National Products Inc.

Patent Trials and Appeals Board

Oct 6, 2021

IPR2021-00622 (P.T.A.B. Oct. 6, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Date: October 6, 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.

IPR2021-00622
Patent 9,706,026 B2

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

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Patent 9,706,026 B2
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INTRODUCTION
Petitioner Innovative Intelligent Products LLC filed a Petition
(Paper 2, “Pet.”) requesting inter partes review of claims 1, 4, 8, 9–11, 14,
15, 19, and 20 of U.S. Patent No. 9,706,026 B2 (Ex. 1001, “the ’026
patent”). Patent Owner National Products, Inc., filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). Patent Owner addresses: (1) the
merits of the challenges set forth by Petitioner; and (2) why we should
exercise our discretion and deny institution. Id.
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard
for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” Section 314(a) does not require the Director to institute an inter
partes review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
an IPR proceeding.”). We deny inter partes review, for example, where a
petition fails to identify “with particularity” the challenges or evidence
supporting them. Id. at 1363; 35 U.S.C. § 312(a)(3); Intelligent Bio-Sys.,
Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is
of the utmost importance that petitioners in IPR proceedings adhere to the
requirement that the initial petition identify ‘with particularity’ the ‘evidence
that supports the grounds for the challenge to each claim.’” (quoting
35 U.S.C. § 312(a)(3)).
For the reasons that follow, we deny institution of inter partes review.
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BACKGROUND
A. Real Parties in Interest
Petitioner identifies itself as the real party in interest. Pet. 1. Patent
Owner identifies itself as the real party in interest. Paper 5, 2.
B. Related Matters
The parties identify three district court cases as related matters:
National Products, Inc. v. Innovative Intelligent Products, LLC d/b/a GPS
Lockbox, No. 2:20-cv-00428-RAJ (W.D. Wash. March 20, 2020); National
Products, Inc. v. ProClip USA, Inc. et al., No. 3:20-cv-00439-wmc (W.D.
Wisc. May 12, 2020); and National Products, Inc. v. Gamber-Johnson,
No. 3:20-cv-01108-wmc (W.D. Wisc. Dec. 15, 2020). Pet. 1; Paper 5, 3–4.
C. The ’026 Patent (Ex. 1001)
The ’026 patent is titled “Docking Sleeve with Electrical Adapter,”
and issued on July 11, 2017, from Application No. 14/936,517. Ex. 1001,
codes (22), (45), (54). The ’026 patent sets forth that it is a continuation-in-
part application and identifies related applications, setting forth their relation
to each other. Id. at code (63) (Related U.S. Application Data), 1:7–19.
The ’026 patent generally relates to a “protective arrangement for an
electronic device [that] includes a flexible cover having a panel and a skirt
that form an interior cavity to receive [the] electronic device[] and an
adapter . . . positioned in [the body of] the flexible cover,” where the
“adapter” has “a male plug with connectors extending into the interior cavity
of the flexible cover” and an adjacent “contactor” “facing outwardly from
the flexible cover” that is “electrically coupled to . . . the connectors of the
plug.” Id. at code (57). The “protective arrangement,” thus, allows the
electronic device to be electrically connected to a docking cradle via the
adapter positioned in the body of the flexible cover. Id. The ’026 patent
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identifies its invention as “relating to a cover for protecting a portable
electronic device” and characterizes its “protective cover” as an
improvement over those in the art, which it explains “are limited in their
ability to provide efficient and reliable usage of such portable electronic
devices.” Id. at 1:23–24 (Field of the Invention); 1:35–37 (Background of
the Invention).
D. Illustrative Claims
Claims 1, 8, and 10 of the ’026 patent are independent, illustrative of
the claimed invention, and reproduced below.
1. A docking cradle, comprising:
a base receiver configured to receive an electronic device
disposed in a removable cover having a male connector
with a plurality of contacts, the base receiver comprising a
back support surface to support a back of the removable
cover and electronic device and a docking support surface
extending away from the back support surface; and
a female connector disposed within the docking support surface
of the base receiver and comprising a plurality of contacts
configured to connect with one or more of the plurality of
contacts of the male connector when the male connector is
received in the base receiver, the female connector defining
a rim to guide proper mating of the male connector of the
removable cover to the female connector of the docking
cradle, wherein the contacts of the female connector are
biasing contacts that move when the removable cover and
electronic device are received.
Ex. 1001, 32:14–32.
8. A docking cradle, comprising:
a base receiver configured to receive an electronic device
disposed in a removable cover having a male connector
with a plurality of contracts, the base receiver comprising a
back support surface to support a back of the removable
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cover and electronic device and a docking support surface
extending away from the back support surface; and
a female connector disposed within the docking support surface
of the base receiver and comprising a plurality of contacts
configured to connect with one or more of the plurality of
contacts of the male connector when the male connector is
received in the base receiver, the female connector defining
a rim to guide proper mating of the male connector of the
removable cover to the female connector of the docking
cradle, wherein the female connector further comprises a
magnetic coupling element resident in the connector,
wherein the magnetic coupling element comprises one of a
magnetic material or a magnetically attractive material.
Id. at 32:48–67.
10. A docking system, comprising:
a protective cover for an electronic device, the cover
comprising a shell forming an interior cavity to receive the
electronic device, a male plug comprising a plurality of
connectors extending into the interior cavity of the shell in
an arrangement for mating with a female socket of the
device, and a contactor comprising a plurality of contacts
adjacent to an exterior of the shell and electrically coupled
to one or more of the connectors of the plug, wherein the
cover is configured and arranged to extend over at least a
portion of a back surface, a front surface, and each of four
side surfaces of the electronic device to hold the electronic
device within the cover; and
a docking cradle configured to receive the cover and
comprising a base receiver to receive the cover and a
docking connector disposed on the base receiver and
comprising a plurality of contacts positioned to connect
with one or more of the plurality of contacts of the
contactor of the protective cover, the docking connector
defining a rim to guide proper mating of the contactor to the
docking connector.
Id. at 33:4–25.
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E. References Relied Upon
Petitioner relies on the references listed below (Pet. 17–20):
Reference Date Exhibit No.
Carnevali, US 2005/0244126 A1
(“Carnevali 1”)
Aug. 27, 2015 1003
Carnevali et al., WO 2015/127376 A1
(“Carnevali 2”)
Aug. 27, 2015 1004
Carnevali et al., US 2015/0241931 A1
(“Carnevali 3”)
Aug. 27, 2015 1005
Braitberg et al., US 5,535,274
(“Braitberg”)
Jul. 9, 1996 1006
Kogan et al., US 7,480,138 B2
(“Kogan”)
Jan. 20, 2009 1007
Rudisill et al., US 2013/0273752 A1
(“Rudisill”)
Oct. 17, 2013 1008
Li,1 CN 202565335 U (“Li”) Nov. 28, 2002 1009, 1022
Song,2 KR20-0265673 (“Song”) Feb. 25, 2002 1010, 1023
Patent Owner does not contest the status of Braitberg, Kogan,
Rudisill, Li, and Song as prior art patents or printed publications (see Prelim.
Resp.), but does contest the prior art status of Carnevali 1, Carnevali 2, and
Carnevali 3 (id. at 35–37). Because it is unnecessary to reach the issues
relating to the contested prior art status in this Decision, we decline to do so,
as discussed below.

1 Petitioner relies on an English translation (Ex. 1009) of the original
Chinese language document (Ex. 1022).
2 Petitioner relies on an English translation (Ex. 1010) of the original Korean
language document (Ex. 1023).
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F. The Asserted Grounds of Unpatentability
Petitioner sets forth six (6) nominal grounds of unpatentability:
Ground 1a (claims 1 and 4 as obvious over Braitberg in view of Carnevali 1,
Carnevali 2, or Carnevali 3); Ground 1b (claim 1 as obvious over Kogan in
view of Carnevali 1, Carnevali 2, or Carnevali 3); Ground 1c (claim 1 as
obvious over either Braitberg or Kogan in view of Li or Rudisill); Ground 2a
(claims 8–11, 14, 19, and 20 as obvious over Song in view of Li or Rudisill);
Ground 2b (claim 15 obvious over Ground 2a in further view of Braitberg);
and Ground 3a (claims 10, 11, 19, and 20 as anticipated by Rudisill).
Pet. 17–18. Each of these grounds, except for Ground 3a, rely on references
in the alternative such that there are, in fact, a total of fifteen (15) different
grounds (or combinations of art), as indicated in the table below.
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 4 103 Braitberg, Carnevali 1
1, 4 103 Braitberg, Carnevali 2
1, 4 103 Braitberg, Carnevali 3
1 103 Kogan, Carnevali 1
1 103 Kogan, Carnevali 2
1 103 Kogan, Carnevali 3
1 103 Braitberg, Li
1 103 Braitberg, Rudisill
1 103 Kogan, Li
1 103 Kogan, Rudisill
8–11, 14, 19, 20 103 Song, Li
8–11, 14, 19, 20 103 Song, Rudisill
15 103 Song, Li, Braitberg
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
15 103 Song, Rudisill, Braitberg
10, 11, 19, 20 102 Rudisill
Petitioner also relies on the testimony of Kimberly K. Cameron, Ph.D.
(Ex. 1011, “the Cameron Decl’n”).
ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art “would
have had (1) 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” or “(2) five years or more of experience in the
design or development of interlocking products,” where exemplary
“interlocking products” include “docking cradles and adapters for portable
electronic devices.” Pet. 16 (citing Ex. 1011 ¶¶ 21–23, 60–62).
Patent Owner neither contests Petitioner’s proposed definition nor
proposes its own definition. See Prelim. Resp.
On this record, we find Petitioner’s definition of the level of ordinary
skill reasonable and, therefore, adopt it for the purposes of this Decision,
except that we delete the qualifiers “at least” and “or more” to eliminate
vagueness as to the amount of practical experience. The qualifiers expand
the range indefinitely without an upper bound, and thus preclude a
meaningful indication of the level of ordinary skill in the art.
B. Claim Construction
In an inter partes review, we construe the challenged claims under the
framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19
(Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under this
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framework, claim terms generally are given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification (including other claims), the prosecution history,
and even extrinsic evidence including expert and inventor testimony,
dictionaries, and learned treatises, although extrinsic evidence is less
significant than the intrinsic record. Phillips, 415 F.3d at 1312–19. Usually,
the specification is dispositive, and it is the single best guide to the meaning
of a disputed term. Id. at 1315.
Only those claim terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is
not “directed to, or has been shown reasonably to affect, the determination
of obviousness”).
Petitioner contends that, “[i]n this inter partes review, no claim terms
require construction.” Pet. 17. Petitioner further contends, however, that “in
some instances, Petitioner relies at least in part on [Patent Owner’s] own
interpretations of its claims in [Patent Owner’s] own Infringement
Contentions.” Id. (citing Ex. 1021).
Patent Owner does not offer any interpretation of claim terms
(see Prelim. Resp.), although it does argue Petitioner erred in misstating the
applicable standard of “broadest reasonable construction” (id. at 20, 21–22,
26–28; Pet. 16–17 (citing 37 C.F.R. § 42.100(b))).
On this record, and for purposes of this Decision, we decline to
construe any claim terms beyond the limited extent we do so below in our
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analysis, because it is not necessary to do so in reaching our decision on
institution.
C. Principles of Law
Petitioner challenges claims under 35 U.S.C. §§ 102 and 103. A
claim is anticipated under § 102 “only if each and every element as set forth
in the claim is found, either expressly or inherently described, in a single
prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628,
631 (Fed. Cir. 1987). “Inherency . . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented 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 skill in the art; and (4) if in evidence, objective evidence of
nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as
“requiring inter partes review petitions to identify ‘with particularity . . . the
evidence that supports the grounds for the challenge to each claim’”). This
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burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
(discussing the burden of proof in inter partes review). Furthermore,
Petitioner cannot satisfy its burden of proving obviousness by employing
“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
D. Asserted Obviousness Over Braitberg in View of Carnevali 1,
Carnevali 2, or Carnevali 3
1. Braitberg (Ex. 1006)
Braitberg is titled “Universal Connection for Cellular Telephone
Interface” and directed to “cellular telephone interfacing systems,” and
particularly “to an apparatus providing a communications interface between
a cellular telephone, selected from a variety of such telephones, to a
common base unit.” Ex. 1006, code (54), 1:14–19. Figure 14 is reproduced
below.
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Figure 14 depicts an exploded perspective view of Braitberg’s universal
connection system and illustrates a cellular telephone 200, a pocket
adapter 202 for receiving a particular model of cellular telephone, a common
base unit 204, and a cable 206 for providing a physical and electrical
connection between common base unit 204 and pocket adapter 202. Id. at
3:63–64, 10:20–25, Fig. 14. Braitberg also discloses that cellular telephone
200 includes a connector 208 for establishing a physical and electrical
connection with an external base unit and that common base unit 204
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includes a retaining clip 220 for securing pocket adapter 202 to housing 214
of base unit 204. Id. at 10:41–43 (discussing exploded assembly view of the
base unit, Fig. 14), Fig. 13. Braitberg also discloses that “each pocket
adapter device [is] adapted to establish a physical and electrical
interconnection between a particular model of cellular telephone and a
common base unit.” Id. at 6:30–33.
2. Carnevali 1–3 (Exs. 1003–1005)
Carnevali 1–3 are related to the ’026 patent; Carnevali 1 (Application
No. 14/222,320) and Carnevali 2 (PCT/US2015/017131) are earlier-filed
applications to which the ’026 patent claims the benefit of priority
(Ex. 1001, 1:7–19; Ex. 1003, code (21); Ex. 1004, code (21)), and
Carnevali 3 (Application No. 14/667,564) is a continuation of Carnevali 2
(Ex. 1005, code (63)), but not part of the priority benefit chain of the ’026
patent (Ex. 1001, 1:7–19, code (63)). Specifically, in relevant part, the ’026
patent issued from a continuation-in-part of application No. 14/829,378,
which is a continuation-in-part of application No. 14/754,492, which is a
continuation in part of PCT/US2015/017131 (Carnevali 2), which is a
continuation-in-part of application No. 14/222,320 (Carnevali 1) (Ex. 1001,
1:7–19).
Each of Carnevali 1–3 relates to “[a] docking sleeve having an
elastomeric protective cover, . . . adapted for partially enveloping a portable
electronic device . . . [that has] a port for a docking connector” where “[a]n
adapter is provided for electrically connecting to the female input/output
socket of the particular electronic device, including a male plug having a
plurality of electrical connectors extended internally of the sheath and . . . a
plurality of contacts . . . exposed externally of the sheath.” Ex. 1003,
code (57); Ex. 1004, code (57); Ex. 1005, code (57).
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3. Petitioner’s Contentions and Analysis
Petitioner contends that claims 1 and 4 are obvious over Braitberg
(Ex. 1006) in view of Carnevali 1 (Ex. 1003), Carnevali 2 (Ex. 1004), or
Carnevali 3 (Ex. 1005). Pet. 21–28. Petitioner reproduces claim 1, adding
citations to these references, as follows:
1. A docking cradle (Ex. 1006 Figs. 14-23), comprising:
a base receiver (Ex. 1006 Fig. 22 ref. 400) configured to receive
an electronic device (Ex. 1006 ref. 200) disposed in a
removable cover (Ex. 1006 ref. 202) having a male
connector (Ex. 1006 ref. 322) with a plurality of contacts
(Ex. 1006 Fig. 17 ref. 325, Fig. 9 ref. 91–108), the base
receiver (Ex. 1006 ref. 400) comprising a back support
surface (Ex. 1006 ref. 410) to support a back of the
removable cover and electronic device and a docking
support surface (Ex. 1006 ref. 400 horizontal surface)
extending away from the back support surface; and
a female connector (Ex. 1006 Fig. 22 ref. 402) disposed within
the docking support surface of the base receiver and
comprising a plurality of contacts (Ex. 1006 Figs. 9,13
ref. 91-108) configured to connect with one or more of the
plurality of contacts of the male connector (Ex. 1006
ref. 322) when the male connector is received in the base
receiver, the female connector defining a rim (Ex. 1006
Fig. 22 walls surrounding 402) to guide proper mating of
the male connector of the removable cover to the female
connector of the docking cradle, wherein the contacts of the
female connector are biasing contacts (Ex. 1003 ¶[0009]
lines 1–3; or Ex. 1004 3:11–12; or Ex. 1005 ¶[0010] lines
1–3) that move when the removable cover and electronic
device are received.
Pet. 22–23 (citing Ex. 1001, 32:14–32 (claim 1); Ex. 1011 ¶¶ 66–79
[sic, ¶¶ 70–83]). Petitioner relies on Braitberg, in effect, for all elements
except for the “contacts of the female connector [being] biasing contacts.”
Id. at 25–26.
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Petitioner’s reliance on Braitberg is not typical, in that for a number of
elements, Petitioner relies on what the Examiner asserted Braitberg
disclosed in rejecting claims during examination, which, according to
Petitioner, Patent Owner accepted “and chose to amend claims rather than to
argue against the Examiner’s assertions.” Id. at 23–24 (citing Ex. 1002,
189–194). Based on this, Petitioner argues that Patent Owner “is now
estopped from asserting otherwise since a patentee is estopped ‘when a
clear, unambiguous rejection gave rise to a choice of appealing or accepting
the rejection, and the applicant accepted the rejection and expressly or
impliedly conceded its correctness.’” Id. (quoting Centocor Ortho Biotech
v. Abbott Labs, 662 F. Supp. 2d 584, 591 (E.D. Tex. 2009), quoting Litton
Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438 (Fed. Cir. 1984)).
Petitioner’s reliance on Centocor is not well founded, as it pertains to
the prima facie case of acquiescence estopping the patentee where the
Examiner has “issued a clear, unambiguous, and final § 112 rejection” for
“new matter” and the patentee has “conceded the correctness of the rejection
by filing a CIP application in response.” Centocor, 662 F. Supp. 2d at 591;
see also Litton, 728 F.2d at 1438 (holding that patentee filing a continuing
application as a continuation-in-part implied that it did add new matter and
patentee was estopped from contrary arguments). Petitioner offers no
explanation or reasoning why we should treat prior art rejections overcome
by claim amendment in the same manner, let alone legal authority
supporting that position. See Pet.
Petitioner’s failure to identify any authority for a more expansive
doctrine of acquiescence that extends to prior art rejections, as it seeks to
apply here, is unsurprising. A “patentee is not required to fight tooth and
nail every possible adverse thought an examiner commits to paper, nor to
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advance redundant arguments for patentability.” TorPharm, Inc. v. Ranbaxy
Pharms., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003). Our reviewing court
further explains TorPharm as holding “that the applicant’s ‘acquiesence’ in
the obviousness rejection by amending its claims did not preclude the
patentee from contesting obviousness in litigation.” Salazar v. Procter &
Gamble Co., 414 F.3d 1342, 1346 (Fed. Cir. 2005) (citing TorPharm,
336 F.3d at 1331). Specifically, “[i]n TorPharm, the applicant added
limitations to claims to overcome an obviousness rejection” and, “[l]ater
during litigation, the defendant . . . showed that the added limitation was also
in the prior art” and then argued that “the patentee could not challenge its
obviousness contentions.” Id. That appears on all fours with the
circumstances that Petitioner contends, contrary to TorPharm, estops Patent
Owner here. Further, while “an examiner’s reasoning and findings are
highly relevant to the validity inquiry[,] . . . they are not beyond challenge
and they do not in every case automatically preclude the existence of a
dispute of material fact.” TorPharm, 336 F.3d at 1329.
In any event, Petitioner does not direct us to anything here that
constitutes an admission by the applicant as to the scope of a claim or the
teaching of the prior art. See Pet. 23–26. As discussed above, contrary to
Petitioner’s assertions, an applicant’s decision during examination to amend
claims rather than argue against the Examiner’s assertions is not itself an
admission.
Accordingly, we turn to, and consider the grounds set forth on their
merits, noting that it is Petitioner’s burden to show with particularity why
the challenged claims are unpatentable. See Harmonic, 815 F.3d at 1363;
Dynamic Drinkware, 800 F.3d at 1378. After considering the record before
us, we determine that Petitioner fails to sufficiently establish that the
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combined teachings of the asserted art teach a “removable cover” that the
“base receiver” is “configured to receive” as required by claim 1.
Claim 1 recites “a base receiver configured to receive an electronic
device disposed in a removable cover having a male connector with a
plurality of contacts.” Ex. 1001, 32:15–17. To meet this, Petitioner
contends:
Braitberg discloses that the docking cradle 400 includes a
base receiver (Ex. 1006 ref. 400) configured to receive an
electronic device (Ex. 1006 ref. 200) disposed in a removeable
[sic] cover (Ex. 1006 ref. 202) having a male connector
(Ex. 1006 ref. 322) with a plurality of contacts (Ex. 1006
Fig. 17 ref. 325, Fig. 9 ref. 91-108).
Pet. 24; see also Ex. 1011 ¶ 76 (Dr. Cameron’s related testimony). As to the
“removable cover,” neither Petitioner nor Dr. Cameron provide any
explanation how Braitberg’s “pocket adapter 202” is a “removable cover”
within the meaning of the ’026 patent.
The ’026 patent describes the “removable cover” as a protective cover
for protecting a portable electronic device. See, e.g., Ex. 1001 at code (57),
1:23–24, 130–32, 1:41–42, 1:45–46, 2:1–2. In contrast, Braitberg’s “pocket
adapter 202” is intended for use in “establish[ing] a physical and electrical
interconnection between a particular model of cellular telephone and a
common base unit.” Ex. 1006, 6:30–33. Petitioner directs us to nothing in
Braitberg suggesting pocket adapter 202 protects an electronic device, let
alone is a “removable cover” within any reasonable interpretation of the
phrase in accordance with the ’026 patent. Petitioner also does not provide
any reason why or how a person having ordinary skill in the art would have
modified Braitberg’s pocket adapter 202 to be the “removable cover” recited
in claim 1. See Pet.
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Accordingly, Petitioner fails to meet its burden for instituting inter
partes review based on Braitberg in view of Carnevali 1, Carnevali 2, or
Carnevali 3.
E. Asserted Obviousness Over Kogan in View of Carnevali 1,
Carnevalie 2, or Carnevali 3
1. Kogan (Ex. 1007)
Kogan is titled “Reconfigurable Mobile Device Docking Cradle” and
directed to a docking station for a portable electronic device that includes a
base and cradle shell(s) that are sized and shaped to receive portable
electronic device(s). Ex. 1007, code (54), 1:15–31. Figure 1 is reproduced
below.

Figure 1 depicts a docking station 10 with a base 16 and plurality of docking
cradles 12 for receiving mobile devices 14. Id. at 1:60–2:8, Fig. 1. Kogan
discloses that “the docking station 10 can be configured with docking
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cradles 12 adapted . . . to receive different mobile devices 14.” Id. at 1:64–
67. Kogan discloses that “the docking station 10 includes a modular
docking cradle system that allows the docking cradles 12 to be reconfigured
to receive a new type of mobile device 14 while a base 16 of the docking
station 10 remains unchanged.” Id. at 2:4–8. Figure 2, illustrating this, is
reproduced below.

Figure 2 depicts the docking station 10 with a first device cradle removed,
illustrating cradle receiving slot 18 having a connector opening 22 formed in
lower surface 24 of the cradle receiving slot 18 and cradle shells 32 having
an outer side 36 configured to receive a corresponding mobile device 14.
Id. at 2:4–14, Fig. 2.
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2. Petitioner’s Contentions and Analysis
Petitioner contends that claim 1 is obvious over Kogan (Ex. 1007) in
view of Carnevali 1 (Ex. 1003), Carnevali 2 (Ex. 1004), or Carnevali 3
(Ex. 1005). Pet. 28–34. Petitioner reproduces claim 1, adding citations to
these references, as follows:
1. A docking cradle (Ex. 1007 Figs. 1-6), comprising:
a base receiver (Ex. 1007 Fig. 1 ref. 10,16) configured to
receive an electronic device (Ex. 1007 ref. 14) disposed in a
removable cover (Ex. 1007 Fig. 3 ref. 36,32) having a male
connector (Ex. 1007 ref. 44,46,50) with a plurality of
contacts (Ex. 1007 ref. 42), the base receiver (Ex. 1007
ref. 10) comprising a back support surface (Ex. 1007
ref. 16, upright portion) to support a back of the removable
cover and electronic device and a docking support surface
(Ex. 1007 ref. 16, horizontal portion) extending away from
the back support surface; and
a female connector (Ex. 1007 Fig. 6 ref. 22) disposed within the
docking support surface of the base receiver and comprising
a plurality of contacts (Ex. 1007 Fig. 6 ref. 22) configured
to connect with one or more of the plurality of contacts of
the male connector (Ex. 1007 ref. 44) when the male
connector is received in the base receiver, the female
connector defining a rim (Ex. 1007 Fig. 6 ref. 22, walls
surrounding opening to contacts) to guide proper mating of
the male connector of the removable cover to the female
connector of the docking cradle, wherein the contacts of the
female connector are biasing contacts (Ex. 1003 ¶[0009]
lines 1–3; or Ex. 1004 3:11–12; or Ex. 1005 ¶[0010] lines
1–3) that move when the removable cover and electronic
device are received.
Pet. 30–31 (citing Ex. 1001, 32:14–32 (claim 1); Ex. 1011 ¶¶ 81–94
[sic, ¶¶ 85–98]). Petitioner relies on Kogan, in effect, for all elements
except for the “contacts of the female connector [being] biasing contacts.”
Pet. 33–34.
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Petitioner relies on Kogan in the same manner as Braitberg, that is,
Petitioner contends that Patent Owner “acquiesced to the [Examiner’s]
assertion of . . . [certain] claim element[s]” and is thus “estopped from
asserting otherwise now.” Id. at 31–32 (citing Centocor, 662 F.Supp.2d
at 591). As discussed above, Petitioner’s reliance on Centocor is not well
founded, and we turn to the grounds set forth on their merits. Doing so, here
again, we determine that Petitioner fails to establish a sufficient basis for the
“removable cover” that the “base receiver” is “configured to receive.”
To meet the recited “base receiver configured to receive an electronic
device disposed in a removable cover having a male connector with a
plurality of contacts,” Petitioner contends:
Kogan discloses that the docking cradle 10 includes a
base receiver (Ex. 1007 ref. 16) configured to receive an
electronic device (Ex. 1007 ref. 14) disposed in a removeable
[sic] cover (Ex. 1007 ref. 32) having a male connector
(Ex. 1007 ref. 44,46,50) with a plurality of contacts (Ex. 1007
Fig. 3 ref. 42).
Pet. 32; see also Ex. 1011 ¶¶ 89–91 (Dr. Cameron’s related testimony). As
to the “removable cover,” neither Petitioner nor Dr. Cameron provide any
further explanation how Kogan’s “cradle shell 32” is a “removable cover”
within the meaning of the ’026 patent.
In contrast to the ’026 patent’s protective removable cover, discussed
above, Kogan’s “cradle shell 36” that Petitioner relies on for this element is
intended for “establish[ing] a physical and electrical interconnection
between a particular model of cellular telephone and a common base unit.”
Ex. 1006, 6:30–33. Petitioner directs us to nothing in Kogan suggesting a
“removable cover” within any reasonable interpretation of the phrase in
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accordance with the ’026 patent, and provides no reasoning for modifying
the “cradle shell” Kogan discloses. See Pet.
Accordingly, Petitioner fails to meet its burden for instituting inter
partes review based on Kogan in view of Carnevali 1, Carnevali 2, or
Carnevali 3.
F. Asserted Obviousness Over Braitberg or Kogan in View of Either Li
or Rudisill
Petitioner contends that claim 1 is obvious over Braitberg (Ex. 1006)
or Kogan (Ex. 1007) in view of either Li (Ex. 1009) or Rudisill (Ex. 1008).
Pet. 35–39.
Petitioner relies on Braitberg and Kogan as in the grounds discussed
above, and states that, “[f]or the sake of brevity, Petitioner incorporates by
reference the discussions of Braitberg (Ex. 1006) and Kogan (Ex. 1007)
above.” Id. at 37–38.
For the reasons discussed above, Petitioner fails to establish that either
Braitberg or Kogan teaches a “removable cover,” and thus for a base
receiver configured to receive an electronic device configured in such, as
recited in claim 1.
Accordingly, Petitioner fails to meet its burden for instituting inter
partes review based on Braitberg or Kogan in view of either Li or Rudisill.
G. Asserted Obviousness Over Song in View of Li or Rudisill
1. Song (Ex. 1010)
Song is titled “Cellular Phone Auto-Coupling Magnetic Data
Connector Jack of Handsfree [sic]” and directed to a coupling jack for rapid
and convenient coupling of a cellular phone to a data connector of a
handsfree apparatus that uses magnetic coupling rather than a conventional
plug connection. Ex. 1010, code (54), 1–2. Song describes how
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Patent 9,706,026 B2
23
conventional connector jacks are inconvenient and result in significant wear
when frequent coupling and uncoupling is required. Id. at 2–3. Figure 7,
illustrating operation of an existing, i.e., conventional, handsfree apparatus
and cellular telephone, is reproduced below.

Figure 7 depicts operation of “an existing cellular phone [1] . . . using a
method in which a handsfree-connecting data connector jack 14 [sic, 12] is
directly connected to a data connector hole 3 of the cellular phone 1.” Id.
at 2, Fig. 7. Figure 1, illustrating a disassembled view of Song’s handsfree
apparatus and cellular telephone, is reproduced below.
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Patent 9,706,026 B2
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Figure 1 depicts a disassembled view of: (i) cellular telephone 1 having data
connector hole 3 (a female connector); (ii) handsfree 2 (apparatus to hold the
cellular telephone for hands free operation); and (iii) a coupling jack that
includes data connector jack part A and intermediate coupling part B.
Ex. 1010, 1–2, Fig. 1. As depicted in Figure 1, intermediate coupling part B
includes coupling jack 5 (a male connector) that is inserted into data
connector hole 3 of cellular phone 1 and metal members 8. Id., see also
Fig. 2 (depicting intermediate coupling part B inserted into cellular phone 1).
As depicted in Figure 1 data connector jack A includes “magnetic” [sic,
magnet] 7 and guide 6 that provides for “accurate and constant coupling of []
metal members 8 . . . and [] magnet[s] 7.” Id. at 3. Figure 4, illustrating data
connector jack A and intermediate coupling part B in greater detail, is
reproduced below.
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Patent 9,706,026 B2
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Figure 4 depicts “data connector jack A . . . [having] magnet[s] 7, to which
guide 6 is attached, and multiple data terminals 10” and “intermediate
coupling jack B . . . [having] metal member[s] 8 and . . . data terminals 11 []
formed inside, and [] coupling jack 5.” Id. at 2, Fig. 4. Song discloses that
its intermediate coupling jack B is constantly coupled to the cellular phone
in the same manner as the conventional connector is coupled, that is,
intermediate coupling jack B is, and remains, inserted into connector hole 3.
See id. at 3:1–2. Song also discloses that cellular telephone 1 with
intermediate coupling jack B inserted can be rapidly and conveniently
coupled to the “handsfree [apparatus] 2” with multiple data coupling
terminals 10 accurately coupled to multiple coupling terminals 11. Id. at 2–
3.
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2. Li (Ex. 1009)
Li is titled “A Contact-based Mobile Phone Transmission Device” and
directed to a transmission device, for transferring data and power, that
includes a dock unit and a mobile phone case. Ex. 1009, code (57), ¶¶ 1, 24,
Fig. 1. Figure 4 is reproduced below.

Figure 4 depicts an exploded-view structural drawing of Li’s mobile phone
case for mobile phone 3, including outer case 21, case dock 22, and middle
shell 23. Id. ¶ 27, Fig. 4. The mobile phone case further includes a mobile
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phone USB interface and a circuit connector set; the mobile phone USB
interface includes USB female port 24, PCB female connector 25, USB male
connector 26, and PCB male header 27; and the circuit connector includes
four metal hardware pieces 28 and four case wire leads 29. Id. Li discloses
that, when docked, the included metal hardware pieces 28 of the mobile
phone case form a contact-based electrical connection with spring loaded
pins 15, included in the dock unit. Id. ¶¶ 24–25, 27, Figs. 3, 4.
3. Rudisill (Ex. 1008)
Rudisill is titled “Interposer Connectors with Magnetic Components”
and directed to “interposer electrical connector[s]” that “includ[e] magnetic
components used to facilitate interconnection of peripheral devices to
standard input/output, or ‘I/O’, connectors (such as USB connectors) of
devices such as mobile communications products.” Ex. 1008, codes (54),
(57). Figures 20 and 21 are reproduced below.

Figures 20 and 21 depict device 9, interposer connector 1, and case 40. Id.
¶¶ 71–72, 118, Figs. 20–21. Case 40 includes case interior interposer mating
connector 41, bottom exterior accessory connector 42, side exterior
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accessory connector 43, and flexible printed circuits 45 that connect the case
interface connectors. Id. Figures 6 and 7 are reproduced below.

Figures 6 and 7 depict interposer connector 1 designed to interface with
conventional I/O connector 10 of an electronic device 9. Id. ¶¶ 57–58, 104,
Figs. 6–7.
4. Petitioner’s Contentions and Analysis
Petitioner contends that claims 8–11, 14, 15, 19, and 20 obvious over
Song (Ex. 1010) in view of Li (Ex. 1009) or Rudisill (Ex. 1008). Pet. 39–
61. Petitioner reproduces claim 8 and claim 11, the independent claims
challenged under this ground, adding citations to these references. We begin
our analysis addressing the grounds as applied to claim 8. Petitioner sets
forth claim 8, with added citations, as follows:
8. A docking cradle (Ex. 1010 Figs. 1–6), comprising:
a base receiver (Ex. 1010 Fig. 1 ref 2, lower portion and refs
4,A) configured to receive an electronic device (Ex. 1010
ref 1) disposed in a removable cover (Ex. 1010 Figs. 2,4
ref 21,22 [sic]) having a male connector (Ex. 1010 Figs. 1–
2 ref B, portion external to electronic device) with a
plurality of contacts (Ex. 1010 Fig. 4 ref 11,11-1), the base
receiver comprising a back support surface (Ex. 1010 Fig. 1
ref 2, back portion) to support a back of the removable
cover and electronic device and a docking support surface
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Patent 9,706,026 B2
29
(Ex. 1010 Fig. 1 refs A,4) extending away from the back
support surface; and
a female connector (Ex. 1010 Figs. 1–2 upper portion of ref A
surrounded by ref 6) disposed within the docking support
surface of the base receiver and comprising a plurality of
contacts (Ex. 1010 Fig. 4 ref 10) configured to connect with
one or more of the plurality of contacts (Ex. 1010 Fig. 4 ref
11,11-1) of the male connector when the male connector is
received in the base receiver, the female connector defining
a rim (Ex. 1010 Fig. 4 ref 6) to guide proper mating of the
male connector of the removable cover to the female
connector of the docking cradle, wherein the female
connector further comprises a magnetic coupling element
(Ex. 1010 Fig 4 ref 7) resident in the connector, wherein the
magnetic coupling element comprises one of a magnetic
material or a magnetically attractive material (Ex. 1010
Fig. 4 ref 7 “magnet”).
Id. at 42–43 (citing Ex. 1001, 32:48–67 (claim 8); Ex. 1011 ¶¶ 102–114 [sic,
¶¶ 107–119]). Petitioner further details its contentions as to the teachings of
the references (id. at 43–47), including that Li and Rudisill disclose an
electronic device disposed in a cover and engaged with a docking cradle
(id. at 44) and that Rudisill discloses using magnets in its electrical contacts
(id. at 47), and Petitioner’s contentions as to the motivation to combine (id.
at 47–48).
Patent Owner argues that Petitioner fails to establish a sufficient basis
for the recited “electronic device disposed in a removable cover having a
male connector” that the “base receiver” is “configured to receive.” Prelim.
Resp. 45–46, 48.
On the current record, we determine that Petitioner does not
sufficiently establish that Song discloses a “removable cover” for the
electronic device as recited in claim 8. Petitioner cites Figures 2 and 4,
reference numbers 21 and 22 (Pet. 42), but neither are present in the figures
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Patent 9,706,026 B2
30
(see Ex. 1010, Figs. 2, 4), or described elsewhere in Song (see id.). In
turning to Li and Rudisill, Petitioner states, “[t]o the extent Song does not
expressly disclose a cover on the electronic device” (emphasis added), which
implies Song may implicitly disclose such a cover, but Petitioner provides
no support for Song implicitly disclosing a cover either. Pet. 44.
Petitioner’s reliance on Li and Rudisill for remedying the absence of a
removable cover in Song’s disclosure similarly falls short. Petitioner relies
on “Li disclos[ing] an electronic device 3 disposed in a cover 21, 22 and
engaged with docking cradle 1.” Id. (citing Ex. 1009, Figs. 1, 2, 4).
Petitioner relies on “Rudisill [] disclos[ing] an electronic device 9 disposed
in a cover 40 and engaged with docking cradle 16.” Id. (citing Ex. 1008,
Figs. 31, 49). Petitioner contends that “[t]he base receiver of Song could
readily receive an electronic device disposed within such a cover, as
exemplified by the docking cradles of both Li and Rudisill” and that a
person of ordinary skill in the art “would be motivated to adapt the base
receiver of Song to receive an electronic device disposed with a cover as
disclosed by Li and Rudisill.” Id. Petitioner further contends that a person
of ordinary skill in the art “would have been motivated to combine docking
cradles as disclosed by Song with protective covers for electronic devices as
disclosed by Li or Rudisill to provide additional protection for the electronic
device as they are held within the docking cradles, such as during movement
in vehicles or other mobile applications.” Id. at 48 (citing Ex. 1011 ¶¶ 107–
112, 114). Although not discussed in the Petition, the testimony of
Dr. Cameron cited by Petitioner states that a person of ordinary skill in the
art “was well aware of the benefits of using a cover to protect an electronic
device,” and that they “would have understood[] the easiest way to have
[Song’s coupling jack B] constantly coupled to the cellular phone 1 would
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31
be to attach it to the cover at the location of the data port hole [3].” Ex. 1011
¶ 111 (citing Ex. 1010, 3:1–2).
Petitioner has, in relying on Li and Rudisill, identified references that
disclose an electronic device disposed in what is, in each case, a protective
cover. Petitioner fails to sufficiently explain, however, why one of ordinary
skill in the art would have modified Song’s teaching to arrive at an
“electronic device disposed in a removable cover having a male connector”
that the “base receiver” is “configured to receive.” The failure is two-fold,
first, as to providing a basis for including any type of removable cover, and,
second, as to providing a removable cover having a male connector.
Petitioner fails to sufficiently explain why the skilled artisan would
have sought to use a protective cover of any type with Song’s cellular phone.
Dr. Cameron testifies that a person of ordinary skill in the art “was well
aware of the benefits of using a cover to protect an electronic device,” but
there is no explanation why Song’s cellular phone would benefit. Ex. 1011
¶ 111. Similarly, Petitioner relies on the benefit of “additional protection for
the electronic device as they are held within the docking cradles, such as
during movement in vehicles or other mobile applications,” but fails to
explain why an electronic device requires additional protection when it is
held within its docking cradle beyond that afforded by the docking cradle
itself. See Pet. 48 (citing Ex. 1011 ¶¶ 107–112, 114).
Petitioner fails, especially, to sufficiently explain why the skilled
artisan would have arrived at a removable cover having a male connector.
The Petition itself is silent as to providing this specific arrangement of
elements, referring only to Li and Rudisill disclosing electronic devices
disposed in a cover and engaged with a docking cradle (id. at 44), and that it
would have been obvious to provide protective covers for electronic devices
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Patent 9,706,026 B2
32
as disclosed by Li or Rudisill (id. at 48). The testimony of Dr. Cameron
cited, but not discussed, states that a person of ordinary skill in the art
“would have understood[] the easiest way to have [Song’s coupling jack B]
constantly coupled to the cellular phone 1 would be to attach it to the cover
at the location of the data port hole [3].” Ex. 1011 ¶ 111 (citing Ex. 1010,
3:1–2); Pet. 48. But this testimony falls short because it is not sufficiently
supported by corroborative evidence and thus we give it little weight. See
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the
discretion of the trier of fact to give each item of evidence such weight as it
feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert
opinion going to factual determinations, however, may render the testimony
of little probative value in a validity determination.”). While it is correct
that Song teaches its coupling jack B is to remain inserted in data connector
hole 3 of cellular phone 1, the weight of its teaching is also that this is
simply achieved by coupling the intermediate coupling jack to the cellular
phone by plugging coupling jack 5 into data connector hole 3. See, e.g.,
Ex. 1010, 2 (“the coupling jack 5 formed at the intermediate coupling jack B
which is constantly coupled to the data connector hole 3 has the same
coupling structure as that of an existing data connector jack.”). There is,
accordingly, no reasonable basis on this record for Dr. Cameron’s statement
that the “easiest way to have [coupling jack] B constantly coupled” is to
“attach it to the cover at the location of the data port hole.” Ex. 1011 ¶ 111.
Finding the cited testimony for including the male connector as part of the
removable cover grounded on this unfounded conclusion, we determine the
testimony fails to bear the weight required.
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Petitioner’s general contentions that it would have been obvious to
provide a protective cover based on the teachings of Li and Rudisill also fall
short. Pet. 44, 48. There is insufficient explanation provided for how a
protective cover would have been included in such a combination or how the
combination would have been arranged. Id. In particular, it is apparent that
there are any number of different ways that a protective cover could be
provided while allowing, or maintaining access, for connection between an
electronic device and a docking station.
In sum, Petitioner relies on a combination of teachings from Song in
view of either Li or Rudisill that require modification from what is set forth
to reach the claimed subject matter, but fails to explain sufficiently why a
person of ordinary skill in the art would have undertaken the modifications
necessary to reach the claimed subject matter. See Belden v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.”). Further, “[c]are must be taken to avoid hindsight
reconstruction by using ‘the patent in suit as a guide through the maze of
prior art references, combining the right references in the right way so as to
achieve the result of the claims in suit.’” Grain Processing Corp. v.
American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir.
1983)). Given the absence of a clear alternative explanation for the
proposed modifications, we discern here an exercise of impermissible
hindsight reconstruction.
Petitioner sets forth claim 10 with added citations in the same manner
as claim 8. See Pet. 50–51. Claim 10 recites, in relevant part for this
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discussion, “a protective cover for an electronic device, the cover
comprising a shell forming an interior cavity to receive the electronic
device[] [and] a male plug comprising a plurality of connectors extending
into the interior cavity of the shell.” Ex. 1001, 33:5–9. For the “protective
cover,” Petitioner again relies on Li and Rudisill, as it did for the “removable
cover” of claim 8, and on Song for disclosing the male plug, as it did for the
“male connector” of claim 8. Compare Pet. 50–52, with id. at 42–44.
Petitioner does not cite to Dr. Cameron’s testimony for support of its
contentions as to these limitations, in effect, relying on that offered for the
corresponding elements recited in claim 8, discussed above. Id. at 50–56.
The protective cover recited in claim 10 requires both a shell forming
an interior cavity for the electronic device and a male plug extending into
that same cavity. Ex. 1001, 33:5–9. As with Petitioner’s challenge to
claim 8, and for the same reasons, Petitioner fails to establish a sufficient
basis for a shell that includes a male plug for connecting with the electronic
device.
Accordingly, Petitioner fails to meet its burden for instituting inter
partes review based on Song in view of Li or Rudisill.
H. Asserted Obviousness Over Song in View of Li or Rudisill, and
Further View of Braitberg
1. Petitioner’s Contentions and Analysis
Petitioner contends that claim 15 is obvious over Song (Ex. 1010) in
view of Li (Ex. 1009) or Rudisill (Ex. 1008), and further view of Braitberg
(Ex. 1006). Pet. 61–62. Claim 15 ultimately depends from claim 10, and
further requires that “the rim of the docking connector is recessed with
respect to the docking support surface.” Ex. 1001, 34:9–11.
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Petitioner contends that Braitberg discloses a “rim [being] recessed
with respect to the docking support surface” without any explanation beyond
that such was asserted by the Examiner, Patent Owner did not contest the
Examiner’s assertion, and Patent Owner is now estopped from asserting
otherwise. Pet. 61 (citing Centocor, 662 F. Supp. 2d at 591). Petitioner
further contends that a person of ordinary skill in the art “would have been
motivated to combine Braitberg with Song, Li, and Rudisill in the manner
suggested herein for the reasons set forth above.” Id. at 61–62.
On this record, Petitioner fails to establish any basis for the ground.
As discussed above, there is no basis for Petitioner’s reliance on the
Examiner’s assertions as to the teaching of the art being sufficient to meet its
burden in this proceeding. Further, nothing set forth remedies the deficiency
in Petitioner’s challenge to claim 10, from which claim 15 ultimately
depends. Still further, Petitioner’s general statement as to the motivation “to
combine Braitberg with Song, Li, and Rudisill in the manner suggested
herein” is wholly deficient to set forth a basis for how the subject matter
would have been obvious.
Accordingly, Petitioner fails to meet its burden for instituting inter
partes review based on Song in view of Li or Rudisill, and further view of
Braitberg.
I. Asserted Anticipation by Rudisill
Petitioner contends that claims 10, 11, 19, and 20 are anticipated by
Rudisill (Ex. 1008). Pet. 62–69. Petitioner reproduces claim 10, adding
citations to Rudisill, as follows:
10. A docking system (Ex. 1008 Figs. 31-33,49), comprising:
a protective cover (Ex. 1008 Figs. 31-33 ref 40) for an
electronic device (Ex. 1008 ref 9), the cover comprising a
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shell forming an interior cavity to receive the electronic
device, a male plug (Ex. 1008 Figs.1,24 ref 2) comprising a
plurality of connectors (Ex. 1008 ref 3) extending into the
interior cavity of the shell in an arrangement for mating
with a female socket of the device, and a contactor
(Ex. 1008 Figs. 24,31 ref 42) comprising a plurality of
contacts (Ex. 1008 ref 61) adjacent to an exterior of the
shell and electrically coupled to one or more of the
connectors of the plug, wherein the cover (Ex. 1008 ref 40)
is configured and arranged to extend over at least a portion
of a back surface, a front surface, and each of four side
surfaces of the electronic device to hold the electronic
device within the cover; and
a docking cradle (Ex. 1008 ref 11) configured to receive the
cover and comprising a base receiver (Ex. 1008 Fig. 31
ref 11) to receive the cover and a docking connector
(Ex. 1008 ref 16) disposed on the base re6ceiver and
comprising a plurality of contacts (Ex. 1008 ref 16)
positioned to connect with one or more of the plurality of
contacts (Ex. 1008 ref 42) of the contactor of the protective
cover, the docking connector defining a rim (Ex. 1008
Fig. 49 ref 104) to guide proper mating of the contactor to
the docking connector.
Id. at 62–63 (citing Ex. 1001, 32:48–67 (claim 10)). Petitioner further
details its contentions as to the limitation that “the cover is configured and
arranged to extend over at least a portion of a back surface, a front surface,
and each of four sides of the electronic device to hold the electronic device
within the cover,” and in particular as to the cover extending over at least a
portion of a front surface, as follows:
Rudisill discloses a cover 40 that fittingly engages the
device 9. (Ex. 1008 Figs. 20,24,31). The case 40 extends over
the back surface and each of the four side surfaces of the device
9, and it is inherent that the device 9 would need to be retained
in the case 40 by having the case 40 extend over a portion of the
front surface, so that the device 9 does not fall out of the case
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40 when, for example, the case 40 is engaged in an upright
position on the docking station 11 as shown in Figure 32.
Id. at 65.
Patent Owner highlights that Petitioner does not cite expert testimony
to support its argument and argues that Rudisill’s figures “do not show a
cover that extends over the front surface of the electronic device” and that it
is not necessary for the front cover to extend over the front surface of the
electronic device for it to be secured in the case. Prelim. Resp. 52–53.
On this record, Petitioner both fails to establish that any cover in
Rudisill extends over any portion of the front surface of its electronic device
and that it is necessary for the cover to do so for any purpose. Thus,
Petitioner fails to establish a basis for Rudisill disclosing, either expressly or
inherently, a cover that extends over at least a portion of the front surface.
Continental Can, 948 F.2d at 1268 (“Inherency . . . may not be established
by probabilities or possibilities.”).
Accordingly, Petitioner fails to meet its burden for instituting inter
partes review based on Rudisill.
CONCLUSION
Based on the arguments and evidence of record, we determine that
Petitioner has not established a reasonable likelihood of prevailing on any of
its assertions that claims 1, 4, 8, 9–11, 14, 15, 19, and 20 of the ’026 patent
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are unpatentable. Because of this, we need not reach the other issues raised
by the parties.
ORDER
It is:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied
and no trial is instituted.
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Patent 9,706,026 B2
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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 LLP
dtellekson@fenwick.com
jmcmichael@fenwick.com
jkaempf@fenwick.com