UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
`v.
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner
`
`Case IPR2021-00338
`U.S. Patent No. 10,589,320
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`Patent No. 10,589,320
`IPR2021-00338
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`C.
`
`INTRODUCTION ........................................................................................... 1
`KIM DISCLOSES OR RENDERS OBVIOUS THE FIGURE A
`EMBODIMENT .............................................................................................. 2
`A.
`Kim Discloses the Figure A Embodiment ............................................. 2
`B.
`The Figure A Embodiment Would Have Been Obvious in View of
`Kim ........................................................................................................ 5
`III. CLAIM 1 AND ITS DEPENDENT CLAIMS ARE OBVIOUS IN VIEW
`OF KIM ..........................................................................................................13
`A.
`Kim Discloses or Suggests “When Coupled, the First Case Functions
`to Protect the Second Case” ................................................................13
`Kim Discloses or Suggests “a First Magnet is Fully Disposed Within
`the Electronic Device” ........................................................................13
`Kim Renders Obvious Using Both Magnets and Raised Shapes and
`Complementary Recessed Areas .........................................................15
`Kim Discloses or Suggests a Portable Switching Device “Configured
`to Activate, Deactivate, or Send into Hibernation”.............................18
`Kim Discloses or Suggests the “Electronic Device Plays or Pauses a
`Remote Device” ..................................................................................19
`Kim Renders Obvious that the “Lid is Recessed to Configure to the
`Electronic Device” ..............................................................................19
`IV. KIM RENDERS OBVIOUS CLAIM 5 AND ITS DEPENDENT CLAIM .20
`V.
`KIM IN COMBINATION WITH KOH RENDERS CLAIM 11 OBVIOUS
` .......................................................................................................................21
`A.
`A POSITA Would Have Been Motivated to Combine Kim and Koh .21
`B.
`The Combination of Kim and Koh Discloses or Suggests “When
`Coupled, the First Case Functions to Protect the Second Case” .........22
`
`D.
`
`E.
`
`F.
`
`i
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`

`

`Patent No. 10,589,320
`IPR2021-00338
`
`C.
`
`D.
`
`The Kim-Koh Combination Discloses or Suggests that the “Switching
`Device” is “Configured to Activate, Deactivate, or Send into
`Hibernation” the Portable Electronic Device ......................................23
`The Kim-Koh Combination Discloses that “the Electronic Device
`Pauses or Plays a Remote Device” ......................................................24
`VI. KIM IN COMBINATION WITH LEE RENDERS CLAIM 9 OBVIOUS ..25
`VII. CLAIMS 2-4, 6-8, 10 AND 12-13 ARE UNPATENTABLE .......................26
`VIII. CONCLUSION ..............................................................................................26
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Patent No. 10,589,320
`IPR2021-00338
`
`Page(s)
`
`Cases
`Elbrus Int’l Ltd. v. Samsung Elecs. Co.,
`738 F.App’x 694 (Fed. Cir. 2018) ................................................................ 12, 17
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .................................................................... 12, 15
`Gen. Elec. Co. v. Raytheon Techs. Corp.,
`983 F.3d 1334 (Fed. Cir. 2020) .......................................................................... 22
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .................................................................... 14, 22
`Intercontinental Great Brands LLC v. Kellogg N. Am. Co.,
`869 F.3d 1336 (Fed. Cir. 2017) ............................................................................ 6
`NuVasive, Inc., v. Iancu,
`752 F.App’x 985 (Fed. Cir. 2018) .......................................................... 12, 15, 17
`Polygroup Ltd. v. Willis Elec. Co.,
`780 F.App’x 880 (Fed. Cir. 2019) ...................................................................... 17
`Raytheon Corp. v. Sony Corp.,
`727 F.App’x 662 (Fed. Cir. 2018) ...................................................................... 11
`
`iii
`
`

`

`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`
`1027
`
`Patent No. 10,589,320
`IPR2021-00338
`
`UPDATED EXHIBIT LIST
`
`DESCRIPTION
`U.S. Patent No. 10,589,320
`Declaration of Sayfe Kiaei, Ph.D.
`Curriculum Vitae of Sayfe Kiaei, Ph.D.
`File History of U.S. Patent No. 10,589,320
`File History of U.S. Provisional Application No. 61/515,752
`Summary of all applications in the ’320 patent’s priority chain
`Excerpt of GUI Global Products, Ltd., D/B/A Gwee v. Samsung
`Elecs. Co., Ltd., et al., Case No. 4:20-cv-2624 (S.D. Tex.), Gwee’s
`P.R. 3-1 and 3-2 Disclosures (Nov. 6, 2020)
`File History of U.S. Patent No. 10,259,020
`File History of U.S. Patent No. 10,259,021
`U.S. Patent Application Publication 2010/0227642 to Kim et al.
`[RESERVED]
`Korean Patent Publication 10-2008-0093178 to Koh et al.
`U.S. Patent Application Publication 2010/0298032 to Lee et al.
`[RESERVED]
`U.S. Patent Application Publication 2008/0166005 to Terlizzi
`U.S. Patent Application Publication 2006/0152576 to Kiessling
`U.S. Patent Application Publication 2003/0164895 to Viinikanoja
`International Publication WO 2010/142290 to Birger
`U.S. Patent No. 6,809,774 to Yamazaki
`U.S. Patent No. 7,251,197 to Yoshida et al.
`U.S. Patent Application Publication 2011/0211297 to Griffin et al.
`U.S. Patent Application Publication 2006/0071746 to Lylyharju
`A Dictionary of Chemistry, 5th ed. (2004)
`Order granting [39] Motion to Consolidate Cases in GUI Global
`Products, Ltd., D/B/A Gwee v. Samsung Elecs. Co., Ltd., et al.,
`Case No. 4:20-cv-2624 (S.D. Tex.)
`Docket listing in GUI Global Products, Ltd., D/B/A Gwee v.
`Samsung Elecs. Co., Ltd., et al., Case No. 4:20-cv-2624 (S.D. Tex.)
`Joint Motion for Scheduling Order in GUI Global Products, Ltd.,
`D/B/A Gwee v. Samsung Elecs. Co., Ltd., et al., Case No. 4:20-cv-
`2624 (S.D. Tex.)
`Letter from Jin-Suk Park to John Edmonds, dated December 29,
`2020
`
`iv
`
`

`

`Patent No. 10,589,320
`IPR2021-00338
`
`Exhibit No.
`1028
`1029
`
`1030
`
`1031
`
`DESCRIPTION
`
`[RESERVED]
`Bluetooth Audio/Video Remote Control Profile, rev. 13 (April 16,
`2007)
`“Application Data” with respect to U.S. Patent No. 10,589,320
`retrieved from PTO Public PAIR system
`Transcript of deposition of Mark N. Horenstein, Ph.D. in IPRs
`2021-00335, -00336, -00337, and -00338 (November 17, 2021)
`
`v
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`

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`Patent No. 10,589,320
`IPR2021-00338
`
`I.
`
`INTRODUCTION
`
`Petitioners submit this Reply to Patent Owner’s (“PO”) Response (“POR”)
`
`concerning claims 1-13 of U.S. Patent 10,589,320 (“the ’320 patent). PO’s
`
`arguments should be rejected and the claims found unpatentable and cancelled for at
`
`least the reasons set forth in the Petition and accompanying exhibits, the Board’s
`
`decision to institute inter partes review (“Decision”), the cross-examination
`
`testimony of Dr. Horenstein, and the additional reasons below.
`
`PO relies on incorrect premises about Kim’s disclosure and the law of
`
`obviousness, which, once corrected, confirm the unpatentability of the challenged
`
`claims. As to Kim, PO incorrectly argues, for example, that: Kim’s watch-type
`
`embodiment must use a TOLED display; both bodies of the watch-type embodiment
`
`must contain a screen; and hinge 100d in Kim’s watch-type embodiment is a single
`
`piece and must be separable. PO also selectively argues that Kim’s disclosure can be
`
`combined when it suits its purpose while arguing the opposite when Petitioners do
`
`so.
`
`As to the law of obviousness, PO incorrectly assumes or argues that: a
`
`POSITA is an automaton; obviousness requires bodily incorporation of features; and
`
`a proposed modification must be the preferred or the best option to be obvious.
`
`Additionally, the Board should discount or disregard Dr. Horenstein’s
`
`declaration because many of the arguments and figures in his declaration,
`
`1
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`

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`Patent No. 10,589,320
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`purportedly drafted at his direction (EX1031, 87:8-89:4), are conspicuously identical
`
`to arguments and figures raised in the POPR that the Board refused to credit as mere
`
`attorney argument (Decision, 25, 33, 36), even though Dr. Horenstein did not begin
`
`work on this matter until two months after PO submitted its POPR (EX1031, 84:14-
`
`17).1
`
`II. KIM DISCLOSES OR RENDERS OBVIOUS THE FIGURE A
`EMBODIMENT
`
`A.
`
`Kim Discloses the Figure A Embodiment
`
`Although PO admits that “Kim does describe a watch-type device in which
`
`sub-device 300 is coupled in an overlapping manner to the second body, in a state
`
`where the first and second bodies are coupled to one another,” it argues that Figure
`
`A is not disclosed. POR, 6. PO is wrong. Kim states:
`
`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
`
`1 By agreement of the Parties, Dr. Horenstein’s deposition can be used in this
`
`proceeding. EX1031, 10:6-20.
`
`2
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`

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`Patent No. 10,589,320
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`method of coupling the sub-device in an overlapping manner to
`
`the second body will now be described for the sake of brevity.2
`
`EX1010, ¶260. Figure A is an example graphical representation of what Kim
`
`explicitly teaches in words.
`
`Figure A
`
`According to PO, Kim teaches in connection with Figure 15B that the sub-
`
`device can only be coupled to the “top” of the second body when the first and second
`
`bodies are in a “closed” position. POR, 6-8, 20-22. Again, PO is wrong. Kim states
`
`that Figure 15B is one representation of this general concept, and that only this one
`
`2 All emphases added unless noted otherwise.
`
`3
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`Patent No. 10,589,320
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`example representation is shown “for the sake of brevity.” EX1010, ¶260. Kim itself
`
`refutes PO’s argument because it teaches that “a coupling member 510 for fixing the
`
`sub-device is provided on at least one side of the second body of the main device.”
`
`EX1010, ¶261. Thus, a POSITA would have understood that Kim’s disclosure
`
`regarding how a sub-device can be selectively coupled to the watch-type device of
`
`Figure 15A is not limited to what is shown in Figure 15B. Petition, 21; EX1002,
`
`¶¶82-84. Put another way, Kim teaches that the sub-device can be coupled to the top
`
`of the second body or to the bottom of the second body, as depicted in Figure A.
`
`PO also misunderstands Kim a second way: PO repeatedly states that in the
`
`embodiment of Figure 15A, the hinge must be removable—i.e., that the first and
`
`second bodies must be capable of separating from one another. POR, 5, 18, 24. That
`
`is also incorrect. Kim requires that the hinge must separate only when one of the two
`
`bodies is a sub-device (EX1010, ¶258), it does not require that the hinge be separable
`
`in embodiments, such as Figure 15A, where the two bodies comprise the main device
`
`and a separate sub-device is selectively coupled to the main device (EX1010, ¶¶255-
`
`257).
`
`PO also argues that Figure A would not be as “attractive” or as “functional
`
`and practical” as what is shown in Figure 15B. POR, 7-8. But none of that refutes
`
`Kim’s express teaching that the sub-device can be coupled to either side of the
`
`second body.
`
`4
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`Patent No. 10,589,320
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`B.
`
`The Figure A Embodiment Would Have Been
`Obvious in View of Kim
`
`While Kim expressly discloses in words an embodiment that Petitioners
`
`depicted graphically in example form in Figure A, at a minimum Kim renders Figure
`
`A obvious. Petition, 23-26; EX1002, ¶¶87-95. Petitioners’ obviousness arguments
`
`were supported by eight pages of testimony by Dr. Kiaei explaining (including
`
`specific citations to Kim) why a POSITA would have recognized the similarities
`
`between Kim’s Figures 11B and 15A, and been motivated to adapt and apply Kim’s
`
`disclosure with respect to Figure 11B to detachably couple sub-device 300 to the
`
`second body 100b of the watch type embodiment in the example manner shown in
`
`Figure A. EX1002, ¶¶87-95. PO does not address, much less refute, any of this
`
`testimony and evidence. Instead, PO raises a number of factually incorrect and/or
`
`legally irrelevant arguments, none of which rebut Petitioner’s obviousness evidence.
`
`First, PO argues that Figure 15A has a “single hinge” 100d and therefore is
`
`incompatible with Figure 11B which has “the first and second bodies coupled
`
`together by more than one hinge member.” POR, 9. PO’s understanding of Kim is
`
`myopic and, in any event, is factually incorrect. Initially, Kim does not limit the
`
`structure or implementation of hinge 100d in any way—it simply and broadly states
`
`that “[t]he second body may be configured to be connected by a hinge 100d to one
`
`side of the first body so as to be open or closed.” EX1010, ¶256.
`
`5
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`Moreover, PO’s own expert contradicts its “single hinge” argument. Dr.
`
`Horenstein testified that hinge 100d is “depicted as a piano-type hinge that has
`
`cylindrical sections through which a hinge pin can be inserted. Some of the
`
`cylindrical sections have to be attached to 100B, one or more, and one or more must
`
`be attached to a 100A.” EX1031, 81:16-82:7. Thus, the hinge depicted in Figure
`
`15A also has more than one hinge member, just as in Figure 11B.
`
`Dr. Horenstein also confirmed that an individual choosing a hinge for a design
`
`project would apply “common sense as to what type of hinge would work and which
`
`would not.” Id., 61:10-62:1. There is nothing in Kim that would suggest to a
`
`POSITA, much less require, that the folding watch-type embodiment of Figure A
`
`must have a hinge exactly as depicted in Figure 15A. Rather, a POSITA would have
`
`been able to use routine design skills to select the appropriate hinge, as Dr.
`
`Horenstein admits. Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869
`
`F.3d 1336, 1341 (Fed. Cir. 2017) (affirming finding of obviousness where “the court
`
`considered the simple and clear teachings of the art, the importance of common sense
`
`and ordinary creativity, and the conclusory character of [PO]’s expert’s assertions
`
`of nonobviousness”).
`
`6
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`Patent No. 10,589,320
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`PO admits that Figure 11B depicts a hinge structure that “can accommodate
`
`the placement of sub-device 300 between the first and second bodies.”3 POR, 11.
`
`Nevertheless, PO argues that the hinge structure shown in Figure 11B could not be
`
`used in a watch-type embodiment as it “would not permit such full opening, because
`
`Kim only shows the folder-type device with a partially open cover.” Id., 14; EX2004,
`
`¶57. PO maintains “full opening” is “desired and appropriate” for the watch-type
`
`embodiment to provide a “useful, dual-display configuration.” Id. Initially, PO’s
`
`“fully open” argument is a red herring. Kim does not require that bodies 100a and
`
`100b in Figure 15A be “fully open.” Rather, Kim merely states that hinge 100d
`
`allows the first and second bodies “to be open or closed.” EX1010, ¶256. Moreover,
`
`on cross-examination, Dr. Horenstein disavowed this position and testified that the
`
`hinge arrangement of Figure 11B could be opened to 180 degrees. EX1031, 79:8-
`
`81:15.
`
`At his deposition (but not in his declaration), Dr. Horenstein also added a
`
`requirement that the two screens in a dual-display embodiment must also be “co-
`
`3 PO additionally argues that any attempt by a POSITA to modify Figure A’s hinge
`
`would create a gap that would cause harm or esthetic issues. POR, 28-29. That
`
`argument is refuted by PO’s admission regarding Figure 11B.
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`7
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`Patent No. 10,589,320
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`planar.” EX1031, 77:10-79:5. That is both irrelevant and contrary to Kim’s teaching.
`
`First, Kim does not require that the embodiment of Figure 15A must have two
`
`displays or provide a dual-display configuration. EX1010, ¶256 (“the first body may
`
`include a display unit”). Second, Kim does not require that it’s folding dual-screen
`
`embodiments must be co-planar. Indeed, Figure 5 shows a dual-display main device
`
`implemented using a hinge similar to Figure 11B (which according to Dr.
`
`Horenstein, would result in the displays not being co-planar).4
`
`PO also argues that the hinge arrangement shown in Figure 11B is not
`
`compatible with Figure 15A because Kim requires that the hinge in Figure 15A be
`
`“located such that the second body can be connected to one side of the first body,”
`
`whereas in Figure 11B “the second body 100b is connected on top of the first body
`
`100a.” POR, 14 (emphasis in original). This is nothing but an attempt to create a
`
`distinction where none exists. Notably, Kim does not state that in Figure 11B the
`
`second body is connected on top of the first body—that is Petitioner’s self-serving
`
`characterization of what is shown in Figure 11B. In Figure 11B the first and second
`
`4 PO itself argues that Kim’s teaching with respect to Figure 5—directed to a phone
`
`embodiment with a TOLED—are applicable to Kim’s watch-type embodiment.
`
`POR, 24-27; EX2004, ¶¶59-62.
`
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`Patent No. 10,589,320
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`bodies are connected to each other on one side—just as Kim describes the
`
`arrangement with respect to Figure 15A. In other words, there is no meaningful
`
`difference in the location—i.e., on the side—where the first and second bodies are
`
`attached in Figure 11B versus 15A. Moreover, Kim’s Figure 5 shows using the same
`
`hinge arrangement as Figure 11B to implement a dual-display folder-type main
`
`device.
`
`Second, PO argues that Figures 11B and 15A are not compatible because the
`
`sub-device in Figure 11B is allegedly shown to have a one- or two-line display, and
`
`downsizing such a sub-device so as to incorporate it into a watch-type form factor
`
`would result in a screen that is too small to be practical. POR, 16. Kim directly refutes
`
`this argument as it shows in Figures 15C and 15D watch-type embodiments that
`
`include a sub-device with a similar one- or two-line display.
`
`Third, PO argues that Figure A would not have been obvious because the sub-
`
`device would have interfered with the proper operation and viewing of the TOLED
`
`screen in the second body 100b. POR, passim. These arguments rest on an (incorrect)
`
`unstated premise that the embodiment shown in Kim’s Figure 15A (or Figure A)
`
`requires that the second body 100b have a TOLED screen. Id., 13 (“wearer may look
`
`through the TOLED cover 100b”), 26 (“[b]y providing the look-through
`
`capability—e.g., using a TOLED display—in the watch cover 100b”), 27 (“via the
`
`TOLED display of the folded second body 100b”), 28-29 (“[f]or TOLED screen 251
`
`9
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`Patent No. 10,589,320
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`of second body 100b to work properly…”). But Dr. Horenstein admitted on cross-
`
`examination that “Kim allows for one of those—for the second body to be a TOLED,
`
`but it does not require it.” EX1031, 65:3-16; EX1010, ¶257 (“second body 100b
`
`may be configured as a transparent display (TOLED)”). Thus, the entire premise of
`
`PO’s TOLED-based attacks on the obviousness of Figure A falls away, and the
`
`Board should correctly reject them all.
`
`Fourth, PO argues that the various embodiments in Kim are “not
`
`‘interrelated’” and that “the manner in which sub-devices may be coupled in the
`
`context of each device-type is likewise distinct.” POR, 17. Kim, however directly
`
`refutes PO:
`
`Embodiments
`
`for a control method
`
`in
`
`the mobile
`
`terminal 100 may now be described with reference to the
`
`accompanying drawings. Embodiments may be used singly
`
`and/or by being combined together. Embodiments may be
`
`implemented more easily when the display 151 includes the
`
`touchscreen.
`
`EX1010, ¶179. PO relies on the first sentence in the paragraph above to argue that
`
`only Kim’s control methods can be combined. But the second sentence is not limited
`
`to control methods, and a POSITA would have understood it to encompass Kim’s
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`10
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`Patent No. 10,589,320
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`physical embodiments as well. EX1002, ¶¶41-48, 92. This understanding is further
`
`supported by the fact that immediately after this paragraph, Kim discusses the
`
`physical aspects of its embodiments for eighty-eight paragraphs before turning to
`
`the control methods.
`
`But even if Kim did not include an express statement that its various
`
`embodiments may be combined together, Kim can still be used for everything it
`
`reasonably teaches to a POSITA. Raytheon Corp. v. Sony Corp., 727 F.App’x 662,
`
`667 (Fed. Cir. 2018). As noted above, Petitioners and Dr. Kiaei provided a detailed,
`
`reasoned explanation why a POSITA would have recognized the similarities
`
`between Kim’s Figures 11B and 15A, which PO did not rebut.
`
`Fifth, PO repeats that Kim teaches the sub-device can only be coupled to the
`
`“top” of the second body when the first and second bodies are closed in the watch-
`
`type embodiment. POR, 20-24. As discussed in Section II.A, this argument
`
`fundamentally misunderstands Kim’s teachings.
`
`Sixth, PO argues that the embodiment exemplified by Figure A has “too many
`
`operating issues that would prevent a POSITA from adopting it.” POR, 30-33. More
`
`particularly, PO argues that Figure A does not allow for coupling and decoupling of
`
`the sub-device because of the forces exerted on the second body during these
`
`operations.
`
`11
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`Patent No. 10,589,320
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`A POSITA is “a person of ordinary creativity, not an automaton.” Facebook,
`
`Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020). PO
`
`provides no evidence to suggest that these so-called issues were beyond a POSITA’s
`
`skill to address by, for example, appropriately calibrating the coupling force between
`
`the main device and the sub-device and the strength of the hinge, and/or decoupling
`
`the sub-device from the end proximal to the hinge, rather than the distal end as
`
`depicted in Horenstein Figure 19.5 NuVasive, Inc., v. Iancu, 752 F.App’x 985, 988
`
`(Fed. Cir. 2018) (upholding Board’s finding of obviousness because “[PO]’s expert
`
`testimony regarding the inoperability of the combination … is mere speculation and
`
`conclusory”); Elbrus Int’l Ltd. v. Samsung Elecs. Co., 738 F.App’x 694, 698-99
`
`(Fed. Cir. 2018) (PO’s argument that the combination was unworkable was
`
`“basically irrelevant” because “the test for obviousness is not whether the features
`
`of a secondary reference may be bodily incorporated into the structure of the primary
`
`reference, but rather whether a skilled artisan would have been motivated to combine
`
`the teachings of the prior art references to achieve the claimed invention.”).
`
`5 To the extent PO questioned Dr. Kiaei about such issues, he indicated that
`
`resolution “depends on the design.” EX2002, 47:10-49:8, 101:22-104:11.
`
`12
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`Patent No. 10,589,320
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`III. CLAIM 1 AND ITS DEPENDENT CLAIMS ARE OBVIOUS IN VIEW
`OF KIM
`
`A.
`
`Kim Discloses or Suggests “When Coupled, the First Case
`Functions to Protect the Second Case”
`
`PO argues that the main device’s case (“first case”) is incapable of protecting
`
`the sub-device’s case (“second case”) because the sub-device can be coupled only
`
`on “top” of the second body. POR, 34-36. As discussed in the Petition, Dr. Kiaei’s
`
`declaration and Section II, Kim discloses, or at a minimum renders obvious, Figure
`
`A. See Petition, 19-26; EX1002, ¶¶79-95. Thus, PO’s premise is incorrect, rendering
`
`this argument irrelevant.
`
`PO also argues that the Figure A watch-type embodiment is incapable of
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`closing when the sub-device is coupled to the second body. POR, 36-38. This
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`effectively rehashes the same argument PO raised as to why Figure A would not
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`have been obvious, and is refuted for the same reasons. See supra Section II.B;
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`Petition, 23-26; EX1002, ¶¶ 87-95.
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`B.
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`Kim Discloses or Suggests “a First Magnet is Fully Disposed
`Within the Electronic Device”
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`As the Petition demonstrated, a POSITA would have understood Figure A
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`(which is based on Kim’s Figures 15A and 15B) to depict the magnets 510 to be
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`flush with the sub-device’s surface. Petition, 32-35, EX1002, ¶119. PO argues that
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`these figures are not “sufficiently detailed for a [POSITA] to arrive at such a
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`conclusion.” POR, 39. As the Decision noted, however, these figures are perspective
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`views “which would also serve to illustrate three dimensional depths.” Decision, 30.
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`That Figure 10A may show an embodiment with raised magnets does not negate
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`what Figures 15A and 15B would have taught a POSITA.
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`PO also argues that a POSITA would not have understood a magnet that is
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`within and flush with the surface of the sub-device to be fully disposed therein. POR,
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`38. But PO does not provide any evidence or reasoned explanation in support of this
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`argument (POR, 38; Ex. 2004, ¶75), nor does PO seek a construction consistent with
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`this supposed understanding.
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`Finally, PO fails to effectively rebut Petitioners’ argument that fully disposing
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`magnets 510 in the sub-device would have been obvious to a POSITA. Petition, 33-
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`35, EX1002, ¶¶120-125. First, PO faults Petitioners for failing “to adequately
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`explain why the ‘fully disposed’ option would be the one preferred by a POSITA.”
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`POR, 40. That is not the obviousness inquiry. A particular combination need not be
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`the preferred, or the most desirable, combination described in the prior art in order
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`to provide motivation or be obvious. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir.
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`2004). And Petitioners provided a reasoned explanation for why a POSITA would
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`have been motivated to fully dispose the magnets in the sub-device. Petition, 33-35,
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`EX1002, ¶¶120-125.
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`PO also speculates regarding obstacles that allegedly would have prevented
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`fully disposing magnets in the sub-device, such as scratching, the displays adhering
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`to one another, and diminishing magnetic forces. POR, 40-42. Although Dr.
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`Horenstein now parrots these arguments in his declaration (EX2004, ¶¶78-79), they
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`remain at their core the unsupported attorney arguments the Board declined to credit
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`in the Decision. Decision, 29-30. A POSITA is presumed to have basic ability and
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`ordinary creativity. Facebook, 973 F.3d at 1343. Neither PO nor Dr. Horenstein
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`provide any evidence, for example, that dust or sand could in fact scratch the
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`screen(s) that a POSITA would have used or that such screen(s) would have adhered
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`to each other; nor do they provide any evidence that a POSITA would have been
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`incapable of selecting appropriately sized and shaped magnets to couple the main
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`device and sub-device when the magnets are embedded in the sub-device. NuVasive,
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`752 F.App’x at 988. That failure is fatal in view of the fact that it was known for
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`POSITA to embed magnets within electronic devices of the type represented by
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`Figure A. EX1002, ¶¶123-125.
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`C.
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`Kim Renders Obvious Using Both Magnets and Raised Shapes
`and Complementary Recessed Areas
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`As the Petition demonstrates, it would have been obvious to a POSITA to use
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`both magnets and hooks/recesses as taught by Kim to couple the sub-device to the
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`main device. Petition, 35-39; EX1002, ¶¶126-141.
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`PO first argues that in this arrangement “the sub-device would not be
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`decoupled from the main device by overcoming magnetic force,” because a user
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`would also have to overcome the mechanical coupling. POR, 43-44 (emphasis in
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`original). That argument is non-sensical, and is premised on an implicit claim
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`construction that PO has failed or refused to advance—i.e., that magnetic force must
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`be the only and/or last force overcome to decouple the sub-device’s case (“second
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`case”) from the main device’s case (“first case”). The plain meaning of the claim
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`requires no such thing. It is unrefutably true that in the arrangement exemplified by
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`Figure A the sub-device could not be decoupled from the main device unless the
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`magnetic force attracting them to each other was overcome (regardless of whether
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`additional forces would also have to be overcome).
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`PO next argues that a POSITA would not have been motivated to use both
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`magnetic and mechanical techniques to couple the sub-device and main device, and
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`that Birger advocates for use of magnets over mechanical attachments. POR, 44. PO
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`misunderstands Birger, which teaches providing magnetic means to “more firmly”
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`secure the earphones to the housing only after first teaching mechanical means for
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`holding them together. EX1018, 10:26-11:2, 11:17-19. Thus, Birger confirms that a
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`POSITA knew to use both magnetic and mechanical techniques to achieve a more
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`secure (yet still detachable) coupling. EX1002, ¶¶130-132. Koh, also cited in the
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`Petition as evidence in support of this point (Petition, 37; EX1002, ¶¶133-137;
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`EX1012, ¶¶19, 46-48), is entirely ignored by PO and, therefore, is unrebutted. And,
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`of course, Kim itself teaches using both magnetic and mechanical techniques to
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`attach a sub-device to the main device. Petition, 37-39, EX1002, ¶¶138-140.
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`Finally, PO alleges that a POSITA would have been unable to use both
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`magnets and hooks/recesses to couple the sub-device and main device. POR, 44-47.
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`Again, PO assumes that a POSITA would have been an automaton bereft of any
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`creativity or skill to address the so-called “problems” it conjures up. PO fails to
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`provide any evidence to suggest, for example, that a POSITA was incapable of
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`exercising creativity and skill to select a hinge strong enough to withstand forces
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`that ordinary use of the device would entail, that a POSITA necessarily had to use
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`two or four hooks, or that a POSITA was incapable of incorporating both magnetic
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`and mechanical techniques in a wrist worn device. See NuVasive, 752 F.App’x at
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`988; EX1002, ¶¶130-141. In any event, it is well-settled that “the test for
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`obviousness is not whether the features of a secondary reference may be bodily
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`incorporated into the structure of the primary reference but rather whether a skilled
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`artisan would have been motivated to combine the teachings of the prior art
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`references to achieve the claimed invention.” E.g., Polygroup Ltd. v. Willis Elec.
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`Co., 780 F.App'x 880, 884 (Fed. Cir. 2019); Elbrus, 738 F.App'x at 698.
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`D.
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`Kim Discloses or Suggests a Portable Switching Device
`“Configured to Activate, Deactivate, or Send into Hibernation”
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`PO argues that Petitioners failed to explain how Kim’s watch-type main
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`device activates, deactivates or hibernates the sub-device.6 POR, 47-50. PO is
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`wrong. Petition, 40-44; EX1002, ¶¶143-157. Notably, PO relies solely on attorney
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`argument as Dr. Horenstein apparently refused to support a single assertion made by
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`PO on this issue. Unsurprising, because PO’s arguments directly contradict Dr.
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`Horenstein’s other testimony. Compare POR, 48 (“Petitioner’s contention that
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`Kim’s disclosure for ‘automatic controlling of a terminal operation (menu display)’
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`by a ‘bar-type mobile terminal,’ is ‘equally applicable’ to watch-type device … is
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`unwarranted”) with EX2004, ¶40 (“When describing the control methods, Kim
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`discusses only a single one of the different device-types in each instance …
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`[because] a POSITA would have recognized that Kim already explained that the
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`control methods ‘may be used singly and/or by being combined together.”).
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`6 PO also separately offers only attorney argument that Petitioners failed to show
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`that Kim discloses or suggests a “switching device.” POR, 42. Petitioners have
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`demonstrated why the main device is a switching device. Petition, 26-27; EX1002,
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`¶¶96-101.
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`E.
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`Kim Discloses or Suggests the “Electronic Device Plays or Pauses
`a Remote Device”
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`PO’s argument that Kim fails to disclose or suggest “the electronic device
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`plays or pauses a remote device” (POR, 50-51), also is nothing more than attorney
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`argument that Dr. Horenstein apparently refused to support. PO is wrong, both for
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`the reasons set forth in the Petition (Petition, 44-45, EX1002, ¶¶158-159), and
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`because PO has admitted that Kim’s control