National Products Inc.

Patent Trials and Appeals Board

Oct 4, 2021

IPR2021-00623 (P.T.A.B. Oct. 4, 2021)

Trials@uspto.gov Paper No. 8
571-272-7822 Entered: October 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INNOVATIVE INTELLIGENT PRODUCTS, LLC d/b/a GPS LOCKBOX,
Petitioner,
v.
NATIONAL PRODUCTS INC.,
Patent Owner.

IPR2021-00623
Patent 10,454,515 B2

Before JO-ANNE M. KOKOSKI, WESLEY B. DERRICK, and
SCOTT B. HOWARD, Administrative Patent Judges.
KOKOSKI, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2021-00623
Patent 10,454,515 B2
2
I. INTRODUCTION
Innovative Intelligent Products, LLC d/b/a GPS Lockbox
(“Petitioner”) filed a Petition to institute an inter partes review of claims 1,
2, 4, 6, 8–12, 14, 16, and 18–20 (the “challenged claims”) of U.S. Patent
No. 10,454,515 B2 (“the ’515 patent,” Ex. 1001). Paper 2 (“Pet.”). National
Products Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”).
Institution of an inter partes review is authorized by statute when “the
information presented in the petition . . . and any response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314
(2018); see 37 C.F.R. § 42.4. For the reasons set forth below, we deny the
Petition and do not institute an inter partes review.
A. Real Parties-in-Interest
Each party identifies itself as the real party-in-interest. Pet. 1;
Paper 5, 2.
B. Related Proceedings
The parties indicate that the ’515 patent is asserted in National
Products Inc. v. Innovative Intelligent Products, LLC d/b/a GPS Lockbox,
Case No. 2:20-cv-00428-RAJ (W.D. Wash.), and National Products Inc. v.
ProClip USA Inc., No. 3:20-cv-00439 (W.D. Wash.). Pet. 1; Paper 5, 3.
C. The ’515 Patent
The ’515 patent, titled “Docking Sleeve with Electrical Adapter,” is
directed to a cover for protecting a portable electronic device that has an
electrical adapter for coupling the device to a docking station. Ex. 1001,
code (54), 1:30–33. The ’515 patent describes “a completely integral one-
piece elastomeric protective cover, or skin” that partially envelops a portable
IPR2021-00623
Patent 10,454,515 B2
3
electronic device such as a smartphone or tablet, and is of “a size and shape
to fit over or closely conform to the smartphone, tablet or another portable
electronic device.” Id. at 7:4–14. An electrical adapter that is part of the
protective cover “includes a male plug having a plurality of electrical
connectors extending into a cavity formed by” the protective cover “in an
arrangement for mating with a female input/output socket of the” portable
electronic device, and “a contactor having a plurality of electrical contacts
that are positioned adjacent to an exterior of” the protective cover that “are
electrically coupled to one or more of the connectors of the plug.” Id.
at 7:61–8:3.
The ’515 patent explains that when the portable electronic device is
received within the cavity of the protective cover, “the plurality of
connectors of the male plug are mated with the female socket of the”
portable electronic device, and “the female input/output socket is electrically
accessed through the plurality of contacts of the contactor that are exterior
of” the protective cover. Id. at 8:4–10. The protective cover, with the
portable electronic device installed therein, is then inserted into a docking
cradle that includes a docking connector that also has a plurality of contacts.
Id. at 8:11–14. “The docking connector is joined to the contactor of the
electrical adapter with one or more of the plurality of contacts of the docking
connector being electrically coupled with the contacts of the connector.”
Id. at 8:14–17. The input/output socket of the portable electronic device,
therefore, is electrically accessed through the docking connector of the
docking cradle via the electrical adapter of the protective cover. Id. at 8:17–
20.
IPR2021-00623
Patent 10,454,515 B2
4
D. Illustrative Claims
Petitioner challenges claims 1, 2, 4, 6, 8–12, 14, 16, and 18–20 of
the ’515 patent. Pet. 3, 10–11. Claims 1 and 11 are independent, illustrative
of the claimed subject matter, and reproduced below.
1. An arrangement comprising:
a portable electronic device; and
an adapter coupleable to the portable electronic device
and extending away from the portable electronic
device for mating with an external connector, the
adapter comprising a contactor and a male positioning
interface, the contactor comprising a contactor surface
and a plurality of contacts exposed and arranged on the
contactor surface and electrically coupleable to the
portable electronic device, the male positioning
interface defining a rim surrounding, and in contact
with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the
contactor of the adapter to the external connector,
wherein the adapter is configured so that, when
coupled to the portable electronic device, the contactor
surface is disposed further than any other portion of
the adapter from the portable electronic device to
form, with the contacts, a male connector configured
for coupling to connector contacts within a female
receptacle Of the external connector.
Ex. 1001, 34:2–21.
11. An arrangement comprising:
a portable electronic device; and
an adapter coupleable to the portable electronic device
and extending away from the portable electronic
device for mating with an external connector, the
adapter comprising a contactor and a male positioning
interface, the connector comprising a flat contactor
surface and a plurality of contacts exposed at the flat
contactor surface and at least partially flush with the
flat contactor surface and electrically coupleable to the
IPR2021-00623
Patent 10,454,515 B2
5
portable electronic device, the male positioning
interface defining a rim to guide proper mating of the
contactor of the adapter to the external connector,
wherein the contactor is embedded in the male
positioning interface, wherein an exposed portion of
the flat contact surface has an asymmetric perimeter.
Id. at 34:64–35:12.
E. Prior Art and Asserted Grounds
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § References
1, 2, 4, 6, 8–10 102(a)(1) Song1
11, 12, 14, 16, 18–20 103(a) Song, Hayashi2
1, 2, 4, 6 102(a)(1) Kim3
1, 2, 4, 6, 8–12, 14,
16, 18–20 103(a) Kim, Song, Hayashi
Pet. 10–11. Petitioner relies on the Declaration of Kimberly K. Cameron,
Ph.D., P.E. (“Cameron Declaration,” Ex. 1006) in support of its contentions.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends that a person having ordinary skill in the art would
have had either “a Bachelor’s Degree in mechanical engineering or a related
discipline and at least two years of experience in the design or development
of interlocking products (e.g. docking cradles and adapters for portable

1 Korean Intellectual Property Office Registered Utility Model Publication
No. 20-0265673, published Feb. 25, 2002 (Ex. 1003 (English translation),
Ex. 1019).
2 Japanese Unexamined Patent App. Pub. No. 2014-75327, published
April 24, 2014 (Ex. 1004 (English translation), Ex. 1020).
3 Korean Intellectual Property Office Registered Patent No. 10-1078214,
published Nov. 1, 2011 (Ex. 1005 (English translation), Ex. 1021).
IPR2021-00623
Patent 10,454,515 B2
6
electronic devices),” or “five years or more of experience in the design or
development of interlocking products.” Pet. 9. At this stage of the
proceeding, Patent Owner neither responds to Petitioner’s proposed
definition, nor provides a definition of its own. See Prelim. Resp.
For purposes of this Decision, we adopt Petitioner’s proposed
definition, which is undisputed on this record, except that we delete the
qualifiers “at least” and “or more” to eliminate vagueness as to the amount
of practical experience. The qualifier expands the range indefinitely without
an upper bound, and thus precludes a meaningful indication of the level of
ordinary skill in the art.
B. Claim Construction
We construe each claim “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” 37 C.F.R.
§ 42.100(b) (2019). Under this standard, claim terms are generally given
their plain and ordinary meaning as would have been understood by a person
of ordinary skill in the art at the time of the invention and in the context of
the entire patent disclosure.4 Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc). Only those terms in controversy need to be
construed, and only to the extent necessary to resolve the controversy. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,

4 Petitioner incorrectly states that claims in an inter partes review are to be
construed using the broadest reasonable construction standard, which
applied to proceedings filed prior to November 13, 2018. Pet. 9–10; see also
83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim
construction standard used by Article III federal courts and the ITC, both of
which follow Phillips v. AWH Corp., 415 F.3d 133 (Fed. Cir. 2005) (en
banc) and its progeny”).
IPR2021-00623
Patent 10,454,515 B2
7
1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
Neither party proposes an explicit construction for any claim term.
See Prelim. Resp.; Pet. 9–10. For purposes of this Decision, based on the
record before us, we determine that none of the claim terms requires an
explicit construction.
C. Anticipation by Song
Petitioner contends that claims 1, 2, 4, 6, and 8–10 are anticipated by
Song. Pet. 15–28.
1. Overview of Song
Song is directed to a coupling jack that connects a handsfree to a
cellular phone. Ex. 1003, Abs. Song explains that frequent coupling and
decoupling of a cellular phone to a connector jack “during short-distance
driving of a vehicle result[s] in great inconvenience, and the cellular phone
and the connecting data jack significantly wear due to repetitive jack
coupling, which became a factor to shorten the service life of a component.”
Id. at 2.5 To address this problem, Song describes an intermediate coupling
jack that is constantly coupled to a data connection port of a cellular phone,
which is separate from a data connector jack fixed and attached to a
handsfree. Id.
Song describes attaching a magnet to the fixed data connector jack
and a metal member to the intermediate coupling jack, such that, when a
user moves the cellular phone to a position close to the fixed data connector
jack, the metal member of the intermediate coupling jack on the cellular

5 We refer to the page numbers added by Petitioner to the bottom right hand
corner of Ex. 1003.
IPR2021-00623
Patent 10,454,515 B2
8
phone is “automatically attached” to the magnet attached to the data
connector jack on the handsfree. Id. In this way, Song explains, “the user
can automatically couple the handsfree and the cellular phone conveniently
without any separate coupling operation.” Id.
2. Claim 1
Petitioner contends that Song discloses all of the elements of
independent claim 1. Pet. 15–20. Petitioner provides an annotated version
of Song’s Figures 4 and 5, reproduced below, to illustrate its contentions
with respect to “the adapter comprising a contactor and a male positioning
interface, the contactor comprising a contactor surface and a plurality of
contacts exposed and arranged on the contactor surface and electrically
coupleable to the portable electronic device” and “the male positioning
interface defining a rim surrounding, and in contact with, a perimeter of the
contactor surface of the contactor of the adapter to guide proper mating of
the contactor of the adapter to the external connector” limitations of claim 1:

IPR2021-00623
Patent 10,454,515 B2
9
Id. at 17. Figure 4, on the left, is a perspective view illustrating the
alignment of intermediate coupling jack part B and fixed data connector jack
part A prior to coupling. Ex. 1003, 1. Figure 5, on the right, illustrates the
coupling of intermediate coupling jack part B and fixed data connector jack
part A. Id. Intermediate coupling jack part B includes multiple data
terminals 11, metal member 8, and coupling jack 5. Id. at 2–3. Fixed data
connector jack part A includes guide 6, magnet 7, multiple data coupling
terminals 10 connected to electrical line 10-1, and data line fixing part 4. Id.
at 3.
Petitioner annotates Song’s Figures 4 and 5 by identifying
intermediate coupling jack part B as “Adapter” and fixed data connector jack
part A as “External Connector.” Pet. 17. On intermediate coupling jack part
B, Petitioner also includes arrows pointing to the top of metal member 8
labeled “Male Positioning Interface,” to the side of metal member 8 of
labeled “Rim,” and to the underside of metal member 8 labeled “Contactor.”
Id. On fixed data connector jack part A, Petitioner includes arrows pointing
to the area of multiple data coupling terminals 10 labeled “Female
Receptacle,” and to a corner near magnet 7 labeled “Rim.” Id.
Referring to annotated Figures 4 and 5, Petitioner contends that “the
adapter B includes a portion that projects outwardly from the electronic
device 1 (Ex. 1003, Figs. 1–3) which serves as a male positioning interface
that inserts into the external connector A.” Pet. 17. Petitioner also contends
that “adapter B includes a contactor 9 having a flat surface that includes a
plurality of contacts 11-1 that engage with corresponding contacts 10 of the
external connector A.” Id. at 17–18 (citing Ex. 1003, 3, Figs.4–6). In this
way, according to Petitioner, Song discloses “the adapter comprising a
contactor and a male positioning interface, the contactor comprising a
IPR2021-00623
Patent 10,454,515 B2
10
contactor surface and a plurality of contacts exposed and arranged on the
contactor surface and electrically coupleable to the portable electronic
device” limitation of claim 1. Id. at 18.
Petitioner further contends that Song discloses “the male positioning
interface defining a rim surrounding, and in contact with, a perimeter of the
contactor surface of the contactor of the adapter to guide proper mating of
the contactor of the adapter to the external connector” limitation of claim 1.
Pet. 18–19. Specifically, Petitioner contends that “external connector A has
a peripheral raised rim 6 that forms the female receptacle, and the male
positioning interface of the adapter B has an outer peripheral edge that
serves as a rim surrounding the periphery of the contactor 9 of the male
positioning interface of the adapter B.” Id. at 18. Petitioner contends that:
The peripheral rim of the male positioning interface engages
with the raised rim 6 of the external connector A and serves to
guide and properly mate the contactor 9 of the adapter B into
engagement with the external connector A so that the contacts
11-1 of the contactor 9 properly align and engage with the
contacts 10 of the external connector A.
Id. (citing Ex. 1003, 3, Figs. 4–6).
Patent Owner responds that Petitioner does not explain “how Song
discloses a ‘rim surrounding, and in contact with, a perimeter of the
contactor surface of the contactor.’” Prelim. Resp. 33. According to Patent
Owner, “[a]t most, Petitioner discusses what it believes to be the ‘rim’ of the
male positioning interface, but never does Petitioner put forth any theory as
to how that alleged rim is in contact with any ‘perimeter’ of the alleged
contactor surface.’” Id. at 34.
On this record, we are not persuaded that Petitioner sufficiently
establishes that Song discloses “the male positioning interface defining a rim
IPR2021-00623
Patent 10,454,515 B2
11
surrounding, and in contact with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the contactor of the
adapter to the external connector” limitation of claim 1.
In particular, we are not persuaded that Petitioner establishes that
Song discloses that the male positioning interface defines “a rim
surrounding, and in contact with, a perimeter of the contactor surface of the
contactor of the adapter.” As illustrated in Annotated Figures 4 and 5 in the
Petition, the contactor surface of the identified “contactor” of intermediate
coupling jack B extends to the edges of what Petitioner identifies as the
claimed “male positioning interface.” See Pet. 17–18. Being part of the
contactor itself, the “outer peripheral edge” of the contactor neither
surrounds, nor is in contact with, the perimeter of the contactor surface, and
therefore is not a “rim” as recited in claim 1.
Moreover, Song addresses the process of coupling intermediate
coupling jack part B to data connector jack part A. Ex. 1003, 3. Song
explains that guide 6, which is part of data connector jack part A (as shown
in Figures 4 and 5 above), “induces accurate and constant coupling of” metal
members 8 on intermediate coupling jack part B with magnets 7 on data
connector jack part A, “and thereby the multiple data coupling terminals 10
of the handsfree are accurately coupled to the multiple coupling terminals 11
formed in the coupling jack 5.” Id. Song further explains that the coupling
of magnets 7 to metal members 8
is completed as the metal member 8 in FIG. 4 is attached into
the guide 6 due to the magnetism. When the two jacks A and B
are completely coupled to each other as illustrated in FIG. 5, the
multiple handsfree data coupling terminals 10 connected to an
electric line 10-1 buried in the data line fixing part 4 are
connected to multiple surface-contact terminals 11-1 formed in
the intermediate coupling jack B and are re-connected to the
IPR2021-00623
Patent 10,454,515 B2
12
cellular phone 1 through the multiple data terminals 11 formed
in the coupling jack 5, and thereby the entire coupling operation
of the cellular phone 1 to the handsfree 2 is completed.
Id. (emphases added). Song, therefore, teaches that it is guide 6 and magnets
7 on data connector jack part A, in combination with metal members 8 on
intermediate coupling jack part B, that guide the proper mating of
intermediate coupling jack part B with data connector jack part A.
For these reasons, we are not persuaded that Petitioner establishes that
Song discloses “the male positioning interface defining a rim surrounding,
and in contact with, a perimeter of the contactor surface of the contactor of
the adapter to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 1. Accordingly, we determine that
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that claim 1 is anticipated by Song.
3. Claims 2, 4, 6, and 8–10
Petitioner contends that Song discloses all of the limitations of
claims 2, 4, 6, and 8–10 of the ’515 patent. Pet. 21–28. Claims 2, 4, 6, and
8–10 depend, directly or indirectly, from claim 1. Ex. 1001, 34:22–28,
34:31–32, 34:39–42, 34:46–63. Because Petitioner does not establish that
Song discloses “the male positioning interface defining a rim surrounding,
and in contact with, a perimeter of the contactor surface of the contactor of
the adapter to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 1, we determine, for the same
reasons, that the Petition does not establish a reasonable likelihood that
Petitioner would prevail in showing that claims 2, 4, 6, and 8–10 are
anticipated by Song.
IPR2021-00623
Patent 10,454,515 B2
13
D. Obviousness over Song and Hayashi
Petitioner contends that the subject matter of claims 11, 12, 14, 16,
and 18–20 would have been obvious over the combined teachings of Song
and Hayashi. Pet. 32–46. Petitioner relies on the Cameron Declaration in
support of its contentions.
1. Overview of Hayashi
Hayashi is relates to “a mobile device adapter to be mounted on an
external connecting terminal of a mobile device.” Ex. 1004 ¶ 1. The
adapter includes a housing with a plug portion that is inserted into an
external connecting terminal of a mobile device, and a base portion that “is
exposed to the outside and supports electrode planes.” Id. ¶ 15. A number
of grooves are formed inside the plug portion, each of which fits to each
terminal of the external connecting terminal of a mobile device. The base
portion includes a number of conductor components, each of which has a
first electrode plane, a second electrode plane, and a lead portion. Id. ¶¶ 15–
16. Hayashi explains that the first electrode plane and second electrode
plane connect with an external device (such as a docking cradle), and the
lead portion connects to the mobile device. Id. ¶ 16.
Hayashi also describes a mobile device holder that is connected with a
cable “to a commercial power source such as a cigar socket of a car.” Id.
¶ 18. The mobile device holder includes a spring connector that is equipped
with a connector housing and a number of terminal pins equal to the number
of the conductor components in the adapter. Id. ¶ 19. A mobile device is
connected to the mobile device holder by placing the concave portion of the
base of the adapter over the connector housing of the spring connector such
that the first electrode plane of the conductor component of the adapter
IPR2021-00623
Patent 10,454,515 B2
14
forms an electrical connection with the terminal pin in the mobile device
holder. Id. ¶ 21.
2. Claims 11, 12, 14, 16, and 18–20
Independent claim 11 requires that the male positioning interface of
the adapter defines “a rim to guide proper mating of the contactor of the
adapter to the external connector.” Ex. 1001, 34:64–35:12. As it did with
respect to the similar limitation in claim 1, Petitioner contends that the outer
peripheral edge of the male positioning interface of intermediate coupling
jack part B described in Song is a rim that “engages with the raised rim 6 of
the external connector A and serves to guide and properly mate the
contactor 9 of the adapter B into engagement with the external connector A”
such that “the contacts 11-1 of the contactor 9 properly align and engage
with the contacts 10 of the external connector A.” Pet. 36.
For the reasons set forth above with respect to claim 1, we are not
persuaded that Petitioner demonstrates that Song discloses “the male
positioning interface defining a rim to guide proper mating of the contactor
of the adapter to the external connector” as required by claim 11. See
Section II.C.2, supra. Petitioner does not rely on Hayashi to remedy this
deficiency in Song. Accordingly, we determine that Petitioner does not
establish a reasonable likelihood that it would prevail in showing that
independent claim 11, and claims 12, 14, 16, and 18–20 that depend, directly
or indirectly, therefrom, would have been obvious over the combined
teachings of Song and Hayashi.
E. Anticipation by Kim
Petitioner contends that claims 1, 2, 4, and 6 are anticipated by Kim.
Pet. 46–58.
IPR2021-00623
Patent 10,454,515 B2
15
1. Overview of Kim
Kim is directed to a “coupler for connecting an electronic device and a
connector” that is inserted into a recessed port of the electronic device “and
maintains the inserted state to completely block infiltration of foreign matter
into the recessed port and is magnetically coupled to the connector so as to
be flexibly decoupled from the connector by an external impact.” Ex. 1005
¶ 1. Figure 1 of Kim is reproduced below.

Figure 1 is an exploded perspective view illustrating a state where the
coupler described in Kim is coupled to an electronic device and a connector,
and depicts electronic device 1, coupler 10, magnetic couple 20, cap 50, and
connector 5 as separate pieces aligned as they would be before being
connected together. Id. ¶ 26. One side of coupler 10 is coupled to recessed
port 2 of electronic device 1, and the other side is connected to connector 5
that provides power supply or data communication, “such that the coupler
fulfills an intermediate connection function between” electronic device 1 and
connector 5. Id. ¶ 27. Coupler 10 includes first terminal 31 configured to
connect to electronic device 1, second terminal 41 configured to connect to
connector 5, magnetic coupler 20, protruded portion 30, base 40, and
mounting groove 42. Id. ¶¶ 28–29, 46, 76. Cap 50, which is configured to
IPR2021-00623
Patent 10,454,515 B2
16
cover the surface of base 40, includes orifice 51 and recess 52. Id. ¶¶ 86–88.
Orifice 51 is “formed to penetrate the cap such that the second terminal 41
of the base 40 can be exposed to the outside.” Id. ¶ 86. Recess 52 “is
formed to be recessed toward the magnetic coupler 20” and “presses the
magnetic coupler 20 accommodated in the mounting groove 42 from above
to minimize a space in which the magnetic coupler 20 is moved.” Id. ¶¶ 88,
92.
Kim explains that a magnet or ferromagnetic material is provided at
connector 5 so that connector 5 can be magnetically coupled to second
terminal 41 of coupler 20. Id. ¶ 35. Electronic device 1 is mechanically
coupled to first terminal 31 of coupler 10 by male-female coupling at
recessed port 2. Id.
2. Claims 1, 2, 4, and 6
Petitioner contends that Kim discloses all of the elements of claim 1.
Pet. 49–54. With respect to “the adapter comprising a contactor and a male
positioning interface, the contactor comprising a contactor surface and a
plurality of contacts exposed and arranged on the contactor surface and
electrically coupleable to the portable electronic device” limitation of
claim 1, Petitioner contends that “adapter 10 includes a male positioning
interface 40 that projects outwardly from the electronic device 1,” and “a
contactor 50 having a plurality of contacts 41 disposed therein that engage
corresponding contacts 6 of the external connector 5.” Id. at 51 (citing
Ex. 1005 ¶¶ 42–46, 59, Figs. 1. 3B, 5, 6). Petitioner further contends that
contacts 41 are coupled to electronic device 1 by connectors 31 that extend
through adapter 10. Id.
Petitioner provides the following annotated versions of Figures 1
and 6 in Kim to illustrate its contentions with respect to “the male
IPR2021-00623
Patent 10,454,515 B2
17
positioning interface defining a rim surrounding, and in contact with, a
perimeter of the contactor surface of the contactor of the adapter to guide
proper mating of the contactor of the adapter to the external connector”
limitation of claim 1.

Figure 16 on the top left is an exploded perspective view illustrating a state
where the coupler described in Kim is coupled to an electronic device and a
connector, and Figure 6 on the bottom right is a cross-sectional view
illustrating a state where cap 50 is mounted on the coupler. Pet. 52;
Ex. 1005 ¶ 24. Petitioner annotates Figures 1 and 6 by identifying
coupler 10 as “Adapter,” cap 50 as “Contactor,” connector 5 as “External
Connector,” contacts 41 as “Contacts,” magnetic coupler 20 as “Magnetic
Couplers,” and connectors 31 as “Connectors.” Pet. 52. Petitioner also

6 This annotated version of Figure 1, taken directly from the Petition,
truncates the figure such that numbers labeling certain components are
partially cut off or omitted altogether. Compare Pet. 52, Fig. 1 with
Ex. 1005, Fig. 1 (reproduced in Section E.1, supra).
IPR2021-00623
Patent 10,454,515 B2
18
includes arrows pointing at the portion of coupler 10 to which cap 50 is
attached labeled “Male Positioning Interface,” and an arrow pointing at the
top left side of coupler 10 between base 40 and mounting groove 42 labeled
“Rim.” Id.
Petitioner also provides an annotated version of Kim’s Figure 4,
reproduced below, to support its contention that “[t]he rim of the male
positioning interface 40 guides proper mating of the adapter 10 with the
external connector 5.” Pet. 52–53.

Figure 4 is a perspective view of a coupled state of coupler 10 to
connector 5. Ex. 1005 ¶ 5. Petitioner annotates Figure 4 by adding an arrow
pointing to the top of protruded portion 30 labeled “Adapter,” an arrow
pointing to the line where protruded portion 30 meets base 40 labeled “Male
Positioning Interface,” and an arrow pointing to base 40 below that line
labeled “Rim.” Pet. 53.
On the record before us, we are not persuaded that Petitioner
establishes that Kim discloses “the male positioning interface defining a rim
surrounding, and in contact with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the contactor of the
IPR2021-00623
Patent 10,454,515 B2
19
adapter to the external connector” limitation of claim 1. As an initial matter,
is unclear in the Petition what part of Kim Petitioner contends is the recited
“rim.” Petitioner only refers to Annotated Figures 1 and 6, and states that
“male positioning interface 40 of the adapter 10 includes a rim that
surrounds and is in contact with a perimeter of the contactor 50.” Pet. 52.
The arrows Petitioner added to Annotated Figures 1 and 6 appear to be
identifying base 40 of coupler 10 as the male positioning interface and the
rim. Petitioner, however, does not explain how base 40 can be both a male
positioning interface and a rim surrounding and in contact with a perimeter
of the contactor.
Petitioner also does not adequately explain how Annotated Figure 4
shows that “[t]he rim of the male positioning interface 40 guides proper
mating of the adapter 10 with the external connector 5.” Pet. 52. In
describing Figure 4, Kim explains:
As illustrated in FIG. 4, the coupler 10 according to the present
invention provides a method in which specifically the second
terminal 41 formed at the base 40 is magnetically coupled to the
connection terminal 6 of the connector 5. In other words, in
this structure, the second terminal 41 of the coupler 10 and the
connection terminal 6 of the connector 5 are coupled to each
other through the magnetic coupling between magnetic
couplers 20 included in both the coupler 10 and the connector
5, without terminals having separate male-female shapes.
Ex. 1005 ¶¶ 68–69. Thus, Kim teaches that coupler 10 and connector 5 are
properly aligned because of the magnetic coupling achieved by magnetic
couplers 20 placed on both coupler 10 and connector 5. Petitioner does not
direct us to, nor do we discern, any indication in Kim that there is a rim on
base 40 that plays any role in the proper mating of coupler 10 and
connector 5, as Petitioner contends. Rather, as set forth in Kim’s Figure 6,
IPR2021-00623
Patent 10,454,515 B2
20
what is identified by Petitioner as the “Rim” functions to position elements
of coupler 10 relative to one another, rather than to position any part of
coupler 10 to connector 5.
For these reasons, we are not persuaded that Petitioner establishes that
Kim discloses “the male positioning interface defining a rim surrounding,
and in contact with, a perimeter of the contactor surface of the contactor of
the adapter to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 1. Accordingly, we determine that
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that claim 1, and claims 2, 4, and 6 that depend directly
therefrom, are anticipated by Kim.
F. Obviousness over Kim, Song, and Hayashi
Petitioner contends that the subject matter of claims 1, 2, 4, 6, 8–12,
14, 16, and 18–20 would have been obvious over the combined teachings of
Kim, Song, and/or Hayashi. Pet. 32–46. Petitioner relies on the Cameron
Declaration in support of its contentions.
1. Claims 1, 2, 4, 6, and 8
Petitioner argues that, to the extent that Kim does not expressly
disclose “the male positioning interface defining a rim surrounding, and in
contact with, a perimeter of the contactor surface of the contactor of the
adapter to guide proper mating of the contactor of the adapter to the external
connector” limitation of claim 1, “the arrangement of Kim may be readily
modified by adding the peripheral raised rim 6 of the external connector A
of Song to the external connector 5 of Kim.” Pet. 59–60 (internal citations
omitted). Petitioner argues that when Kim is modified in this way, “the
outer peripheral rim of the male positioning interface 40 of the adapter 10 of
Kim would cooperate with the raised rim 6 to guide and properly mate”
IPR2021-00623
Patent 10,454,515 B2
21
contactor 50 of adapter 10 “into engagement with the external connector A
so that the contacts 41 of the connector 50 of Kim would properly align and
engage with the contacts 10 of the external connector A.” Id. at 60–61.
We are not persuaded by Petitioner’s arguments. Claim 1 requires
that the adapter includes a male positioning interface that defines a rim “to
guide the proper mating of the contactor of the adapter to the external
connector.” Petitioner’s proposed modification of Kim adds a rim to the
external connector that would guide the proper mating of the adapter to the
external connector. Because Petitioner does not demonstrate that the
proposed modification of Kim would include a rim defined the male
positioning interface of the adapter, Petitioner does not establish that the
combined teachings of Kim and Song teach “the male positioning interface
defining a rim surrounding, and in contact with, a perimeter of the contactor
surface of the contactor of the adapter to guide proper mating of the
contactor of the adapter to the external connector” limitation of claim 1.
Petitioner does not rely on Hayashi to remedy this deficiency.
For these reasons, we determine, on this record, that the Petition does
not establish a reasonable likelihood that Petitioner would prevail in
showing that the subject matter of claim 1, and claims 2, 4, 6, and 8–10 that
depend, directly or indirectly, therefrom, would have been obvious over the
combined teachings of Kim, Song, and/or Hayashi.
2. Claims 11, 12, 14, and 16–20
As it did with respect to the similar limitation in claim 1, Petitioner
contends that, to the extent that Kim does not expressly disclose “the male
positioning interface defining a rim to guide proper mating of the contactor
of the adapter to the external contactor” limitation of claim 11, “the external
IPR2021-00623
Patent 10,454,515 B2
22
connector 5 of Kim may be readily modified by adding the rim 6 of the
external connector of Song [external connector] A.” Pet. 67.
For the reasons set forth in Section II.F.1 above with respect to
claim 1, we are not persuaded that Petitioner demonstrates, on this record,
that the combined teachings of Kim and Song teach “the male positioning
interface defining a rim to guide proper mating of the contactor of the
adapter to the external contactor” limitation of claim 11. Accordingly, we
determine that the Petition does not establish a reasonable likelihood that
Petitioner would prevail in showing that the subject matter of claim 11, and
claims 12, 14, 16, and 18–20 that depend, directly or indirectly, therefrom,
would have been obvious over the combined teachings of Kim, Song, and/or
Hayashi.
III. CONCLUSION
Based on the arguments in the Petition and Preliminary Response, and
the evidence of record, we determine that Petitioner has not established a
reasonable likelihood that it would prevail on its challenge that claims 1, 2,
4, 6, 8–10, 11, 12, 14, 16, and 18–20 of the ’515 patent are unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.

IPR2021-00623
Patent 10,454,515 B2
23

FOR PETITIONER:
Dale C. Barr
CONSTELLATION LAW GROUP PLLC
dale@constellationlaw.com

Joshua King
KING IP LAW
jking@king-iplaw.com

FOR PATENT OWNER:

David K. Tellekson
Jonathan T. McMichael
Jessica M. Kaempf
FENWICK & WEST
dtellekson@fenwick.com
jmcmichael@fenwick.com
jkaempf@fenwick.com