Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Entered: August 9, 2022
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`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.
`
`IPR2021-00473
`Patent 10,589,320 B1
`
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

`

`IPR2021-00473
`Patent 10,589,320 B1
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`
`
`
`INTRODUCTION
`I.
`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 Apple Inc. (“Petitioner”)
`has shown, by a preponderance of the evidence, that claims 1–5 and 7–13 of
`U.S. Patent No. 10,589,320 B1 (Ex. 1001, “the ’320 patent”) are
`unpatentable.
`Procedural Background
`A.
`Petitioner filed a Petition requesting inter partes review of claims 1–5
`and 7–13 (“the challenged claims”) of the ’320 patent, along with the
`supporting Declaration of Dr. Jerry Cooperstock. Paper 2 (“Pet.”); Ex.
`1003. GUI Global Products, Ltd., d/b/a Gwee (“Patent Owner”) filed a
`Preliminary Response to the Petition, along with the supporting Declaration
`of Mr. Robert Stillerman. Paper 6; Ex. 2001.
`Pursuant to 35 U.S.C. § 314(a), on August 13, 2021, we instituted
`inter partes review on the grounds of:
`
`Claim(s) Challenged
`1, 2, 8, 9, 11
`
`35 U.S.C §
`103(a)1
`
`Reference(s)/Basis
`Gundlach,2 Lee3
`
`
`
`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 version of 35 U.S.C. § 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”).
`2
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`IPR2021-00473
`Patent 10,589,320 B1
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`
`Claim(s) Challenged
`2, 8
`11
`3, 7
`4, 5, 10, 12, 13
`1, 2, 8, 9, 11
`2, 8
`
`11
`
`3, 7
`
`4, 5, 10, 12, 13
`
`35 U.S.C §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Gundlach, Lee, Nishikawa4
`Gundlach, Lee, Rosener5
`Gundlach, Lee, Brown6
`Gundlach, Lee, Mak-Fan7
`Gundlach, Lee, Kim8
`Gundlach, Lee, Kim,
`Nishikawa
`Gundlach, Lee, Kim,
`Rosener
`Gundlach, Lee, Kim,
`Brown
`Gundlach, Lee, Kim, Mak-
`Fan
`
`See Pet. 1–2; Paper 9 (“Inst. Dec.” or “Dec.”), 7–8, 40.
`Patent Owner filed a Patent Owner Response (“PO Resp.”). Paper 17.
`Patent Owner filed the Declaration of Dr. Hamid Toliyat to support its
`positions. Ex. 2022. Petitioner filed a Reply (“Pet. Reply”) to the Patent
`Owner Response, with the supporting Supplemental Declaration of Dr.
`Cooperstock. Paper 21; Ex. 1089. Patent Owner filed a Sur-Reply to
`Petitioner’s Reply (“PO Sur-Reply”). Paper 27.
`An oral hearing was held on May 19, 2022. A transcript of the
`hearing is included in the record. Paper 32 (“Tr.”).
`
`
`
`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”).
`8 U.S. Pat. Appl. Pub. No. US 2011/0117851 A1, published May 19, 2011
`(Ex. 1007, “Kim”).
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`IPR2021-00473
`Patent 10,589,320 B1
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`
`Related Matters
`B.
`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. 82; Paper 4, 1–2. The parties indicate that the ’320 patent is also
`the subject of a petition filed by Samsung Electronics Co., Ltd. in IPR2021-
`00338. Pet. 83; Paper 4, 2.
`The ’320 Patent
`C.
`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
`using magnetic attractive force. Id. at 5:64–6:2, Fig. 1B. Figure 1B is
`illustrative and is reproduced below.
`
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`Patent 10,589,320 B1
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`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.
`
`
`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
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`“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”
`“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.
`
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`Patent 10,589,320 B1
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`
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`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.
`
`
`Figure 25, above, shows switching device 2401 having bottom surface 2501,
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
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`IPR2021-00473
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`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;
`configured to correspond to complementary9 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;
`
`
`
`9 Per a Certificate of Correction, “complimentary” was changed to
`“complementary.” See Ex. 1001, 27.
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`Patent 10,589,320 B1
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`
`[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
`The Parties’ Arguments
`A.
`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. 11–40.
`Here, we must consider whether Petitioner has established by a
`preponderance of the evidence that the challenged claims 1–5 and 7–13 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
`10, 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, 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
`Guide10, 66 (November, 2019).
`
`
`
`10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`IPR2021-00473
`Patent 10,589,320 B1
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`
`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 1–5 and 7–13 of the ’320 patent, as well as the
`rationale to combine the references with reasonable expectation of success.
`
`Level of Ordinary Skill in the Art
`B.
`Relying on the testimony of Dr. Jerry Cooperstock, Petitioner
`proposes that a person of ordinary skill in the art at the time of the ’320
`patent would have had “at least a Bachelor’s degree in an academic area
`emphasizing electrical engineering, mechanical engineering, or a similar
`discipline, and at least two years of experience in the field working with
`electronic devices,” and a person of skill could have obtained similar
`experience with additional education or additional experience could
`compensate for educational deficiencies. Pet. 6 (citing Ex. 1003 ¶ 20).
`
`Supported by the testimony of Dr. Toliyat, 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 an equivalent level of experience and training
`through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr. Toliyat
`testifies that Dr. Cooperstock’s definition of a skilled artisan “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
`
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`description of a POSITA11 is used.” Ex. 2022 ¶ 33. Patent Owner, however,
`disputes the inclusion of “at least” in Dr. Cooperstock’s proposed
`qualification because it leaves the actual education and experience of a
`person of ordinary skill in doubt. PO Resp. 5 (citing Ex. 2002 ¶ 30).
`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. 9. Here, we adopt
`Petitioner’s definition of the level of skill, except that we delete the phrase
`“at least” to avoid ambiguity in the definition of the level of skill.
`Accordingly, we determine 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. We note that even if we adopted Patent Owner’s proposed
`level of qualifications, the outcome of this Decision would remain the same.
`
`
`
`11 A person of ordinary skill in the art at the time of the invention.
`
`11
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`IPR2021-00473
`Patent 10,589,320 B1
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`
`Claim Construction
`C.
`For petitions filed after November 13, 2018, the Board interprets
`claim terms in accordance with the standard used in federal district court in a
`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 1015, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`According to Petitioner, “no express constructions are required to
`institute review and find the Challenged Claims unpatentable” in the
`proceeding. Pet. 6. Patent Owner similarly states that the ordinary meaning
`of the terms should be used. PO Resp. 6.
`In the Institution Decision, we determined that it was not necessary to
`provide express interpretations of any claim terms. Dec. 10–11. 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)
`
`12
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`IPR2021-00473
`Patent 10,589,320 B1
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`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`
`D.
`
`Alleged Obviousness of Claim 1, 2, 8, 9, and 11 Over Gundlach
`and Lee
`Petitioner contends that claims 1, 2, 8, 9, and 11 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combination of Gundlach and
`Lee. Pet. 17–57. To support its contentions, Petitioner provides
`explanations as to how the combination of Gundlach and Lee teaches each
`claim limitation. Id. Petitioner also relies upon Dr. Cooperstock’s
`Declaration and Supplemental Declaration (Exs. 1002, 1089) to support its
`positions. Patent Owner argues that the prior art does not teach all the claim
`limitations and Petitioner has provided insufficient rationale to combine the
`reference. PO Resp. 9–57. Petitioner also relies upon Dr. Toliyat’s
`Declaration. Ex. 2022.
`We begin our discussion with a brief summary of Gundlach and Lee,
`and then address the evidence and arguments presented.
`Gundlach (Ex. 1005)
`1.
`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, above, shows a schematic view of a wireless device in
`communication with a host device. Ex. 1005 ¶ 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
`include a ferromagnetic portion” such as another magnet which the magnet
`in the cradle may be attracted. Ex. 1005 ¶ 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.
`
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`
`
`Figure 18b, above, shows a perspective view of a case for retaining a
`wireless device. Ex. 1005 ¶ 52. Wireless device 1800 is provided in a
`clamshell case that has recess 1846 “defined therein to accommodate the
`wireless device.” Id. ¶ 80.
`Lee (Ex. 1006)
`2.
`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.
`
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`
`Figure 5 is illustrative and is reproduced below.
`
`
`Figure 5 shows a block diagram for wireless battery charging of a wireless
`headset. Ex. 1006, 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
`the transducer has a dual purpose of producing sound and “receiving
`magnetic energy via [a] wireless magnetic field.” Id. at 4:32–39.
`
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`
`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. Ex.
`1006, 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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`
`Analysis
`3.
`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;
`(3) the level of ordinary skill in the art; and (4) objective indicia of
`nonobviousness.12 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Because many of the issues in dispute relate to the rationale to
`combine Gundlach and Lee, we will address those issues first.
`Rationale to Combine
`a)
`Petitioner argues that a person of ordinary skill in the art would have
`
`been motivated to combine Gundlach and Lee and, more specifically, would
`have exchanged Gundlach’s conductive charging components with Lee’s
`inductive charging components. Pet. 12–15; see Ex. 1003 ¶ 37. Petitioner
`asserts there would be motivation to pursue the combination of Gundlach
`with Lee because a person of ordinary skill in the art: 1) would have looked
`to Lee for details on charging in view of Gundlach’s deficient descriptions;
`2) would have recognized that inductive charging is a suitable alternative to
`conductive charging that was known to produce similar results; 3) would
`
`
`
`12 No evidence of objective indicia of nonobviousness has been presented by
`Patent Owner. See generally PO Resp.
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`have appreciated benefits of inductive charging such as enhanced reliability;
`4) would have appreciated that Lee’s inductive charging solution was
`consistent with Gundlach’s goal of providing a compact form factor; and 5)
`would have viewed Lee’s inductive charging solution as providing
`interoperability whereas the wireless headset could be recharged using other
`types of chargers beyond the clamshell case without a penalty of additional
`hardware. Pet. 12–15.
`
`For the first basis for the combination, Petitioner argues that although
`Gundlach teaches featuring “a wireless mono or stereo headset” that is
`“stored and charged” in a “portable cradle,” it “does not expressly describe
`the manner in which the headset’s ‘charging circuitry’ responds when placed
`in the cradle for charging.” Pet. 12 (citing Ex. 1005 ¶ 55). Petitioner
`contends, and we agree, that Gundlach notes that “[t]he case may contain . . .
`charging circuitry” and “electrical contacts,” but it “is largely unconcerned
`with implementation details of charging.” Id. (citing Ex. 1005 ¶¶ 69, 73,
`79–80; Ex. 1003 ¶ 35). Petitioner asserts, and we agree, that in light of the
`limited disclosures in Gundlach, a person of ordinary skill in the art “would
`have seen a need for elaboration and description of design options.” Id. In
`support, Dr. Cooperstock testifies that a search for supplemental disclosures
`“would have led the POSITA to Lee, a reference addressing this topic in the
`same context as Gundlach—wireless headsets.” Ex. 1003 ¶ 35.
`
`Contrary to Petitioner’s assertions on this issue, Patent Owner argues
`that “Gundlach provides ample disclosure concerning its conductive
`charging via contacts 326 and micro-USB connections.” PO Resp. 9. We
`do not agree. Dr. Cooperstock’s testimony on this issue is that although
`Gundlach’s disclosures are “robust on structural aspects of the wireless
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`headset and storage solutions,” there is “significantly less guidance and
`implementation details on the subject of charging.” Ex. 1003 ¶ 35. This
`testimony is supported by the record—Gundlach discloses that the case may
`contain charging circuitry and electrical contacts, but there is no description
`of the circuitry or details of charging. Ex. 1003 ¶ 35; Ex. 1005 ¶¶ 69, 73, 79,
`80. And although Patent Owner asserts that the disclosure is ample, there is
`no identification of what the disclosure actually is, short of the identification
`of contacts 326 and micro-USB connections. PO Resp. 9. And although Dr.
`Toliyat testifies that “Gundlach provides ample disclosure on its conductive
`charging to a POSITA, because conductive charging would be a relatively
`simple and straightforward process,” Dr. Toliyat states this in a conclusory
`manner absent supporting evidence. Ex. 2022 ¶ 88.13 As such, we find that
`the record supports that the disclosure of Gundlach is limited, and this
`supports Dr. Cooperstock’s testimony that one of ordinary skill in the art
`would have been led to a wireless headset reference like Lee for
`supplemental disclosure. Ex. 1003 ¶ 35.
`
`Petitioner also asserts, and we agree, that a person of ordinary skill in
`the art would have recognized that inductive charging is a suitable
`alternative to conductive charging. Pet. 14. Dr. Cooperstock provides
`supporting testimony that a person of ordinary skill in the art would have
`known that “inductive charging was an industry-recognized alternative to
`conductive charging that produced substantially similar results, particularly
`in the context of low-power portable devices. Ex. 1003 ¶ 41. Dr.
`
`
`
`13 Page 9 of Patent Owner’s Response contain references to “Ex. 1022,” and,
`in context, it appears that the references were intended to be to “Ex. 2022.”
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`Cooperstock refers to inductive chargers used for smart phones and media
`players that were established commercial products at the time of the
`invention. Id. (citing Ex. 1020; Ex. 1021; Ex. 1022). Dr. Cooperstock
`further testifies that in the routine design process a person of ordinary skill in
`the art “developing a portable device and associated charger” “would have
`contemplated an inductive charging solution like Lee’s.” Id.
`
`In contrast, Patent Owner asserts that a person of ordinary skill in the
`art would not have seen inefficient inductive charging “as an industry-
`recognized alternative to efficient conductive charging for low power
`portable devices” and would not have sought Lee’s inductive charging “as
`producing substantially similar results as conductive in the context of low-
`power portable devices.” PO Resp. 10 (citing Ex. 2022 ¶ 92). Patent Owner
`argues that a person of ordinary skill in the art would have known that the
`Powermat and the Palm Touchstone charger in 2001 were not for portable
`charging like Gundlach’s clamshell case and instead were used as a conduit
`for power from a wall socket of a USB connection. Id. at 10–14. Patent
`Owner asserts that a person of ordinary skill in the art “would not have been
`aware of any portable, especially hand-held, low power consumer electronic
`products that inductively charged directly from a portable battery powered
`device to portable battery powered device in 2011.” Id. at 15 (citing
`Ex. 2022 ¶ 96).
`
`We do not find that Patent Owner’s arguments undermine Petitioner’s
`persuasive showing. Petitioner proposes modifying Gundlach’s conductive
`charging components with Lee’s inductive charging components, and the
`relevant aspect at issue is charging of a wireless headset. See Ex. 1003
`¶¶ 36, 42. We agree with Petitioner that Lee, as well as Gundlach, include
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`embodiments for storing and charging wireless headsets. Ex. 1003 ¶ 36
`(citing Ex. 1005 ¶ 80; Ex. 1006, 6:39–46). We also agree that Lee itself
`discloses the motivation to modify Gundlach’s conductive charging—Lee
`identifies that in previously-known wired methods of recharging batteries in
`wireless headsets there were disadvantages of increased size and risk of
`failure, and Lee’s improvements presented opportunities to correct those
`problems. Pet. Reply 1–2 (citing Ex. 1006, 1:14–2:2, 3:15–6:4). We discuss
`Patent Owner’s arguments related to alleged size and failure issues below,
`but we agree with Petitioner that Lee describes a low power electronic
`device that utilizes inductive charging as an alternative to conductive
`charging like that utilized in Gundlach. Id. Lee also provides reasons why a
`person having ordinary skill in the art would have modified Gundlach to
`include Lee’s inductive charging.14 Id.; Pet. 14–15. We agree with
`
`
`14 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 as offering advantages to Gundlach
`(Pet. 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
`Reply, Patent Owner argues for the first time in 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 Gundlach is not 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
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`Petitioner that, accordingly, Lee provides motivation to one of ordinary skill
`in the art to modify Gundlach. KSR, 550 U.S. at 417 (“When a work is
`available in one field of endeavor, design incentives and other market forces
`can prompt variations of it, either in the same field or a different one. If a
`person of ordinary skill can implement a predictable variation, § 103 likely
`bars its p