`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`____________________________________________________
`
`SAMSUNG ELECTRONICS CO. LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner.
`
`____________________________________________________
`
`Case IPR2021-00338
`Patent 10,589,320 B2
`____________________________________________________
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`

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`
`
`TABLE OF CONTENTS
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`1.
`
`C.
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. KIM DOES NOT DISCLOSE (OR RENDER OBVIOUS)
`PETITIONER’S FICTIONAL FIGURE A DEVICE ..................................... 3
`A. Kim Does Not Disclose Petitioner’s Fictional Figure A Device ..................... 3
`B.
`Petitioner’s “Figure A” Device Would Not Have Been Obvious in
`View of Kim .................................................................................................... 6
`Petitioner’s attempts to refute Gwee’s arguments for why a POSITA would
`not be motivated to create a non-functional, deeply flawed and unsuitable
`Figure A device lack persuasiveness and include improper new grounds. ..... 8
`III. CLAIM 1 AND ITS DEPENDENT CLAIMS ARE NOT
`OBVIOUS IN VIEW OF KIM ...................................................................... 15
`A. Kim Does Not Disclose or Suggest “When Coupled, the First Case
`Functions to Protect the Second Case” .......................................................... 16
`B. Kim Does Not Disclose or Suggest “a First Magnet is Fully
`Disposed Within the Electronic Device” ....................................................... 17
`Petitioner Has Still Not Shown that Kim Discloses a “Switching
`Device.” ......................................................................................................... 17
`D. Kim Does Not Render Obvious an Electronic Device with Both
`Magnets and Raised Shapes Configured to Correspond to
`Complementary Recessed Areas on a Switching Device .............................. 17
`Petitioner Fails to Explain How Kim Discloses or Suggests a
`Portable Switching Device “Configured to Activate, Deactivate, or
`Send into Hibernation” .................................................................................. 19
`Kim Does Not Disclose (or Suggest) the “Electronic Device Plays
`or Pauses a Remote Device” .......................................................................... 21
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`E.
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`F.
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`B.
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`C.
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`G. Kim Does Not Render Obvious that the “Lid is Recessed to
`Configure to the Electronic Device” ............................................................. 22
`IV. KIM DOES NOT RENDER OBVIOUS CLAIM 5 OR ITS
`DEPENDENT CLAIM .................................................................................. 23
`V. KIM IN COMBINATION WITH KOH DOES NOT RENDER
`CLAIM 11 OBVIOUS ................................................................................... 25
`A. A POSITA Would Not Have Been Motivated to Combine Kim and
`Koh as Suggested by Petitioner ..................................................................... 25
`The Combination of Kim and Koh Does Not Disclose or Suggest
`“When Coupled, the First Case Functions to Protect the Second
`Case” .............................................................................................................. 26
`The Kim-Koh Combination Does Not Disclose (or Suggest) that the
`“Switching Device” is “Configured to Activate, Deactivate, or Send
`into Hibernation” the Portable Electronic Device ......................................... 28
`The Alleged Kim-Koh Combination Does Not Discloses That “the
`Electronic Device Pauses or Plays a Remote Device” .................................. 29
`VI. KIM IN COMBINATION WITH LEE DOES NOT RENDER
`CLAIM 9 OBVIOUS ..................................................................................... 30
`VII. CONCLUSION ............................................................................................... 31
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`
`D.
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`CASES
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`TABLE OF AUTHORITIES
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`Elbrus Int’l Ltd. v. Samsung Elecs. Co., 738 F.App’x 694 (Fed. Cir. 2018) ............. 15, 19
`
`Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324 (Fed. Cir. 2019) ........ passim
`
`In re Chudik, 851 F.3d 1365, 1372 (Fed. Cir. 2017) ................................................. 3
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359
`
`(Fed. Cir. 2016) .......................................................................................................... 1
`
`Polygroup Ltd. v. Willis Elec. Co., 780 F.App'x 880 (Fed. Cir. 2019) ................... 19
`
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) .....................................................1, 9
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`Samsung’s 2020-12-29 Petition in IPR2021-00335
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`Transcript of deposition of Sayfe Kiaei, Ph.D. in IPRs 2021-
`
`00336, -00337, and -00338 (Aug. 30, 2021)
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`Transcript of deposition of Sayfe Kiaei, Ph.D. in IPR2021-
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`00335 (Aug. 30, 2021)
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`Declaration of Mark N. Horenstein, Ph.D.
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`Curriculum Vitae of Mark N. Horenstein, Ph.D.
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`2001
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`2002
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`2003
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`2004
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`2005
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`I.
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`INTRODUCTION
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`Petitioner’s multiple new grounds for invalidity made for the first time in
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`its Reply should be rejected. See Henny Penny. v. Frymaster, 938 F.3d 1324,
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`1330-31 (Fed. Cir. 2019); SAS Inst. v. Iancu, 138 S. Ct. 1348, 1355 (2018);
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`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359, 1369-70 (Fed. Cir.
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`2016).
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`Petitioner makes multiple mistaken straw man arguments, including
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`alleging that Gwee’s Response argued that (1) “Kim’s watch-type embodiment
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`must use a TOLED display,” and (2) “both bodies of the watch-type embodiment
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`must contain a screen.” Reply, 1. Petitioner misses the point that Kim’s watch-
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`type embodiment depicted in Fig. 15A and Petitioner’s fictional Figure A, which
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`is adapted from Kim’s Fig. 15A and forms the basis for Petitioner’s allegations
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`of unpatentability, e.g., Petition, 20-21, (1) does use a TOLED display, and (2) the
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`two hingedly connected main devices do contain screens. The Reply further mis-
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`states that Gwee’s Response asserted that hinge 100d in Kim’s watch-type
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`embodiment must be a “single piece.” Reply, p. 1. To the contrary, Gwee’s
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`Response asserted, correctly, that Kim’s Fig. 11B depicts first and second bodies
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`coupled together by separate hinge members raised above a face of the second
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`body. POR, 9-10; EX1010, ¶0212.
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`Petitioner appears to dispute that the watch components of Kim’s Fig. 15A
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`and Petitioner’s Fig. A must be separable. Reply, 1. But Kim clearly states that
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`the hinge “must” allow the first and second bodies to couple or separate.
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`EX1010, [0256], [0258].
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`Petitioner accuses Gwee of “selective[] argu[ment]” regarding how a
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`POSITA would combine elements of Kim’s disclosure, if they were to be
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`combined. Reply, 1. To the contrary, Gwee has pointed out why a POSITA
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`would not be motivated to make the combinations asserted in the Petition. Gwee
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`has also pointed out how – if a POSITA were forced to combine the teachings of
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`these references – the POSITA would arrive at a very different watch-type
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`embodiment than Petitioner’s fictional Figure A.
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`The fact that Gwee’s expert Dr. Horenstein re-used some illustrations
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`from Gwee’s Preliminary Response to help illustrate his points, in lieu of
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`wasting effort to generate duplicative illustrations, EX1031, 89:16-90:16,
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`provides no basis to “discount or disregard” his declaration. Further, expert
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`testimony is not required in every instance to point out where a Petitioner’s
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`analysis is deficient and fails to address or show necessary claim elements.
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`II. KIM DOES NOT DISCLOSE (OR RENDER OBVIOUS) PETITIONER’S
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`FICTIONAL FIGURE A DEVICE
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`A. Kim Does Not Disclose Petitioner’s Fictional Figure A Device
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`Recognizing that Gwee’s Response highlights numerous shortcomings in
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`Petitioner’s proposed Figure A embodiment, e.g., POR, 6-8, 18-23, Petitioner’s
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`Reply now seeks to revise that Figure A embodiment through further modifications
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`of Kim’s Figure 15A/B embodiments with certain physical aspects of its Figure 11B
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`embodiment. Not only is this improper at this stage of the proceeding, see Henny
`
`Penny, supra, the result cannot be used to demonstrate the alleged anticipation. In
`
`re Chudik, 851 F.3d 1365, 1372 (Fed. Cir. 2017).
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`Petitioner’s Reply mis-construes Kim’s description of Fig. 15B. When
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`introducing Fig. 15B, Kim states that, “[t]he method of coupling the sub-device in
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`an overlapping manner to the second body will now be described for the sake of
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`brevity.” EX1010, [260]. Figure 15B is said to show “a coupling member 510 for
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`fixing the sub-device [ ] provided on at least one side of the second body…and the
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`sub-device may be…pressed to be coupled.” Id., [0261].
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`EX1010, Fig. 15B.
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`Thus, Fig. 15B is the embodiment wherein sub device 300 is coupled atop the
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`second body of the watch-type device in an overlapping manner. POR, 20; EX2004,
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`¶43.
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`Petitioner is incorrect in asserting that Fig. 15B only shows sub-device 300
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`atop the second body “for the sake of brevity.” Reply, 3-4. Per Kim, it is the
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`description, not the illustration, made for the sake of brevity. EX1010, [0260-0261];
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`POR, 20-21; EX2004, ¶43. Per Kim, this “brevity” applies to the discussion of how
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`the coupling members 510 fix the sub-device to the second body in a press-to-fit
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`fashion. EX2004, ¶43. Thus, per Kim, Fig. 15B shows the coupling of a sub-device
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`300 to the “second body” (i.e., the cover of the watch-type device) in an overlapping
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`manner. POR, 21; EX1010, [0256], [0260]-[0261]; EX2004, ¶43.
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`Petitioner argues that “Kim itself refutes PO’s argument. EX1010, ¶261.”
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`Reply, 4. To the contrary, Kim states that, “[a]s shown in FIG. 15b, a coupling
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`member 510 for fixing the sub-device is provided on at least one side of the
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`second body of the main device.” EX1010, ¶261 (emphasis added). Fig. 15b
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`does indeed show the sub-device “on at least one side of the second body,” its
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`top side.
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`Petitioner’s conflates Kim’s disclosure of coupling member 510 on “at
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`least one side” of the second body with Petitioner’s unsupported suggestion of
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`coupling the sub-device to either side of the second body.” Reply, 4.
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`Petitioner’s argument that “a POSITA would have understood” that Kim’s
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`disclosure regarding how a sub-device can be selectively coupled to the Fig. 15A
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`device is “not limited to what is shown in Figure 15B,” Reply, 4, does not
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`reflect what Kim actually discloses. Nor is it a supportable position. Indeed, in its
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`Response, Gwee explained that a POSITA would not have such an understanding,
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`at least in part because the fictional Figure A embodiment demands modifying
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`the Fig. 15A/B device in a way that a POSITA would not and does not satisfy
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`design criteria that even Petitioner’s expert says are important for such wearable
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`devices. POR, 7-8, 13, 16.
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`Petitioner’s Reply argument that “Kim requires that the hinge must
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`separate only when one of the two bodies is a sub-device ” (Reply, 4), is also
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`incorrect. Kim states that in the Fig. 15A embodiment -- which is the
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`embodiment relied upon in the Petition for the fictional Figure A -- one of the
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`hingedly connected main devices may serve as a sub-device, but hinge part 100d
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`“must have a structure allowing coupling and separating” the first body and
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`second body. EX1010, ¶256-258. This requirement of “must” for hinge part
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`100d is not dependent upon the either main body actually being operated or
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`configured as a sub-device. Further, to the extent the hinge does not permit
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`separation of 100a/100b as Petitioner argues, Gwee’s points concerning the
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`infeasibility of including a sub-device between 100a and 100b as set forth in the
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`Response are even more germane, because such a hinge would not accommodate
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`the proposed sandwiched sub-device 300.
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`B.
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`Petitioner’s “Figure A” Device Would Not Have Been Obvious in
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`View of Kim
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`Gwee’s Response explains why Petitioner’s “Figure A” device would not
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`have been obvious in view of Kim. POR, 9-33; EX2004, ¶¶49-67. Petitioner
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`argues that its “obviousness arguments were supported by eight pages of
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`testimony... EX1002, ¶¶87-95.” Most of this cited portion of these pages, i.e.,
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`up to ¶91, merely point out alleged similarities between Kim’s watch-type and
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`folder-type embodiments in general. On this issue, Gwee’s Response explains
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`that, if a POSITA were to have looked to Kim for guidance concerning the
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`applicability of features of one device-type embodiment relative to those of
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`another, the relevant teachings for the dual-display watch-type embodiment
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`would have been derived, if at all, from Fig. 5, and would have suggested to the
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`POSITA the undesirability of using a sandwiched sub-device to impede the view
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`of the display of the first body 100a via the TOLED display of folded second
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`body 100b. POR, 24-27; EX2004, ¶¶59-62.
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`Among other things noted in Gwee’s Response, the Fig. 11 folder-type
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`device has as its base a keyboard. POR, 13; EX1010, [0212]; EX2004, ¶59. Yet
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`both bodies of the watch-type embodiment depicted in Fig. 15A, which Petitioner
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`relied upon its Petition, e.g., Petition, 20-21, are dual displays and do contain screens.
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`EX1010, [0257] ; EX2004, ¶59.
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`The only mention, or even implication of a “motivation” is Dr. Kiaei’s
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`arguments in ¶92 that “Kim itself teaches that the embodiments it describes”
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`may be used “singly and/or by being combined together.” EX1002, ¶92.
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`However, as noted above, Gwee and Dr. Horenstein have already pointed out
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`that any motivations from folder-type devices would only suitably be, if at all,
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`from the Fig. 5 folder-type device, POR, 24-27; EX2004, ¶¶59-62, which, like
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`the watch-type device in Fig. 15A, has dual screens unsuitable for fictional
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`Figure A.
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`1.
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`Petitioner’s attempts to refute Gwee’s arguments for why a
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`POSITA would not be motivated to create a non-functional,
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`deeply
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`flawed and unsuitable Figure A device
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`lack
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`persuasiveness and include improper new grounds.
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`Petitioner improperly attempts to belatedly revise its “Figure A” and
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`obviousness arguments by substituting a completely different hinge
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`structure than the one asserted in its Petition. The Petition’s Figure A
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`proposes an unmodified hinge (but substantially modified watch) from Kim’s
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`Fig. 15A. E.g., Petition, 20-21. More specifically, Figure A in the Petition has
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`the same piano-type hinge (EX1031, 78:6-12) depicted in Kim’s Fig. 15A.
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`E.g., Petition, 20-21. In its Reply, Petitioner alleges that “Kim does not limit the
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`structure or implementation of hinge 100d,” that gaps in the Petition could now
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`be filled by “common sense” and “us[ing] routine design skills to select the
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`appropriate hinge.” Reply, 5-6. This is a transparent attempt to alter Petitioner’s
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`original argument, and now assert that the Figure 11B hinge should be used
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`instead of Figure A in the Petition. This is improper, untimely and should be
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`rejected and disregarded. Henny Penny, supra.
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`Petitioner’s untimely, improper Reply argument that “[t]here is nothing in
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`Kim that would suggest to a POSITA, much less require, that the folding watch-type
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`embodiment of Figure A must have a hinge exactly as depicted in Figure 15A,”
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`Reply, 6, fails to account for this being the hinge in Petitioner’s Figure A. Petition, 20-21.
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`Petitioner set the bounds of its original argument and must now live with its repercussions.
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`See SAS Inst. supra. It was Petitioner that proposed the Figure A embodiment with
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`all of its inherent flaws. Now recognizing these shortcomings, Petitioner’s attempted
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`revisions to Figure A come too late and should be rejected and disregarded. Henny
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`Penny, supra.
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`The Reply has no persuasive answer for the hinge arrangement of Figure
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`11B not being compatible with Figure 15A because Kim requires that the hinge
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`in Figure 15A be “located such that the second body can be connected to one
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`side of the first body,” whereas in Figure
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`11B “the second body 100b is connected on
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`top of the first body 100a.” POR, 14. The
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`Reply asserts that Gwee’s description of the
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`Fig.
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`11B
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`hinge
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`is merely
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`its
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`“characterization of what is shown in Figure
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`11B.” Reply, 9. Gwee’s characterization is
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`what Fig. 11 depicts.
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`Petitioner mistakenly states that “PO itself argues that Kim’s teaching
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`with respect to Figure 5…are applicable to Kim’s watch-type embodiment.”
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`Reply, 8, fn. 4. To the contrary, Gwee’s Response states that “if a POSITA were
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`to have looked to Kim for guidance…the relevant teachings for the dual-display
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`watch-type embodiment would have been derived, if at all, from Fig. 5, and
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`would have suggested to the POSITA the undesirability of using a sandwiched
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`sub-device to impede the view of the display…” POR, 27; EX2004, ¶62.
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`Petitioner disputes that the sub-device interferes with the proper operation
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`and viewing of the TOLED screen in the second body 100b. Reply, 9; see POR,
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`passim. Petitioner’s straw man argument is that the TOLED screen depicted in
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`Kim’s Figure 15A and Petitioner’s Figure A must be “required” by Kim. Reply,
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`9. Petitioner does not and cannot dispute that display 251 in main device 100b
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`in both Fig. 15A and Petitioner’s Figure A are TOLED (see below).
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` and
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`Dr. Horenstein’s statement cited by Petitioner that Kim does not “require”
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`use of TOLED screens is irrelevant because the device and grounds relied upon
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`in Petitioner’s Petition, e.g., pp. 20-21, has a TOLED display 251 in main device
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`100b. Petitioner’s revisionism in its Reply is improper and should be rejected
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`and disregarded. Henny Penny, supra.
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`Petitioner argues that the second sentence of Kim ¶179 "is not limited to
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`control methods.” Reply, 10. To the contrary, the “embodiments” referred to in
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`the second sentence of ¶179 are clearly the “embodiments for a control method”
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`of the first sentence. Moreover, the “embodiments” in the third sentence of ¶179
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`necessarily also refer to “embodiments for a control method,” because it is those
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`“embodiments for a control method” that are “implemented more easily when
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`the display 151 includes the touchscreen.” EX1010, ¶179. It would not make
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`sense for these successive sentences of the same paragraph to be referring to
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`different “embodiments.”
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`Petitioner argues that Gwee “did not rebut” Petitioner’s listing of alleged
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`similarities between the Fig. 11B and Fig. 15A devices. Reply, 11. To the contrary,
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`see Gwee’s Response at pp. 9-15. Further, such alleged similarities do not provide
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`a persuasive motivation to combine nor do they overcome the operational fallacies,
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`dissimilarities and countervailing factors noted in Gwee’s Response. For example,
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`unlike the watch-type device of Fig. 15A, Kim’s folder-type device of Fig. 11B has
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`hinge members raised above a face of the second body. POR, 9; EX2004, ¶¶50-51.
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`In contrast, hinge 100d of the Fig. 15A watch-type device – which the Petition relies
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`upon -- would not accommodate a sub-device 300 between the first and second
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`bodies while still allowing the cover to close properly.
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`POR, 9, EX2004, ¶51.
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`Additionally, Kim’s Fig. 11E embodiment has a “base” keyboard, whereas Kim’s
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`watch-type device depicted in Fig. 15A and in Petitioner’s Figure A employs dual
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`displays. POR, 14; EX2004, ¶54. Unlike the Fig. 15A watch-type device, where both
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`first and second bodies 100a and 100b employ displays--and a wearer may look through
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`the TOLED cover 100b to see the underlying display on 100a--in the Fig. 11E folder-type
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`device, no such look-through capacity need be accommodated. POR, 13; EX2004, ¶54.
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`Further, Kim teaches that in the watch-type embodiment, the hinge is located
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`such that the second body can be connected to one side of the first body. POR, 14;
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`EX2004, ¶58; EX1010, [0256]. There is nothing in Kim that would have suggested
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`to a POSITA that the watch-type embodiment should be modified, as the Reply
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`belatedly and improperly suggests, to change this important configuration
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`requirement, instead relocating the hinge so
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`that the second body 100b is connected on
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`top of the first body 100a. POR, 14;
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`EX2004, ¶58. Making such a change (if the
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`Board erroneously permitted such new
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`grounds in a Reply), would dramatically
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`alter the watch design and would result in
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`the first and second bodies not properly closing, one atop the other -- potentially
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`causing harm to the leading edge of the cover that would at times be slapping closed
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`and pressed with undue stress against the main body of the watch -- when the third
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`body 300 was not present. POR, 14; EX2004, ¶58.
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`Petitioner’s improper, belated Reply position that its Petition assertions
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`were somehow merely “exemplified by Figure A” (Reply, 12) should be rejected.
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`See Henny Penny, supra.
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`Petitioner’s Reply to there being “too many operating issues that would
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`prevent a POSITA from adopting” its proposed Figure A device (see POR, 28-
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`33), is essentially three-fold. First, Petitioner improperly suggests that a
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`POSITA might make new modifications to its proposed Figure A device. The
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`untimely nature of this new argument has been noted above. Second, Petitioner
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`makes a general suggestion that the serious operating issues raised in Gwee’s
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`Response might somehow be speculative or conclusory. However, nothing
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`speculative or conclusory is pointed out in the Reply, and there is nothing
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`speculative or conclusory about Gwee’s analysis. See, e.g., POR, 28-33. Third,
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`Petitioner cites Elbrus for obviousness depending on “whether a skilled artisan would
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`have been motivated to combine the teachings.” Reply, 12. See Elbrus Int’l Ltd. v.
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`Samsung Elecs. Co., 738 F.App’x 694 (Fed. Cir. 2018). Here Petitioner’s argument
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`is misplaced, because Petitioner’s Petition, e.g., pp. 20-21, advanced its
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`proposed Figure A device as the allegedly obvious combination. Petitioner’s
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`suggestion that the Board could deem obvious a modified or different
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`combination than the Figure A device in Petitioner’s Petition must be rejected.
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`See Henny Penny, supra.
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`Petitioner’s footnote argument (Reply, 12, n. 5) that its expert Dr. Kiaei
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`suggested in his deposition that problems with Petitioner’s Figure A device
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`might be resolved “depend[ing] on the design” should likewise be rejected. See
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`Henny Penny, supra.
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`III. CLAIM 1 AND ITS DEPENDENT CLAIMS ARE NOT OBVIOUS IN
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`VIEW OF KIM
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`A. Kim Does Not Disclose or Suggest “When Coupled, the
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`First Case Functions to Protect the Second Case”
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`Petitioner makes no meaningful attempt to refute this element not being met.
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`See POR, §VI.A, pp. 34-38; EX2004, ¶72. Petitioner’s Reply avoids meaningfully
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`addressing that Petitioner’s Figure A does not permit the cover 100b to close fully,
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`because hinge 100d is positioned at the side of the first body 100a. POR, 37;
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`EX2004, ¶72.
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`Continued attempts to close the cover would either dislodge sub-device 300 from
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`coupling members 510, or result in damage to hinge 100d. POR, 37; EX2004, ¶72.
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`Thus, no “protection” of the case of sub device 300 would be afforded. POR, 37;
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`EX2004, ¶72.
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`B. Kim Does Not Disclose or Suggest “a First Magnet is Fully
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`Disposed Within the Electronic Device”
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`Petitioner’s Reply largely rehashes issues already addressed at length in
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`Gwee’s Response. See POR VI.B, pp. 38-42; EX2004, ¶75-80.
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`C.
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`Petitioner Has Still Not Shown that Kim Discloses a “Switching
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`Device.”
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`Gwee’s Response explains that Petitioner has not shown that Kim discloses (an
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`obviousness theory for this element was not advanced in the Petition) a “switching
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`device.” POR VI.C, p. 42. Continuing to avoid the issue, Petitioner’s only Reply is the
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`vague allegation that “Petitioners have demonstrated why the main device is a
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`switching device. Petition, 26-27; EX1002, ¶¶96-101.” Reply, 18, n. 6. No
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`Petitioner has not.
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`D. Kim Does Not Render Obvious an Electronic Device with Both
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`Magnets and Raised Shapes Configured to Correspond to
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`Complementary Recessed Areas on a Switching Device
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`As Gwee’s Response demonstrates, it would not have been obvious to a
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`POSITA to use both magnets and hooks/recesses to couple the sub-device to the
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`main device. POR, VI.D. 43-47; EX2004, ¶¶81-89. Petitioner provides no
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`persuasive rebuttal justifying such hindsight over-engineering (e.g., the weaker
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`of the two closure methods would be superfluous). POR, 44; EX2004, ¶¶83-84.
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`Petitioner’s Reply asserts that Birgen “teaches providing magnetic means
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`to ‘more firmly’ secure the earphones to the housing only after first teaching
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`mechanical means for holding them together. EX1018, 10:26-11:2, 11:17-19.”
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`Reply, 16. To the contrary, Bergin merely discusses optional “release recesses”
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`(not shown) for removing earphones from receiving recesses, EX1018, 10:26-
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`11:2, and optional “magnet means” (also not shown) to “hold the earphone more
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`firmly in the earphone receiving recess.” EX1018, 11:17-19. Neither Bergin nor
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`Koh, relied upon by Petitioner, discloses use of hooks; and none of Bergin, Kim
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`or Koh discloses (or suggests) an embodiment with both magnets and hooks,
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`much less an electronic device with both magnets and hooks corresponding to
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`recesses in a switching device.
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`As to the additional reasons why a POSITA would not have adopted the
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`use of both hooks+recesses and
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`magnets for Kim, (POR, 44-48;
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`EX2004, ¶86-89), Petitioner’s
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`Reply lacks persuasive rationales
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`to overcome the serious physical
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`and
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`operational
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`problems
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`weighing heavily against such an impractical design. For example, Petitioner
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`has no answer for the fact that, with its Figure A device, one wrist would be
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`needed to wear the watch, and only the user’s other hand would be available to
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`push a hook and release it. POR, 46; EX2004, ¶87. The serious operational
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`impossibilities are addressed at POR, 46; EX2004, ¶87 including Horenstein
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`Figure 23. Petitioner’s Reply suggests that a POSITA might somehow exercise
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`“creativity and skill” to overcome this problem and others, Reply, 17, but
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`Petitioner fails to meaningfully explain how this would be accomplished.
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`Petitioner’s reliance upon Polygroup and Elbrus is misplaced, because Gwee has
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`pointed out the deficiencies and operational shortcomings in the Figure A
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`embodiment allegedly comprising hooks and magnets advanced by Petitioner in
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`its Petition, not some hypothetical combination. See Polygroup Ltd. v. Willis
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`Elec. Co., 780 F.App'x 880, 884 (Fed. Cir. 2019); Elbrus, 738 F.App'x at 698.
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`E.
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`Petitioner Fails to Explain How Kim Discloses or Suggests a
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`Portable Switching Device “Configured to Activate, Deactivate, or
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`Send into Hibernation”
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`Gwee’s Response addressed in detail how Petitioner fails to explain any
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`disclosure or suggestion in Kim of the watch shaped main device 100a/100b in
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`Fig. 15A (relied upon by Petitioner’s fictional Fig. A to be the “switching
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`device” of claim 1) being configured to activate, deactivate or hibernate a sub-
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`device 300. Petitioner’s Response of “PO is wrong. Petition, 47-51; EX1002,
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`¶¶143-157,” is unpersuasive.
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`Petitioner’s suggestion that attorney argument is per se insufficient for
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`pointing out the insufficiencies in the Petition is erroneous. Petitioner has the
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`burden of showing how this element has been met, which it has not done.
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`Petitioner’s new Reply argument that this element is allegedly shown
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`because “Kim’s control methods are applicable across embodiments” is
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`untimely and improper, and it should be disregarded. Henny Penny, supra.
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`Petitioner’s suggestion that Dr. Horenstein has contradicted even parts of
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`the arguments against this element being established is mistaken. The cited
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`EX2004, ¶40 is where Dr. Horenstein is quoting from the language about control
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`methods from Kim (EX1010, ¶179) that is block quoted in Section II.B.I above.
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`In lieu of arguing that Kim’s specification contradicts Gwee’s position,
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`Petitioner argues that Gwee’s expert quoting Kim’s specification contradicts
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`Gwee’s position, perhaps hoping that the Board will not notice that Kim’s ¶179
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`is indeed referring to control methods. Irrespective, there is no contradiction
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`between Kim’s statement that control methods “may be used singly and/or by
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`being combined together” and Gwee’s statement that “Petitioner’s contention
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`that Kim’s disclosure for ‘automatic controlling of a terminal operation (menu
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`display)’ by a ‘bar-type mobile terminal,’ is ‘equally applicable’ to watch-type
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`device … is unwarranted.” First, whether, when or how a menu displayed is an
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`operational function, not the method of controlling that function. Further,
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`Gwee’s Response pointed out that “the constraint of being wrist mounted means
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`that one holds up a watch in a single (portrait) orientation for viewing” (POR,
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`48) – something which Petitioner has not and cannot dispute.
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`F. Kim Does Not Disclose (or Suggest) the “Electronic Device
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`Plays or Pauses a Remote Device”
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`Gwee’s Response pointed out that Petitioner had not argued that this limitation
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`would have been obvious. POR, 50 (see Pet., 44-45). Petitioner’s Reply does not and
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`cannot deny this. Gwee’s Response also explains that Kim does not disclose that the
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`electronic device plays or pauses a remote device. POR VI.F, p. 42. In particular,
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`what the Petition mistakenly relied upon for this limitation being met had nothing to
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`do with the watch-type embodiment from Figs. 15A-D that Petitioner relies upon for
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`its Figure A device. POR, 50-51. See Pet. 44-55. Petitioner’s Reply that “PO is
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`wrong, [] for the reasons set forth in the Petition (Petition, 44-45, EX1002,
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`¶¶158-159)” (Reply, 18), merely seeks to dodge this issue and lacks
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`persuasiveness.
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`Additionally, Petitioner’s new Reply ground and new obviousness theory
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`that this element is allegedly shown because “Kim’s control methods are
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`applicable across embodiments” is untimely and improper, and it should be
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`disregarded. Henny Penny, supra.
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`G. Kim Does Not Render Obvious that the “Lid is Recessed to
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`Configure to the Electronic Device”
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`Gwee demonstrated why this element is not rendered obvious in its
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`Response. POR, 51-54; EX2004, ¶¶91-99. Petitioner’s mere references to its
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`Petition are already addressed in Gwee’s Response.
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`Petitioner’s Petition alleges that it would have been obvious to incorporate
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`a recess in the “in a manner similar to that disclosed in Kim’s Figure 10A.” Pet.,
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`47. Gwee’s Response pointed out that, if a POSITA were to adopt the teachings
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`of Kim’s Fig. 10A as a modification, then (1) Fig. 10A in Kim shows the use of
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`magnets that are surface mounted, and hence not “fully disposed,” POR, 52; EX
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`2004, ¶92; EX1010, Fig. 10A; and (2) with such a Fig. 10A recess, it would be
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`very difficult to decouple the sub-device from the main device using the user’s
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`one free hand. POR, 52; EX 2004, ¶92. Point (2) was demonstrated in
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`Horenstein Figure 23, as follows:
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`POR, 53-54; EX 2004, ¶¶94-95.
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`Petitioner’s