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.
`
`IPR2021-00338
`Patent 10,589,320 B1
`
`
`
`
`Before SALLY C. MEDLEY, JON M. JURGOVAN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`

`

`IPR2021-00338
`Patent 10,589,320 B1
`
`I.
`
`INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
`
`For the reasons discussed herein, we determine that Samsung Electronics
`
`Co., Ltd. and Samsung Electronics America, Inc. (collectively “Petitioner”)
`
`has shown, by a preponderance of the evidence, that claims 1–13 of U.S.
`
`Patent No. 10,589,320 B1 (Ex. 1001, “the ’320 patent”) are unpatentable.
`
`A.
`
`Procedural Background
`
`Petitioner filed a Petition requesting inter partes review of claims
`
`1–13 (“the challenged claims”) of the ’320 patent, along with the supporting
`
`Declaration of Dr. Sayfe Kiaei. Paper 3 (“Pet.”); Ex. 1002. GUI Global
`
`Products, Ltd., d/b/a Gwee (“Patent Owner”) filed a Preliminary Response to
`
`the Petition. Paper 10.
`
`Pursuant to 35 U.S.C. § 314(a), on July 2, 2021, we instituted inter
`
`partes review on the grounds of:
`
`Claim(s)
`Challenged
`
`35 U.S.C §
`
`Reference(s)/Basis
`
`103(a)1
`1–8
`103(a)
`11
`103(a)
`9, 10, 12, 13
`
`
`Kim2
`Kim, Koh3,
`Kim, Lee4
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’320 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of 35 U.S.C. § 103.
`2 U.S. Pat. Appl. Pub. No. US 2010/0227642 A1, published September 9,
`2010 (Ex. 1010, “Kim”).
`3 Korean Pat. Pub. No. 10-2008-0093178, published October 21, 2008
`(Ex. 1012, “Koh”).
`4 U.S. Pat. Appl. Pub. No. US 2010/0298032 A1, published Nov. 25, 2010
`(Ex. 1013, “Lee”).
`
`2
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`

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`IPR2021-00338
`Patent 10,589,320 B1
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`See Pet. 1–2; Paper 11 (“Inst. Dec.” or “Dec.”), 7–8, 42.
`
`Patent Owner filed a Patent Owner Response (“PO Resp.”). Paper 15.
`
`Patent Owner filed the Declaration of Dr. Mark N. Horenstein to support its
`
`positions. Ex. 2004. Petitioner filed a Reply (“Pet. Reply”) to the Patent
`
`Owner Response. Paper 18. Patent Owner filed a Sur-Reply to Petitioner’s
`
`Reply (“PO Sur-Reply”). Paper 19.
`
`An oral hearing was held on April 12, 2022. A transcript of the
`
`hearing is included in the record. Paper 26 (“Tr.”).
`
`B.
`
`Related Matters
`
`The parties indicate this Petition is related to GUI Global Prods, Ltd.
`
`d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624 (E.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; Paper 5, 2.
`
`C.
`
`The ’320 Patent
`
`The ’320 patent is titled “System Comprising A Portable Switching
`
`Device For Use With A Portable Electronic Device” and issued on March
`
`17, 2020, from an application filed on November 27, 2019. Ex. 1001, codes
`
`(22), (45), (54). The application for the ’320 patent is a continuation of
`
`several applications as well as several provisional applications. Id., codes
`
`(60), (63).
`
`The Specification of the ’320 patent describes how an apparatus may
`
`be used for cleaning view screens of electrical devices. See Ex. 1001, 2:19–
`
`24. The ’320 patent aims to provide appropriate cleaning materials where
`
`the cleaning component can be carried on an electronic device case. Id. at
`
`1:56–2:15.
`
`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
`
`3
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`IPR2021-00338
`Patent 10,589,320 B1
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`using magnetic attractive force. Id. at 5:64–6:2, Fig. 1B. Figure 1B is
`
`illustrative and is reproduced below.
`
`
`
`Figure 1B, above, shows a side view of a cleaning component. Ex. 1001,
`
`6:29–30. Cleaning component 100 includes ferromagnetic or ferrimagnetic
`
`substrate 102 covered by cleaning material 101, such as a fabric or a cloth.
`
`Id. at 6:20–49.
`
`In another embodiment, a second case receives the cleaning
`
`component and also “functions to protect the primary case.” Ex. 1001,
`
`6:2–7. Figure 3 is illustrative and is reproduced below.
`
`
`
`Figure 3, above, shows a computer case configured to receive a cleaning
`
`component. Ex. 1001, 4:45–46. Laptop 300 has rectangular indentation 302
`
`dimensioned for receiving cleaning component 303 which has a magnet. Id.
`
`at 8:62–9:2.
`
`Figure 5A is also illustrative and is reproduced below.
`
`4
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`IPR2021-00338
`Patent 10,589,320 B1
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`
`
`Figure 5A, above, shows “a lateral type phone case configured to receive a
`
`cleaning component.” Ex. 1001, 4:49–50. 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 10:13–18.
`
`
`
`A cleaning component may be secured and adhered to a case utilizing
`
`“dimensional stability to increase the security with which the clean
`
`components are adhered to the case.” Ex. 1001, 11:44–49; Fig. 9. Figure 9
`
`is illustrative and is reproduced below.
`
`
`
`Figure 9, above, shows a cleaning component “employing a structural
`
`feature to enhance adhesion.” Ex. 1001, 4:60–61. Device 901 has raised
`
`section 902 which is configured to fit within recess 904 of cleaning
`
`component 903. Id. at 11:49–51.
`
`In another embodiment, the cleaning component has a magnetic
`
`element that activates or deactivates a magnetic switch. Ex. 1001, 3:6–8.
`
`The ’320 patent describes “activating or deactivating a device having a
`
`magnetic switch” as a “secondary application[]” and that “cleaning devices”
`
`5
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`IPR2021-00338
`Patent 10,589,320 B1
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`“may also be manufactured without a cleaning component for use with the
`
`secondary application.” Id., code (57). Thus, a device “may or may not
`
`include cleaning capabilities but will include a rare earth magnet or
`
`magnets” for “additional functionality.” Id. at 16:41–45. Figure 24 is
`
`illustrative and is reproduced below.
`
`
`
`Figure 24, above, shows a tablet computer having a switching device.
`
`Ex. 1001, 5:53–54. 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 18:6–10. 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 ’320
`
`patent describes that the switching component “may be picked up” and
`
`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. Ex. 1001, 5:55–56, 18:19–20.
`
`6
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`IPR2021-00338
`Patent 10,589,320 B1
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`
`
`Figure 25, above, shows switching device 2401 having bottom surface 2501,
`
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
`
`disposed therebetween. Ex. 1001, 18:19–21, 23–25. Tab 2503 “on the top
`
`surface” facilitates manipulation of switching device 2401. Id. at 18:22–23.
`
`Challenged claim 1 is the only independent challenged claim.
`
`Claim 1 is reproduced below, with bracketed letters added to the limitations
`
`for reference purposes.
`
`1. A system comprising:
`
`[a] a portable switching device coupled to a portable
`electronic device;
`
`wherein:
`
`[b] the switching device and the electronic device are
`configured to selectively couple to each other employing
`magnetic force;
`
`[c] the switching device comprises a first case;
`
`[d] the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
`
`[e] a first magnet is fully disposed within the electronic
`device;
`
`[f] 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;
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`IPR2021-00338
`Patent 10,589,320 B1
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`configured to correspond to complementary5 surface
`elements on the switching device;
`
`[g] wherein the second case is decoupled from the first
`case by overcoming magnetic force the portable
`switching device is configured to activate, deactivate, or
`send into hibernation the portable electronic device;
`
`[h] the electronic device plays or pauses a remote device;
`
`[i] the switching device includes a lid and hinge attaching
`the lid to the switching device;
`
`[j] the lid is recessed to configure to the electronic
`device; and
`
`[k] when coupled, the first case functions to protect the
`second case.
`
`Ex. 1001, 21:38–22:18.
`
`II. ANALYSIS
`
`A.
`
`The Parties’ Arguments
`
`In our Decision on Institution, we concluded that the arguments and
`
`evidence advanced by Petitioner demonstrated a reasonable likelihood that at
`
`least one claim of the ’320 patent would have been obvious. Dec. 8–43.
`
`Here, we must consider whether Petitioner has established by a
`
`preponderance of the evidence that the challenged claims 1–13 are obvious.
`
`35 U.S.C. § 316(e). We previously instructed Patent Owner that “any
`
`arguments not raised in the response may be deemed waived.” Paper 12, 8;
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding
`
`Patent Owner waived an argument addressed in the Preliminary Response by
`
`not raising the same argument in the Patent Owner Response). Additionally,
`
`
`
`5 Per a Certificate of Correction, “complimentary” was changed to
`“complementary.” See IPR2021-00473, Ex. 1001, 27.
`
`8
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`IPR2021-00338
`Patent 10,589,320 B1
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`the Board’s Trial Practice Guide states that the Patent Owner Response
`
`“should identify all the involved claims that are believed to be patentable
`
`and state the basis for that belief.” Consolidated Trial Practice Guide6, 66
`
`(November, 2019).
`
`Patent Owner has chosen not to address certain arguments and
`
`evidence advanced by Petitioner to support its unpatentability contentions.
`
`In this regard, the record contains persuasive arguments and evidence
`
`presented by Petitioner regarding the manner in which the prior art teaches
`
`the limitations of claims 1–13 of the ’320 patent as well as the rationale to
`
`combine the references with reasonable expectation of success.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Relying on the testimony of Dr. Kiaei, Petitioner proposes that a
`
`person of ordinary skill in the art at the time of the ’320 patent “would have
`
`had a bachelor’s degree in electrical engineering, computer science, or a
`
`similar field and one year of experience in consumer electronics product
`
`design,” and a person of skill could have obtained similar knowledge and
`
`experience through other means. Pet. 17 (citing Ex. 1002 ¶¶ 21–22).
`
`
`
`Supported by the testimony of Dr. Horenstein, Patent Owner proposes
`
`that a person of ordinary skill in the art would have had “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. 5, n.2 (citing Ex. 2004 ¶ 25).
`
`Dr. Horenstein testifies that Dr. Kiaei’s definition of a skilled artisan “is
`
`
`
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`IPR2021-00338
`Patent 10,589,320 B1
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`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 [person of ordinary skill in the art] is
`
`used.” Ex. 2004 ¶ 25.
`
`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). The level of ordinary skill in the art is also reflected by
`
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001).
`
`In the Institution Decision, we considered the subject matter of the
`
`’320 patent, the background technical field, and the prior art, and we agreed
`
`with Petitioner’s proposed qualifications. Dec. 8–9. Accordingly, we
`
`determined that one of ordinary skill in the art would have had a bachelor’s
`
`degree in electrical engineering, computer science, or a similar field and one
`
`year of experience in consumer electronics product design, and could have
`
`obtained similar knowledge and experience through other means.
`
`In view of the relevant technology and claims of the ’320 patent, as
`
`well as the technology of the asserted prior art, we adopt the same
`
`qualifications as those identified in the Institution Decision. We note that
`
`even if we adopted Patent Owner’s proposed level, the outcome would
`
`remain the same.
`
`C.
`
`Claim Construction
`
`For petitions filed after November 13, 2018, the Board interprets
`
`claim terms in accordance with the standard used in federal district court in a
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`10
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`IPR2021-00338
`Patent 10,589,320 B1
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`civil action involving the validity or infringement of a patent. 37 C.F.R.
`
`§ 42.100(b) (2019). Under the principles set forth by our reviewing court,
`
`the “words of a claim ‘are generally given their ordinary and customary
`
`meaning,’” as would be understood by a person of ordinary skill in the art in
`
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of
`
`the disputed claim limitation, we look principally to the intrinsic evidence of
`
`record, examining the claim language itself, the written description, and the
`
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`
`415 F.3d at 1312–17).
`
`Petitioner asserts that no express claim construction is required in
`
`order to assess the grounds presented and the ordinary and customary
`
`meanings of the terms should be used. Pet. 17; see generally Pet. Reply.
`
`Patent Owner similarly states that no express construction is required, and
`
`the ordinary meaning of the terms may be used. PO Resp. 4; see generally
`
`PO Sur-Reply.
`
`In the Institution Decision, we determined that it was not necessary to
`
`provide express interpretations of any claim terms. Dec. 9–10. On the full
`
`record, we likewise determine that it is not necessary to provide an express
`
`interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(“[O]nly those terms need be construed that are in controversy, and only to
`
`the extent necessary to resolve the controversy.”).
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`11
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`IPR2021-00338
`Patent 10,589,320 B1
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`D.
`
`Alleged Obviousness of Claim 1–8 Over Kim
`
`Petitioner contends that claims 1–8 would have been obvious over
`
`Kim. Pet. 18–57; Pet. Reply 1–21. To support its contentions, Petitioner
`
`provides explanations as to how Kim teaches each claim limitation. Id.
`
`Petitioner also relies upon the Dr. Kiaei’s Declaration (Ex. 1002) to support
`
`its positions. Patent Owner argues that the prior art does not teach all the
`
`claim limitations. PO Resp. 4–53; PO Sur-Reply 3–24.
`
`We begin our discussion with a brief summary of Kim, and then
`
`address the evidence and arguments presented.
`
`1.
`
`Kim (Ex. 1010)
`
`Kim describes a mobile terminal that allows a sub-device to be
`
`attached or detached from it. 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.
`
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`Patent 10,589,320 B1
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`
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`Figure 1, above, shows a schematic diagram of a mobile terminal. Ex. 1010
`
`¶ 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, memory 160, interface unit 170, controller 180, and power
`
`supply 190. Id. ¶ 72. “More or less components may alternatively be
`
`implemented.” Id. ¶ 71. A/V input unit 120 may provide audio or video
`
`signal input via camera 121 to mobile terminal 100. Id. ¶ 84. Sensing unit
`
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`140 may detect an open/close status or the state of mobile terminal 100. Id.
`
`¶ 88. Output 150 may include display 151. Id. ¶ 95. Display 151 may have
`
`a transparent organic light-emitting diode (TOLED) display. Id. ¶¶ 97–98.
`
`“Embodiments may be used singly and/or by being combined together.” Id.
`
`¶ 179.
`
`Figure 7 is illustrative and is reproduced below.
`
`
`
`Figure 7, above, shows a mobile terminal including a main device and a sub-
`
`device. Ex. 1010 ¶ 21. Main device 100 can be detachably attached to one
`
`or more sub-devices 300a–300n. Id. ¶ 181. Main device 100 may include
`
`coupling unit 210 for mechanically coupling sub-devices 300a–300n,
`
`coupling detection unit 220 that detects whether or not sub-devices
`
`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
`
`300a–300n. Id. ¶ 182. “Each of the sub-devices 300 may be configured to
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`IPR2021-00338
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`include all the same elements as those of the main device.” Id. ¶ 187.
`
`“[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
`
`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.”
`
`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.
`
`¶ 203. Main device 100 may have a recess corresponding to the shape and
`
`size of sub-device 300, in which a magnet may be installed. Id.
`
`Figure 11B is illustrative and is reproduced below.
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`IPR2021-00338
`Patent 10,589,320 B1
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`
`
`Figure 11B, above, shows a structure for coupling or separating a sub-device
`
`to a folder type main device. Ex. 1010 ¶ 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
`
`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
`
`third body may be overlapped to be coupled to one of the first and second
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`IPR2021-00338
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`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, above, shows a structure for coupling or separating a sub-device
`
`to a watch-type main device. Ex. 1010 ¶ 29. Here, first body 100a is
`
`connected to second body 100b by hinge 100d. Id. ¶ 256.
`
`Figure 15B is illustrative and is reproduced below.
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`IPR2021-00338
`Patent 10,589,320 B1
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`Figure 15B, above, also shows a structure for coupling or separating a sub-
`
`device to a watch-type main device. Ex. 1010 ¶ 29. Here, coupling member
`
`
`
`510 also fixes a sub-device to a main device. Id. ¶ 261.
`
`2.
`
`Analysis
`
`A patent claim is unpatentable under 35 U.S.C. § 103 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;
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`(3) the level of ordinary skill in the art; and (4) objective indicia of
`
`nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`a)
`
`Embodiment Described as “Figure A”
`
`
`
`The Petition asserts that Kim teaches all the limitations of claim 1.
`
`See Pet. 12–44. For many of its assertions, Petitioner relies on a
`
`configuration of a Kim embodiment, referred to as “Figure A.” See id. We
`
`first address issues related to this embodiment and then address Petitioner’s
`
`showing and Patent Owner’s arguments related to the specific limitations of
`
`the claims.
`
`
`
`Petitioner asserts that Kim teaches mobile terminals, such as mobile
`
`phones, smart phones, or portable multimedia players, as well as the sub-
`
`device, are portable. Pet. 26–27. Petitioner relies on a representation of a
`
`configuration of Kim’s embodiment, that is referred to as “Figure A,”
`
`reproduced below. Pet. 22–23.
`
`
`
`
`
`7 No evidence of objective indicia of nonobviousness has been presented by
`Patent Owner. See generally PO Resp.
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`IPR2021-00338
`Patent 10,589,320 B1
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`
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`Petitioner asserts, and we agree, that a person of ordinary skill in the art
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`would have understood that Kim discloses the embodiment of the mobile
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`terminal shown in Figure A, above, with a watch-type main device
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`comprising “first body 100a connected to a second body 100b by a hinge
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`100d so that the first and second bodies can be opened or closed in a folding
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`manner,” and with a sub-device 300 detachably coupled to the second body
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`100b. Pet. 22 (citing Ex. 1002 ¶¶ 82–85). Relying on the embodiment
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`shown in Figure A, Petitioner asserts that main device 100 corresponds to
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`the “portable switching device” of claim 1, and sub-device 300 corresponds
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`to the “portable electronic device” of the claim. Id. at 27.
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`More specifically, Petitioner argues, and we agree, that Kim’s
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`disclosures support the Figure A embodiment. Pet. 20–22. Petitioner points
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`to Kim’s disclosures of an embodiment of the watch-type main device with a
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`first and second body attached to a band part, with the two bodies connected
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`by a hinge. Id. at 20 (citing Ex. 1010 ¶ 256, Fig. 15A). Petitioner also refers
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`to Kim’s disclosures of a sub-device detachably coupling to such a watch-
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`type main device, with reference to Figure 15B’s “coupling the sub-device
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`in an overlapping manner to the second body.” Id. at 20–21 (citing Ex. 1010
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`¶¶ 260–261; Fig. 15B). In support, Dr. Kiaei testifies that Kim discloses that
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`sub-device 300 overlaps and is detachably coupled to the first or second
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`bodies of a watch-type device. Ex. 1002 ¶ 81 (citing Ex. 1010 ¶ 260). Dr.
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`Kiaei further testifies that a person of ordinary skill would have understood
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`that, based on the Kim’s disclosures, the sub-device could be fixed on one
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`side of the second body and the mobile terminal would have sub-device 300
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`detachably coupled to second body 100b, as shown in Figure A. Id. ¶¶ 83–
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`85 (citing Ex. 1010 ¶ 261).
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`Patent Owner argues that Petitioner’s Figure A “does not actually
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`appear in Kim nor is it described therein,” nor is it obvious. PO Resp. 4–33.
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`These contentions form the basis for many of Patent Owner’s arguments as
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`to why Kim does not teach certain claim limitations. Id. at 34–54.
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`Although Patent Owner does not dispute that Kim describes a watch-
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`type device with sub-device 300 coupled in an overlapping manner to the
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`second body, and where the first and second bodies are coupled to one
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`another, Patent Owner argues that “that embodiment is not Petitioner’s
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`Figure A.” PO Resp. 6 (citing Ex. 2004 ¶ 47). Patent Owner contends that,
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`instead of the sub-device being positioned as shown in Figure A, Kim only
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`describes placing sub-device 300 on top of the second body when the first
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`and second bodies are in a closed position. Id. at 6–8, 19–24. Patent Owner
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`also argues that because Kim discloses that, with respect to Figure 15A, the
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`hinge part for coupling the sub-device must have a structure allowing
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`coupling and separating, a person having ordinary skill in the art “would
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`understand that for the sub-device 300 to be attached underneath the ‘lid’
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`second body 100b, 100b would be unhinged and decoupled, otherwise, the
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`lid would not close.” Id. at 4–5 (citing Ex. 1010 ¶¶ 255–261; Ex. 2004
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`¶¶ 36–37).
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`On these issues, we agree with Petitioner that “Kim teaches that the
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`sub-device can be coupled to the top of the second body or to the bottom of
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`the second body” and that Kim does not require “that the hinge be separable
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`in embodiments, such as Figure 15A, where the two bodies comprise the
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`main device and a separate sub-device is selectively coupled to the main
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`device.” Pet. Reply 4 (citing Pet. 21; Ex. 1002 ¶¶ 82–84; Ex. 1010
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`¶¶ 255–258, 261).
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`Kim describes a watch-type mobile terminal with a first body, a
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`second body, and the sub-device as follows:
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`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.
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`Ex. 1010 ¶¶ 260–261. Based on this disclosure, we find that Kim teaches a
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`watch-type configuration where the first and second bodies are coupled, and
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`where a sub-device is coupled to one of the first and second bodies.
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`Referencing Figure 15B, Kim further describes that the coupling member for
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`fixing the sub-device “is provided on at least one side of the second body”
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`which we find to mean that the coupling member may be on either the top or
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`bottom of the second body for fixing the sub-device to the second body.
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`Thus, we agree with Petitioner that how a sub-device is coupled to the
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`watch-type device of Figure 15A is not limited to what is shown in Figure
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`15B, and that Kim teaches that the sub-device can be coupled to the top of
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`the second body or to the bottom of the second body. See Pet. Reply 3–4.
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`Additionally, Patent Owner asserts that Petitioner “conflates Kim’s
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`disclosure of coupling member 510 on ‘at least one side’ of the second body
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`with Petitioner’s unsupported suggestion of coupling the sub-device to either
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`side of the second body.” PO Sur-Reply 5. We do not agree with this
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`assertion. Kim’s description that the coupling member for fixing the sub-
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`device “is provided on at least one side of the second body” discloses what
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`Petitioner contends it does, that is, that the sub-device may be coupled to
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`either side of the second body. Although Dr. Horenstein testifies that the
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`sub-device can only be coupled to the top of the second body in a closed
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`position, his explanation is not sufficient as to why that is so, particularly in
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`view of Kim’s disclosures. See Ex. 2004 ¶¶ 42–44. For instance,
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`Dr. Horenstein testifies that certain portions of Kim, such as those describing
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`Figure 15B, show the coupling of sub-device on top of the second body, but
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`this testimony is overly limited and inconsistent with other of Kim’s
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`disclosures because it fails to account for other disclosures, as discussed
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`above. Id. ¶ 44. Thus, we do not afford his testimony substantial weight.
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`Instead, we credit Dr. Kiaei’s testimony on the issue because his testimony
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`is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.
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`Additionally, in the embodiment Petitioner relies upon, the first and
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`second bodies are connected by a hinge. Ex. 1010 ¶¶ 255–257. The portion
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`of Kim that Patent Owner relies on in support of the contention that the
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`hinge must have a structure allowing coupling and separating is when one of
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`the first and second bodies operates as a sub-device. Id. ¶ 258. But, Kim’s
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`disclosures provide for a coupling member on the bottom of the second body
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`for fixing the sub-device to the second body, with the first and second bodies
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`connected by a hinge, and this is accurately represented in Petitioner’s
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`Figure A. See Pet. 20–23; Ex. 1002 ¶¶ 83–86.
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`Patent Owner further argues that the configuration of Figure A of Kim
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`would not allow the cover of the device to properly close due to sandwiching
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`of sub-device 300, and that it would be unattractive, large, and ill-suited for
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`its purpose. PO Resp. 7–8 (citing Ex. 2004 ¶ 48). Patent Owner’s
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`arguments are premised on an overly limited view of the Figure A
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`embodiment as it would be interpreted in the view of one of ordinary skill in
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`the art. Kim broadly states that its embodiments “may be used singly and/or
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`by being combined together.” Ex. 1010 ¶ 179. Consideration of the
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`combination depicted in representative Figure A would reasonably have to
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`“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,
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`Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016).
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`For the reasons discussed above, Kim specifically describes that first
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`and second bodies are coupled and that the sub-device may be on either side
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`of the second body, which supports Petitioner’s depiction of Figure A.
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`Petitioner additionally asserts, and we agree, that even if Kim did not
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`specifically disclose the embodiment depicted in Figure A, such an
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`embodiment would have been obvious to a person of ordinary skill in the art.
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`Pet. 23. More specifically, Petitioner contends that this embodiment would
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`have been obvious to a person of skill in view of Kim’s folder-type
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`embodiments (Figure 11B), which are similar and closely related to the
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`watch-type embodiment (Figure 15A). Id. at 23–24 (citing Ex. 1010,
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`Figs. 11B, 15A; Ex. 1002 ¶¶ 89–95). Petitioner provides explanations of
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`how in both embodiments (folder-type and watch-type) the main device are
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`configured with a first body and a second body connected to each other by a
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`hinge so that the two bodies can open or close in a folding manner, and that
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`in both embodiments, Kim also describe