`Figure 15A shows a structure for coupling or separating a sub-device
`
`to a watch-type main device. Id. ¶ 29. Here, first body 100a is connected to
`
`second body 100b by hinge 100d. Id. ¶ 256.
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`
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`16
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`Figure 15B is illustrative and is reproduced below.
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`Figure 15B also shows a structure for coupling or separating a sub-
`
`device to a watch-type main device. Id. ¶ 29. Here, coupling member 510
`
`also fixes a sub-device to a main device. Id. ¶ 261.
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`
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`2. Discussion
`
`Petitioner contends claims 1–9, 11–15, and 19 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Kim. Pet. 18–56. In support of its
`
`showing, Petitioner relies upon the declaration of Dr. Kiaei. Id. (citing
`
`Ex. 1002). In support of its arguments, Patent Owner relies upon the
`
`declaration of Dr. Horenstein. PO Resp. (citing Ex. 2004).
`
`Petitioner contends that Kim describes or renders obvious an
`
`embodiment that Petitioner schematically represents as “Figure A.” Pet. 21–
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`22. Petitioner references Figure A when accounting for several of the
`
`17
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`claim 1 limitations. Id. at 25–29, 32, 35–38, 43–44. Patent Owner argues
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`that Petitioner’s Figure A “does not actually appear in Kim nor is it
`
`described therein” and “is not obvious.” PO Resp. 5–36. As such, Patent
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`Owner argues that certain claim limitations, along with others, are not taught
`
`or suggested by Kim. Id. at 37–50. We first consider whether Kim discloses
`
`or renders obvious the representation of the Figure A embodiment and then
`
`address the arguments regarding claim limitations.
`
`For the reasons that follow, we conclude that Petitioner has met its
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`burden of proving by a preponderance of the evidence that each of the
`
`challenged claims 1–9, 11–15, and 19 would have been obvious in view of
`
`the asserted prior art.
`
`a. Kim Describes or Renders Obvious Figure A
`
`Kim Describes Figure A
`
`Petitioner contends that the system of Kim that primarily describes the
`
`elements of claim 1 results in a schematic representation, which Petitioner
`
`refers to as “Figure A.” Pet. 18–25. Below is Petitioner’s “schematic
`
`representation of such a mobile terminal,” labeled “Figure A.” Id. at 22
`
`(citing Ex. 1002 ¶ 87).
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`18
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`“Figure A” is a schematic representation reproduced in the Petition of
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`an embodiment described in Kim. Id. at 22. For this rendition, Petitioner
`
`argues that a POSITA would have understood that in the above embodiment,
`
`sub-device 300 detachably couples to second body 100b through coupling
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`members 510 (brown) and that members 510 can be recesses/hooks or
`
`magnets. Id. at 22–23 (citing Ex. 1010 ¶¶ 185, 218; Ex. 1002 ¶¶ 85–88).
`
`In particular, Petitioner contends, and we agree, that Kim describes a
`
`mobile terminal comprising a main device and sub-devices detachably
`
`coupled to the main device. Id. at 19 (citing Ex. 1010 ¶ 181, Fig. 7, Claim 1;
`
`Ex. 1002 ¶ 81). We further agree with Petitioner that the main device can
`
`include a folder-type main device or a watch-type main device. Id. (citing
`
`Ex. 1010 ¶¶ 210–222, 255–262, Figs. 11A–11E, 15A–15D; Ex. 1002 ¶¶ 82–
`
`85). Petitioner asserts, and we find, that for the watch-type main device,
`
`Figure 15A (above) shows first body 100a attached to band 100c, and
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`19
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`second body 100b attached to the first body 100a by hinge 100d. Id. at 19–
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`20 (citing Ex. 1010 ¶ 256, Fig. 15A).
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`Petitioner contends, and we agree, that Kim describes an embodiment
`
`where a third body (sub-device) is detachably coupled to the watch-type
`
`main device. Id. at 20 (citing Ex. 1010 ¶¶ 217, 260–261). For that
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`embodiment, Kim describes that “the third body (i.e., the sub-device) is
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`coupled to one of the first and second bodies in a state that the first and
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`second bodies are coupled” and that “[t]he method of coupling the sub-
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`device in an overlapping manner to the second body will now be described
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`for the sake of brevity.” Ex. 1010 ¶ 260. Petitioner contends that a POSITA
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`would have understood Kim to describe an embodiment in which the first
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`body 100a is connected to second body 100b by hinge 100d and a sub-
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`device 300 is detachably coupled to the bottom or underside of the second
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`body 100b. Pet. 21–22 (citing Ex. 1002 ¶¶ 81–84); Pet. Reply 3–4. This is
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`so, Petitioner argues, because Kim describes “a coupling member 510 for
`
`fixing the sub-device is provided on at least one side of the second body, and
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`the sub-device may be adjusted to the position where the coupling member
`
`is formed, and pressed to be coupled.” Pet. 21 (quoting Ex. 1010 ¶ 261).
`
`Patent Owner argues that Petitioner’s Figure A “does not actually
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`appear in Kim nor is it described therein.” PO Resp. 5–9. Patent Owner
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`acknowledges that “Kim does describe a watch-type device in which sub-
`
`device 300 is coupled in an overlapping manner to the second body, in a
`
`state where the first and second bodies are coupled to one another.” Id. at
`
`6–7. Patent Owner asserts, however, that Kim only describes placing sub-
`
`device 300 on top of the second body when the first and second bodies are in
`
`a closed position. Id. at 6–9, 22–26. Patent Owner further argues that
`
`because Kim describes, with respect to Figure 15A, that “hinge part 100d for
`
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`coupling sub-device must have a structure allowing coupling and
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`separating,” a person having ordinary skill in the art “would understand that
`
`for the sub-device 300 to be attached underneath the ‘lid’ second body 100b,
`
`100b would be unhinged and decoupled, otherwise, the lid would not close.”
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`Id. at 5–6 (citing Ex. 1010 ¶¶ 258, 260–261; Ex. 2004 ¶ 37), 26.
`
`For the reasons that follow, we agree with Petitioner that “Kim
`
`teaches that the sub-device can be coupled to the top of the second body or
`
`to the bottom of the second body” and that Kim does not require “that the
`
`hinge be separable in embodiments, such as Figure 15A, where the two
`
`bodies comprise the main device and a separate sub-device is selectively
`
`coupled to the main device.” Pet. Reply 3–4 (citing Pet. 20–22; Ex. 1002
`
`¶¶ 84–86).
`
`Kim describes a watch-type mobile terminal with a first body, a
`
`second body, and a third body (sub-device) as follows:
`
`A method of coupling the third body (i.e., the sub-device)
`is coupled to one of the first and second bodies in a state that the
`first and second bodies are coupled will now be described. The
`method of coupling the sub-device in an overlapping manner to
`the second body will now be described for the sake of brevity.
`As shown in FIG. 15b, a coupling member 510 for fixing
`the sub-device is provided on at least one side of the second body
`of the main device, and the sub-device may be adjusted to the
`position where the coupling member is formed, and pressed to be
`coupled.
`
`Ex. 1010 ¶¶ 260–261. From the above, we find that Kim describes that the
`
`sub-device is coupled to one of the first and second bodies in a state that the
`
`first and second bodies are coupled and that the sub-device may be on either
`
`side of the second body. Specifically, Kim describes, referencing Figure
`
`15B, that the coupling member for fixing the sub-device “is provided on at
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`least one side of the second body” which we find to mean that the coupling
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`member may be on either the top or bottom of the second body for fixing the
`
`sub-device to the second body. Thus, we agree with Petitioner that how a
`
`sub-device is coupled to the watch-type device of Figure 15A is not limited
`
`to what is shown in Figure 15B, and that Kim teaches that the sub-device
`
`can be coupled to the top of the second body or to the bottom of the second
`
`body. Pet. Reply 4.
`
`Patent Owner argues that Petitioner “conflates Kim’s disclosure of
`
`coupling member 510 on ‘at least one side’ of the second body with
`
`Petitioner’s unsupported suggestion of coupling the sub-device to either side
`
`of the second body.” Sur-reply 5. We disagree that Petitioner’s position
`
`represents a conflation of the disclosure. Kim’s description that the coupling
`
`member for fixing the sub-device “is provided on at least one side of the
`
`second body” means precisely what Petitioner contends—that the sub-device
`
`may be coupled to either side of the second body. Patent Owner and Dr.
`
`Horenstein read Kim too narrowly or imprecisely.10 Indeed, Dr. Horenstein
`
`concludes that from the disputed Kim passage, the sub-device can only be
`
`coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42–
`
`44. Dr. Horenstein, however, fails to explain sufficiently why that may be
`
`so and we find his testimony lacking factual support and inconsistent with
`
`what Kim describes. See 37 C.F.R. § 42.65 (expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled
`
`to little or no weight). Thus, we do not give his testimony substantial
`
`
`10 During the hearing, counsel for Patent Owner confirmed that it is Patent
`Owner’s position that Kim does not even contemplate coupling the sub-
`device to the first body, even though Kim explicitly describes as much. Tr.
`42:23–43:14; Ex. 1010 ¶ 260.
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`weight. Dr. Kiaei’s testimony on the matter, however, is deserving of
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`substantial weight, because his testimony is consistent with what Kim
`
`describes. Ex. 1002 ¶¶ 83–87.
`
`In addition, we find that in such an arrangement, the first and second
`
`bodies are connected by a hinge. Ex. 1010 ¶¶ 255–257. The portion of Kim
`
`that Patent Owner relies on in support of the contention that the hinge must
`
`have a structure allowing coupling and separating is when one of the first
`
`and second bodies operates as a sub-device. Id. ¶ 258. Thus, providing
`
`coupling member on the bottom of the second body for fixing the sub-device
`
`to the second body where the first and second bodies are connected by a
`
`hinge is contemplated by Kim’s description and represented by Petitioner’s
`
`Figure A. Pet. 20–22; Ex. 1002 ¶¶ 84–86.
`
`Patent Owner argues that the configuration of Figure A of Kim would
`
`not allow the cover of the device to properly close due to sandwiching of
`
`sub-device 300, and that it would be unattractive, large, and ill-suited for its
`
`purpose. PO Resp. 8–9 (citing Ex. 2004 ¶ 48). Patent Owner’s arguments
`
`are premised on an overly limited view of the Figure A embodiment as it
`
`would be interpreted in the view of one of ordinary skill in the art. Kim
`
`broadly states that its embodiments “may be used singly and/or by being
`
`combined together.” Ex. 1010 ¶ 179. Consideration of the combination
`
`depicted in representative Figure A would reasonably have to “account of
`
`the inferences and creative steps that a person of ordinary skill in the art
`
`would employ.” KSR, 550 U.S. at 418; see ClassCo, Inc. v. Apple, Inc., 838
`
`F.3d 1214, 1219 (Fed. Cir. 2016).
`
`For the reasons discussed above, Kim discloses not only general
`
`combination of embodiments, but, more specifically, describes that first and
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`second bodies are coupled and that the sub-device may be on either side of
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`the second body, which supports the depiction of representative Figure A.
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`Representative Figure A Would Have Been Obvious
`
`In addition to Kim’s description of representation Figure A, Petitioner
`
`also provides a showing, which we agree with, that the representation Figure
`
`A embodiment would have been obvious. Pet. 23–25. Specifically,
`
`Petitioner contends that, to the extent that Patent Owner argues that Kim
`
`does not disclose Figure A, such an embodiment would have been obvious
`
`to a POSITA in view of Kim’s folder-type embodiments (Figure 11B) which
`
`are similar and closely related to the watch-type embodiment (Figure 15A).
`
`Id. at 23 (citing Ex. 1010, Figs. 11B, 15A; Ex. 1002 ¶¶ 89–92). Petitioner
`
`explains how in both embodiments (folder-type and watch-type) the main
`
`device comprises a first body and a second body connected to each other by
`
`a hinge so that the two bodies can open or close in a folding manner, and
`
`that with respect to both embodiments, Kim also describes using coupling
`
`members 510 (such as magnets) to detachably couple the sub-device to the
`
`main device. Id. at 23–24 (citing Ex. 1002 ¶¶ 90–91; Ex. 1010 ¶¶ 212, 218,
`
`220, 261).
`
`Petitioner contends that a “POSITA would have recognized that
`
`because of the similarities between Kim’s folder-type and watch-type
`
`embodiments, Kim’s disclosure with respect to Figure 11B could have been
`
`adapted and applied to detachably couple sub-device 300 to the second body
`
`100b of the watch-type embodiment in the manner shown in Figure A.” Id.
`
`at 24 (citing Ex. 1002 ¶ 92). Petitioner further contends that doing so is
`
`suggested by Kim itself, because Kim states that the embodiments “may be
`
`used singly and/or by being combined together.” Id. (citing Ex. 1010 ¶ 179).
`
`Petitioner argues that a POSITA having reviewed Kim’s Figure 11B
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`24
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`embodiment would have recognized the feasibility and desirability of
`
`modifying the embodiment of Kim’s Figure 15 to detachably couple sub-
`
`device 300 to the second body 100b using coupling members 510. Id.
`
`(citing Ex. 1002 ¶¶ 92–97). Petitioner further provides reasons for making
`
`the modification. Id. at 24–25 (citing Ex. 1002 ¶¶ 95–97).
`
`Patent Owner makes several arguments why Petitioner’s Figure A “is
`
`not obvious.” PO Resp. 10–36. For the reasons that follow, we determine
`
`that such arguments do not undermine Petitioner’s persuasive showing.
`
`Patent Owner argues that sub-device 300 within the folder-type device
`
`of Fig 11B, which has multiple hinge members that are raised above a face
`
`of the second body, is not suitable fo
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