Trials@uspto.gov
`571-272-7822
`
` Paper 34
`
` Entered: July 26, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00471
`Patent 10,259,021 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`

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`IPR2021-00471
`Patent 10,259,021 B2
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 2, 4–10, 12, 14–17, and 19 of U.S. Patent No. 10,259,021 B2
`(Ex. 1001, “the ’021 patent”). Paper 2 (“Pet.”). GUI Global Products, Ltd.,
`D/B/A Gwee (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). Upon review of these papers, we instituted inter partes
`review, pursuant to 35 U.S.C. § 314, as to claims 1, 2, 4–10, 12, 14–17, and
`19 based on the challenges set forth in the Petition. Paper 10 (“Decision to
`Institute” or “Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 18, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 22, “Pet. Reply”), and Patent Owner filed a Sur-Reply
`(Paper 28, “Sur-Reply”). On May 19, 2022, we held an oral hearing. A
`transcript of the hearing is of record. Paper 33 (“Tr.”).
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1, 2, 4–10, 12, 14–17, and 19 of
`the ’021 patent are unpatentable.
`
`A. Related Matters
`The parties indicate that related district court litigations are GUI
`Global Prods., Ltd. d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624
`(S.D. Tex.) and GUI Global Prods., Ltd. d/b/a Gwee v. Apple, Inc., No.
`4:20-cv-02652 (S.D. Tex.). Pet. 79; Papers 4, 1–2; 5, 1–2. The parties also
`indicate that the ’021 patent is the subject of a petition filed by Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc. in
`IPR2021-00336. Pet. 79; Papers 4, 2; 5, 2.
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`B. The ’021 Patent
`The Specification of the ’021 patent describes how an apparatus may
`be used for cleaning view screens of electrical devices. Ex. 1001, 1:32–34.
`The ’021 patent aims to address the lack of convenient cleaning materials for
`portable electronic devices. Id. at 1:54–2:8.
`In one embodiment, a cleaning component for cleaning a view screen
`of an electronic device is coupled to a first case of the electronic device
`using a magnetic attractive force. Id. at 2:13–18, Fig. 1B.
`Figure 1B is illustrative and is reproduced below.
`
`
`Figure 1B shows a side view of a cleaning component. Id. at 4:33–34.
`Cleaning component 100 includes ferromagnetic or ferrimagnetic substrate
`102 covered with cleaning material 101, such as a fabric or a cloth. Id. at
`6:26–46.
`In another embodiment, a second case receives the cleaning
`component and also “functions to protect an electronic device’s primary
`case.” Id. at 2:42–55; Fig. 3.
`Figure 3 is illustrative and is reproduced below.
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`Figure 3 shows a computer case configured to receive a cleaning
`
`component. Id. at 4:41–42. Laptop computer 300 has rectangular
`indentation 302 dimensioned for receiving cleaning component 303 which
`has a magnet. Id. at 8:58–65.
`Figure 5A is also illustrative and is reproduced below.
`
`
`Figure 5A shows “a lateral type phone case configured to receive a
`cleaning component.” Id. at 4:45–46. Case 500 includes body 504 “which
`functions to hold a smart phone” and a lid having top 501, side 502, hinge
`507, and cleaning component 503. Id. at 10:9–14.
`
`The cleaning component is secured and adhered to a case via
`“dimensional stability to increase the security with which the clean
`components are adhered to the case.” Id. at 11:40–51; Fig. 9.
`Figure 9 is illustrative and is reproduced below.
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`Figure 9 shows a cleaning component “employing a structural feature
`
`to enhance adhesion.” Id. at 4:56–57. Device case 901 has raised section
`902 that is configured to fit within recess 904 of cleaning component 903.
`Id. at 11:45–47.
`Still in another embodiment, the cleaning component has a magnetic
`element that activates or deactivates a magnetic switch. Id. at 3:1–3. The
`’021 patent describes “activating or deactivating a device having a magnetic
`switch” as a “secondary application[]” and that “cleaning devices” “may
`also be manufactured without a cleaning component for use with the
`secondary applications.” Id. at code (57); see also id. at 11:59–62
`(explaining that the cleaning component may be able to activate magnetic
`switches on devices having switches). Thus, a device “may or may not
`include cleaning capabilities but will include a rare earth magnet or
`magnets” for “additional functionality.” Id. at 16:30–32, 40–42.
`
`Figure 24 is illustrative and is reproduced below.
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`Figure 24 shows a tablet computer having a switching device. Id. at
`
`5:49–50. Tablet computer 2400 has switching device 2401 that “is
`selectively coupled to the front of the portable electronic device 2402
`outside of the view screen 2403.” Id. at 18:5–9. A “magnetic switch is
`normally disposed with the portable electronic device but is shown [in
`Figure 24] for illustration purposes (2404).” Id. at 18:10–12. The
`’021 patent describes that the switching component “may be picked up” and
`switching device “is either applied directly to the magnetic switch or applied
`to either side of the switch and then slid past it to activate or deactivate the
`portable electronic device.” Id. at 18:13–18.
`
`Figure 25, reproduced below, shows a side view of the switching
`device in Figure 24. Id. at 5:51–52, 18:19–20.
`
`
`Figure 25 shows switching device 2401 having bottom surface 2501,
`
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
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`disposed therebetween. Id. at 18:19–21, 23–25. Tab 2503 “on the top
`surface” facilitates manipulation of switching device 2401. Id. at 18:22–23.
`
`C. Illustrative Claim
`Petitioner challenges claims 1, 2, 4–10, 12, 14–17, and 19 of the
`’021 patent. Claim 1 is an independent claim, and claims 2, 4–10, 12, 14–
`17, and 19 depend therefrom. Claim 1 is reproduced below, which includes
`changes made per a Certificate of Correction.
`1. A system comprising:
`a portable switching device coupled to a portable electronic
`device;
`wherein:
`the switching device and the electronic device are
`configured
`to selectively couple
`to each other
`employing magnetic force;
`the switching device comprises a first case;
`the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
`a first magnet is fully disposed within the electronic
`device;
`the electronic device comprises at least one element
`selected from the group consisting of beveled edges,
`ridges, recessed areas, grooves, slots, indented shapes,
`bumps, raised shapes, and combinations thereof;
`configured to correspond to complementary surface
`elements on the switching device;
`the portable switching device is configured to activate,
`deactivate or send into hibernation the portable
`electronic device; and
`when coupled, the first case functions to protect the second
`case.
`Ex. 1001, 21:38–22:7, p.27.
`
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`D. Instituted Grounds of Unpatentability
`We instituted inter partes review based on the following grounds of
`unpatentability under 35 U.S.C. § 103(a)1 as follows (Dec. 7–8, 33):
`
`Claim(s) Challenged
`1, 4–7, 10, 14–16, 19
`4, 14
`10
`2, 12
`8, 9, 17
`
`35 U.S.C §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Gundlach, 2 Lee3
`Gundlach, Lee,
`Nishikawa4
`Gundlach, Lee, Rosener5
`Gundlach, Lee, Brown6
`Gundlach, Lee, Mak-
`Fan7
`
`II. DISCUSSION
`A. Principles of Law
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). A patent
`claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`Because the ’021 patent has an effective filing before the effective date of
`the applicable AIA amendments, we refer to the pre-AIA versions of
`35 U.S.C. §§ 102 and 103.
`2 U.S. Pat. Appl. Pub. No. US 2008/0132293 A1, published June 5, 2008
`(Ex. 1005, “Gundlach”).
`3 U.S. Pat. No. US 7,548,040 B2, issued June 16, 2009 (Ex. 1006, “Lee”).
`4 U.S. Pat. Appl. Pub. No. US 2007/0145255 A1, published June 28, 2007
`(Ex. 1059, “Nishikawa”).
`5 U.S. Pat. Appl. Pub. No. US 2008/0076489 A1, published Mar. 27, 2008
`(Ex. 1050, “Rosener”).
`6 U.S. Pat. No. US 7,631,811 B1, issued Dec. 15, 2009 (Ex. 1008, “Brown”).
`7 U.S. Pat. Appl. Pub. No. US 2008/0012706 A1, published Jan. 17, 2008
`(Ex. 1010, “Mak-Fan”).
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`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness. 8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the declaration testimony of Dr.
`Jeremy Cooperstock, who testifies that a person having ordinary skill in the
`art “would have had at least a Bachelor’s degree in an academic area
`emphasizing electronical engineering, mechanical engineering, or a similar
`discipline, and at least two years of experience in the field working with
`electronic devices” and that “[s]uperior education could compensate for a
`deficiency in work experience, and vice-versa.” Pet. 7–8 (citing Ex. 1003
`¶ 20). Patent Owner relies on the declaration testimony of Dr. Hamid
`Toliyat, who applies a similar definition and testifies that a person having
`
`
`8 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
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`ordinary skill in the art “would have been someone having either a
`bachelor’s degree in electrical engineering, computer science, or mechanical
`engineering with some level of post-baccalaureate electronic device or
`system design experience, or someone with an equivalent level of experience
`and training through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr.
`Toliyat further testifies that “Dr. Cooperstock’s definition of a POSITA9 is
`somewhat different than mine; however, my opinions in this declaration
`would be the same regardless of whether or not my description or Dr.
`Cooperstock’s description of a POSITA is used.” Ex. 2022 ¶ 33.
`We adopt Petitioner’s definition of the level of skill for purposes of
`this Decision, except that we delete the phrase “at least” to avoid ambiguity
`in the definition of the level of skill. Patent Owner’s proposed level
`overlaps substantially with Petitioner’s proposed level. Even if we adopted
`Patent Owner’s proposed level of qualifications, the outcome would remain
`the same.
`
`C. Claim Construction
`In an inter partes review, “[claims] of a patent . . . shall be construed
`using the same claim construction standard that would be used to construe
`the [claims] in a civil action under 35 U.S.C. 282(b), including construing
`the [claims] in accordance with the ordinary and customary meaning of such
`[claims] as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`9 Person of ordinary skill in the art.
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`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`D. Asserted Obviousness of Claims 1, 4–7, 10, 14-16, and 19 over Gundlach
`and Lee
`1. Gundlach
`Gundlach describes a device that operates as a wireless headset and
`can be stored and charged in a host device such as a laptop computer or a
`cell phone. Ex. 1005 ¶ 2. Gundlach indicates a desire for mobility while
`managing peripherals that accompany a portable computer. Id. ¶ 3. To this
`end, Gundlach discloses that its device’s “relatively thin shape may allow
`the headset to be stored and charged in a portable cradle” and the “portable
`cradle may be a holder, clip, case or card that may fit inside a standard
`expansion slot.” Id. ¶ 56.
`Figure 1 is illustrative and is reproduced below.
`
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`Figure 1 shows a schematic view of a wireless device in
`communication with a host device. Id. ¶ 11. Wireless device 100 includes
`housing 101 and earpiece 104. Id. ¶ 58. Housing 101 includes microphone
`102, power source 111 such as a battery, and transceiver 106 for sending and
`receiving information 108 from host device 110 such as a computer or a cell
`phone. Id. Earpiece 104 includes speaker 105. Id.
`Gundlach’s wireless device may be held to a cradle by a magnet
`“which may be embedded in the cradle” and the wireless device “may also
`include a ferromagnetic portion” such as another magnet to which the
`magnet in the cradle may be attracted. Id. ¶ 68. The wireless device may
`also be held to the cradle by “mechanical means” such that the wireless
`headset is retained to the cradle. Id.
`Figure 18b is illustrative and is reproduced below.
`
`
`Figure 18b shows a perspective view of a case for retaining a wireless
`device. Id. ¶ 52. Wireless device 1800 is provided in a clamshell case that
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`has recess 1846 “defined therein to accommodate the wireless device.” Id.
`¶ 80.
`
`2. Lee
`Lee describes a wireless battery for charging a wireless headset.
`Ex. 1006, 3:21–22. Lee indicates that wireless headsets require their own
`power source such that many use rechargeable batteries which require a
`method for recharging. Id. at 1:25–29. Lee thus provides a method for
`wirelessly charging a battery in a wireless headset. Id. at 3:32–33.
`Figure 5 is illustrative and is reproduced below.
`
`
`
`Figure 5 shows a block diagram for wireless battery charging of a
`wireless headset. Id. at 2:14–15. Power source 200 provides energy via
`conductive means 202 to power adapter 201. Id. at 3:32–35. Power adapter
`201 provides power to wireless headset apparatus 204 via non-conductive
`means 203, which is “typically inductive coupling.” Id. at 3:35–37. Lee
`indicates that energy can be transferred to a wireless headset via inductive
`coupling to an energy collection element which is then transferred to a
`battery via a battery charging circuit. Id. at 4:27–31. A headset circuit that
`is powered by the battery provides a drive signal to a transducer, in which
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`the transducer has a dual purpose of producing sound and “receiving
`magnetic energy via [a] wireless magnetic field.” Id. at 4:32–39.
`Figure 12 is illustrative and is reproduced below.
`
`
`Figure 12 shows a block diagram for wireless battery charging of a
`wireless headset using a coil of a transducer as an energy collection element.
`Id. at 2:34–37. Energy is transferred to wireless headset apparatus 460 via
`inductive coupling 461 to energy collection element 465 (transducer coil)
`which is then transferred to battery 463 via battery charging circuit 462. Id.
`at 4:53–66. Switch 470, controlled by switch control signal 471, is closed
`when in a charging mode and is open in a non-charging mode. Id. at 5:13–
`16. When switch 470 is open, the transducer coil is isolated from the battery
`charging circuit such that the wireless headset is in a non-charging mode.
`Id. at 5:16–18. Preferably, switch 470 “can sense” when headset apparatus
`460 is near a power adapter so that it automatically closes or opens. Id. at
`5:30–34. A power adapter can provide charging, physical protection, and
`storage of the headset apparatus. Id. at 6:35–37.
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`3. Discussion
`Petitioner contends that claims 1, 4–7, 10, 14–16, and 19 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Gundlach and Lee.
`Pet. 9–50. In support of its showing, Petitioner relies upon the declaration of
`Dr. Jeremy Cooperstock. Id. (citing Ex. 1003).
`Patent Owner argues that it would not have been obvious to combine
`Gundlach and Lee. PO Resp. 1–3, 9–40. Patent Owner also argues that
`several limitations are not taught or suggested by the combination of
`Gundlach and Lee. Id. at 41–60. In support of its arguments, Patent Owner
`relies upon the declaration of Dr. Hamid Toliyat (Ex. 2022). We first
`consider whether it would have been obvious to combine Gundlach and Lee,
`as the parties do, and then address the arguments regarding claim limitations.
`For the reasons that follow, we conclude that Petitioner has met its
`burden of proving by a preponderance of the evidence that claims 1, 4–7, 10,
`14–16, and 19 would have been obvious in view of the asserted prior art.
`a. Gundlach in Combination with Lee
`Claim 1 recites a “portable switching device,” or “switching device,”
`and a “portable electronic device,” or “electronic device.” Petitioner
`proposes modifying Gundlach’s portable charging case with Lee’s inductive
`charging circuit to meet the “portable switching device” limitation. See,
`e.g., Pet. 21–22. Petitioner further proposes modifying Gundlach’s portable
`wireless headset with Lee’s inductive headset circuitry to meet the “portable
`electronic device” limitation. See, e.g., id. at 29–31, 35–36. Petitioner
`provides several reasons to combine Gundlach and Lee.
`In particular, Petitioner contends that Gundlach describes a wireless
`headset that is stored and charged in a portable cradle such as a holder, clip
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`case, or card. Pet. 14 (citing Ex. 1005 ¶ 55). Petitioner further contends,
`and we find, that although Gundlach generally describes that the case may
`contain charging circuitry and electrical contacts, Gundlach does not
`expressly describe the manner in which the headset’s charging circuitry
`responds when placed in the cradle for charging. Id.; Ex. 1005 ¶ 56.
`Petitioner argues, and we agree, that “[a] POSITA considering Gundlach,
`and noting its limited disclosure on charging, would have seen a need for
`elaboration and description of design options.” Pet. 14 (citing Ex. 1003
`¶ 35). According to Petitioner, a person of ordinary skill in the art “seeking
`a supplement to Gundlach, . . . would have encountered Lee’s disclosure on
`charging in the familiar context of wireless headsets.” Id. at 14–15 (citing
`Ex. 1003 ¶ 35).
`Petitioner argues, and we agree, that a person of ordinary skill in the
`art would have been motivated to exchange Gundlach’s conductive charging
`components with Lee’s more thoroughly explained inductive charging
`components. Id. at 15 (citing Ex. 1003 ¶ 37). We also agree with
`Petitioner’s contentions that the person of ordinary skill in the art would
`have recognized that inductive charging is a suitable alternative to
`conductive charging and would have appreciated benefits of inductive
`charging, such as enhanced reliability. Id. at 16–17 (citing Ex. 1003 ¶¶ 40–
`43; Exs. 1020–1022; Ex. 1006, 1:62–2:2). Petitioner further contends, and
`we agree, that employing Lee’s inductive charging solution in Gundlach’s
`device would result in a more compact form factor and interoperability
`absent the added bulk of a standardized connection. Id. at 17–18 (citing
`Ex. 1003 ¶¶ 44–45; Ex. 1005 ¶¶ 56–57, 66; Ex. 1006, 2:62–66, 4:55–57,
`Figs. 12, 16, 18, 19; Ex. 1029).
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`Patent Owner argues that “Gundlach provides ample disclosure
`concerning its conductive charging” and that “conductive charging of a
`consumer device such as a headset would be a relatively simple and
`straightforward process for a POSITA” such that there would be no need to
`look beyond Gundlach’s teachings. PO Resp. 9 (citing Ex. 2022 ¶ 8810), id.
`at 1–2. Dr. Toliyat, who testifies the same, does not support his conclusions
`with a sufficient factual basis. Ex. 2022 ¶¶ 88–89. For example, Dr. Toliyat
`does not explain how Gundlach provides ample disclosure concerning its
`conductive charging and we find that Gundlach does not. Rather, Gundlach
`describes that the case may contain “charging circuitry,” but does not
`describe what the circuitry contains. Ex. 1005 ¶ 80. Dr. Cooperstock’s
`testimony is entitled to substantial weight that “[w]hile robust on structural
`aspects of the wireless headset and storage solutions, Gundlach provides
`significantly less guidance and implementation details on the subject of
`charging” because his testimony is supported by Gundlach itself. Ex. 1003
`¶ 35 (citing Ex. 1005 ¶¶ 69, 73, 79, 80).
`Moreover, Dr. Toliyat does not provide sufficient evidence to support
`his conclusion that, at the time of the invention, conductive charging for a
`wireless headset would have been simple and straightforward. Ex. 2022
`¶ 88. Thus, his testimony does not undermine Dr. Cooperstock’s sufficient
`explanation that a “POSITA considering Gundlach, and noting its limited
`disclosure on charging, would have seen a need for elaboration and
`description of design options to implement the charging functionality,”
`which would have led the POSITA to Lee, also directed to wireless headsets.
`
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`10 We understand Patent Owner’s citation to Exhibit 1022 is a typographical
`error and that Exhibit 2022 was intended.
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`Ex. 1003 ¶ 35. As Dr. Cooperstock points out, and we agree, a “POSITA
`would have immediately noted Lee’s similarity to Gundlach” as Lee
`“discloses multiple embodiments for storing and charging a wireless headset
`in a ‘power adapter’ illustrated as a protective case” where “Lee provides
`clear circuit diagrams to guide implementation in the same context as
`Gundlach—wireless headsets.” Id. ¶¶ 36, 38. Thus, Patent Owner’s
`argument that Petitioner “is merely using hindsight reconstruction to
`advocate Lee’s Fig. 12 solution because the ‘dual role’ transducer coil
`design incorporates switch 470” does not undermine Petitioner’s arguments.
`PO Resp. 32 (citing Ex. 2022 ¶ 149). Patent Owner’s argument overlooks
`Petitioner’s persuasive reasoning that a POSITA considering Gundlach, and
`noting its limited disclosure on charging, would have seen a need for
`elaboration and description of design options to implement the charging
`functionality. Pet. 14–15 (citing Ex. 1003 ¶ 35).
`Next, Patent Owner argues that a person of ordinary skill in the art
`would not have sought out Lee’s inductive charging as a suitable option for
`the charging circuity in Gundlach, because inductive charging was
`inefficient, not recognized as an industry alternative to conductive charging,
`and not utilized in low power consumer electronic products. PO Resp. 10–
`15 (citing Ex. 2022 ¶¶ 92–96), 17 (inductive charging is less efficient and
`slower than conductive charging), 22–26. Lee describes a low power
`electronic device that utilizes inductive charging as an alternative to
`conductive charging like that utilized in Gundlach. Ex. 1006, 3:15–6:4; Pet.
`Reply 1–211. As Lee explains, conductive charging (like that used by
`
`11 Although Patent Owner argues that Petitioner’s assertion of a motivation
`based on Lee’s teachings is a new theory (PO Sur-Reply 8), we do not agree.
`The Petition discusses Lee’s teachings offering advantages to Gundlach (Pet.
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`Gundlach) was known to “add size by way of the necessity of connectors
`and increase the risk of failure via failure of mechanical components caused
`by fatigue and corrosion of contact elements.” Ex. 1006, 1:62–2:1; Pet.
`Reply 1. Accordingly, Lee itself provides reasons why a person having
`ordinary skill in the art would have modified Gundlach to include Lee’s
`inductive charging.
`We have considered Dr. Toliyat’s testimony that at the time of the
`invention he was not aware of any hand-held, consumer portable earpiece
`charging systems that did not use conductive charging to charge an earpiece
`from a portable, battery powered case. Ex. 2022 ¶¶ 96, 99. We determine
`that this testimony is not particularly relevant to the obviousness
`determination before us because it focuses too narrowly on consumer
`
`
`14–15), with Dr. Cooperstock testifying that Lee discloses its enhanced
`“reliability,” in view of the known failure-prone nature of electric contacts,
`and that “a POSITA would have appreciated that the benefits of inductive
`charging disclosed by Lee also would apply to Gundlach’s embodiments.”
`Ex. 1003 ¶ 42 (citing Ex. 1006, 1:62–2:2, 3:17–20).
`
`Additionally, even though we do not find that Petitioner raises a new issue in
`the Reply, Patent Owner argues for the first time in the Sur-Reply that Lee’s
`teachings are limited, that is, they “might arguably suggest, if anything,
`some advantage [of inductive charging], if any, over a USB cord.” PO Sur-
`Reply 9 (citing Ex.1006, 1:62–2:2). We do not find this argument
`persuasive because Patent Owner has failed to show that Gundlach is limited
`to charging of the headset battery from the case battery. Gundlach discloses
`that the case may contain a reserve power supply, such as a reserve battery.
`Ex. 1005 ¶ 80. If a battery is not used, power could be sent to the headset
`battery via the power supply adapter in the case. Id. In this case,
`Gundlach’s charging of the wireless headset would not be “from a portable
`battery powered device to portable battery powered device,” as Patent
`Owner contends and instead would be similar to Lee’s charging by USB
`connection which is replaced by inductive charging.
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`portable earpiece charging systems. 12 Also, to the extent that Dr. Toliyat’s
`testimony presents a differentiation based on charging from a portable
`battery powered device, Dr. Toliyat has failed to support the assertion that
`Gundlach is limited to charging from a portable, battery powered case, as
`explained supra note 11. In any event, and as Petitioner points out, “the
`Wireless Power Consortium—a multi-national group of electronics
`companies formed in 2008—promoted commercial adoption of inductive
`charging by standardizing specifications for inductive transmitters and
`receivers.” Pet. Reply 9–10 (citing Ex. 203213). Exhibit 2032 describes that
`the Wireless Power Consortium (WPC), comprised of “a group of Asian,
`European, and American companies in diverse industries, including
`electronics manufacturers” has defined “the type of inductive coupling (coil
`configuration) and the communications protocol to be used for low-power
`wireless devices.” Ex. 2032, 1 (emphasis added).
`Based on the record before us, inductive charging was a known
`alternative to conductive charging, and beneficial over conductive charging
`in some aspects. Ex. 1006, 1:62–2:1, 3:15–6:4; Ex. 1003 ¶¶ 41–43;
`Ex. 1023, 1:39–60 (recognizing problems with exposed contacts on wireless
`headsets and seeking inductive charging as a preferred alternative), 3:25–29,
`5:1–4 (describing an inductive battery charger for use with wireless
`
`12 Moreover, during cross examination, Dr. Toliyat confirmed that he did not
`recall having ever done any work, research into, or provided testimony
`related to earbuds or headsets. Ex. 1088, 19:19–21. Thus, to the extent his
`testimony would be relevant (Ex. 2022 ¶¶ 96, 99), such testimony is entitled
`to diminished weight based on Dr. Toliyat’s confirmation during cross
`examination of his lack of experience with headsets or earbuds.
`13 Patent Owner submitted Exhibit 2032 into evidence and argues that it is
`relevant to what a POSITA would have known at the time of the invention.
`See, e.g., Ex. 2022 ¶ 143, n.11.
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`headsets); Ex. 1029, 8:35–42 (describing inductive charging for a wireless
`headset such that “[t]he earbud advantageously does not require charging
`contacts on its small exterior surface when charging is performed with
`inductive charging”). We agree with Petitioner that to the extent there were
`known inefficiencies with inductive charging, a person having ordinary skill
`in the art would have known of tradeoffs between inductive and conductive
`charging, but would still have known inductive charging to be a viable
`alternative to conductive charging. Pet. Reply 9–10. An obviousness
`determination does not turn on whether the proposed combination is the
`preferred or most desirable combination. In re Fulton, 391 F.3d 1195, 1200
`(Fed. Cir. 2004); PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186,
`1197–98 (Fed. Cir. 2014).
`Patent Owner argues that Petitioner’s assertions that “conductors
`would add bulk and unreliability” is “false and contradicts the teachings of
`Gundlach itself.” PO Resp. 15–16. This is so, Patent Owner argues,
`because electrical contacts for charging Gundlach’s headset are only a
`couple of millimeters and “a POSITA would appreciate that electrical
`contacts are highly reliable.” Id. (citing 2022 ¶¶ 97–100), 18 (citing 2022
`¶ 114). Patent Owner’s arguments do not undermine Petitioner’s showing.
`We find that a person having ordinary skill in the art at the time of the
`invention would have known that eliminating electrical contacts, like those
`in Gundlach’s headset, would reduce bulk even if only “a couple of
`millimeters” because the conductors are eliminated entirely. Ex. 1005 ¶ 66,
`Figs. 9a, 9b.; Ex. 1003 ¶ 42. We further find that inductive charging was a
`known alternative to conductive charging, and in some aspects, more
`reliable than conductive charging. Ex. 1006, 1:62–2:1, 3:15–6:4; Ex. 1003
`¶¶ 41–43; Ex. 1023, 1:39–60, 3:25–29, 5:1–4; Ex. 1029, 8:35–42.
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`Patent Owner additionally argues that Lee’s inductive charging
`solution was not consistent with Gundlach’s compact form factor because
`Gundlach’s charging contacts occupy less space than the necessary coils,
`circuity, and larger battery needed by Lee’s inductive charging solution. PO
`Resp. 16–17 (citing Ex. 2022 ¶¶ 104–105), 18 (arguing that the Gundlach-
`Lee combination would require a larger, heavier form factor due to larger
`b