RAMZI KHALIL MAALOUF

Patent Trials and Appeals Board

Sep 9, 2021

IPR2020-00483 (P.T.A.B. Sep. 9, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Date: September 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MICROSOFT CORPORATION,
Petitioner,
v.
RAMZI KHALIL MAALOUF,
Patent Owner.

IPR2020-00483
Patent 9,503,627 B2

Before BRIAN J. McNAMARA, KEVIN C. TROCK, and
JASON W. MELVIN, Administrative Patent Judges.
McNAMARA, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. BACKGROUND
On September 16, 2020, we instituted an inter partes review of claims
29 and 37 of U.S. Patent No. 9,503,627 B2 (“the ’627 Patent”). Paper 11
(“Dec. to Inst.”). Ramzi Khalil Maalouf (“Patent Owner”)1 filed a Request
for Rehearing (Paper 13), that was denied (Paper 26). Patent Owner filed a
Patent Owner Response. Paper 25 (“PO Resp.”). Microsoft Corporation
(“Petitioner”) filed a Petitioner Reply. (Paper 27, “Pet. Reply”). A transcript
of an oral hearing held on June 14, 2021, has been entered into the record.
Paper 31 (“Hr’g. Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. §318(a). We base our decision on
the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
Having reviewed the arguments of the parties and the supporting
evidence, we conclude that Petitioner has demonstrated by a preponderance
of the evidence that the challenged claims are unpatentable.
II. THE ’627 PATENT (EXHIBIT 1001)
The ’627 patent describes a handle for a handheld terminal, e.g., a
mobile phone, that can be used for taking photographs or creating videos or
to control the phone remotely. Ex. 1001, 1:22–24, 3:65–4:1, 3:5–6. The
handle provides a wired or wireless connection to the handheld terminal
through a first wired or wireless interface module. Id. at 2:35–37. The first
interface module may be, e.g., a USB interface or an iPhone interface and
the wireless interface module may be, e.g., WiFi or Bluetooth. Id. at
2:55–59. A power supply module provides power for the handle device and

1 Ownership of the ’627 patent changed after entry of the Decision to
Institute. At that time, the ’627 patent was owned by Dareltech LLC.
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may include various types of batteries that can be charged and discharged.
Id. at 2:42–43, 62–6, 3:52–54. The handle may also include a key module
for users to input commands. Id. at 2:43–44, 62–63, 4:43–44. Figure 2 of
the ’627 patent, reproduced below, is a front view of the handle.

Figure 2 of the ’627 patent showing a front view of the handle
The handle in Figure 2 includes camera key 2, a camera/video shift key, first
zoom key 4, second zoom button 5, and slots 6. Id. at 3:43–47.
Figure 3 of the ’627 patent is shown below.

Figure 3 of the ’627 patent showing a slot sliding plate
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Figure 3 illustrates the handle’s slot sliding plate. Id. at 2:3–4. The handle
base module includes transformable chuck 8, slot sliding plate 9, a magnet
and spring (not shown), and button 1 (not shown) used to open and close slot
sliding plate 9 to fix the position of the handheld terminal and transformable
chuck 8. Id. at 3:27–33, 4:1–6.
The ’627 patent states that “[t]he one hand handle may include a
remote control of the mobile phone,” that
realizes the transformation from the behavior pattern of operating
the mobile phone for taking pictures or videos to the behavior
pattern of one-hand operating mobile phone, controlling the
camera or video function of the handheld terminal, so that the
handheld terminal is convenient and comfortable holding. The
one hand handle may also provide stability and security.
Id. at 3:5–14. “The one-hand handle has connection with the handheld
terminal via the first wireless interface module, or has wired connection via
the first wired interface module.” Id. at 3:24–26.
III. CHALLENGED CLAIMS
Challenged independent claim 29 is reproduced below with paragraph
designations corresponding to those used in the Petition.
[29P] A handheld device to wirelessly operate a camera of a
mobile device, wherein the handheld device comprises:
[29A] a holder that, during use, holds the mobile device; and
[29B.1] a handle apparatus coupled to the holder, wherein the
handle apparatus comprises:
[29B.2a] a command key that, during use, is selectable and
corresponds to a camera feature of the mobile device,
[29B.2b] wherein the command key is positioned on the handle
apparatus such that a user is able to, with one hand, both
hold the handle apparatus and select the command key;
[29B.3a] a wireless interface module that, during use, provides
a wireless connection to the mobile device,
[29B.3b] wherein remote control of the camera feature of the
mobile device is provided over the wireless connection; and
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[29B.4a] a command key module that, during use, provides, via
the wireless connection, a control command to the mobile
device such that the control command indicates to the
mobile device to perform the camera feature,
[29B.4b] wherein the command key is one of a plurality of
command keys positioned on the handle apparatus, and
[29B.4c] wherein each of the plurality of command key
corresponds to a respective command.

Claim 37, which depends from claim 29 and is the only other claim
challenged in the Petition, is reproduced below.
37. The handheld device of claim 29, wherein the holder,
during use and using the sliding member, adjusts to hold mobile
phones of various sizes.
IV. ASSERTED ART
Petitioner cites the following references in its challenges to
patentability:
Reference Designation Exhibit No.
U.S. Patent App.
Publication No.
2013/0005401
published January 3,
2013
Rosenhan 1005
WIPO Publication No.
2012/096433 published
July 19, 2012
Kim
1006;
1007 (Certified English
Translation)
U.S. Patent No.
7,684,694 issued
March 23, 2010
Fromm 1008
WIPO Publication No.
2012/018405 published
February 9, 2012
Fenton 1009
U.S. Patent Appl.
Publication No.
2011/0058052,
published March 10,
2011
Bolton 1010
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V. GROUNDS OF INSTITUTION
Inter partes review was instituted on the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)
29 103 Rosenhan
37 103 Rosenhan, Kim
29, 37 103 Fromm, Fenton, Bolton

VI. ANALYSIS OF PRIOR ART CHALLENGES
A. Introduction
Petitioner’s challenges assert that claims 29 and 37 (the “challenged
claims”) are obvious under 35 U.S.C. § 103. Pet. 2. The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of nonobviousness. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness
inquiry typically requires an analysis of “whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic
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Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). 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). Instead, Petitioner must articulate a reason why a person of
ordinary skill in the art would have combined the prior art references. In re
NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
A reason to combine or modify the prior art may be found explicitly
or implicitly in market forces; design incentives; the “‘interrelated teachings
of multiple patents’”; “‘any need or problem known in the field of endeavor
at the time of invention and addressed by the patent’”; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
2009) (quoting KSR, 550 U.S. at 418–21).
Before determining whether a claim is obvious in light of the prior art,
we consider any relevant evidence of secondary considerations of non-
obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to one of ordinary skill in the
art at the time of the invention, the totality of the evidence submitted,
including objective evidence of non-obviousness, may lead to a conclusion
that the challenged claims would not have been obvious to one of ordinary
skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
Having analyzed the asserted grounds of unpatentability in accordance
with these principles, based on the evidence of record, and for the reasons
discussed below, we conclude that Petitioner has met its burden to establish
by a preponderance of the evidence that the claims are unpatentable on each
of the asserted grounds.
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B. Claim 29 as Obvious over Rosenhan
1. Rosenhan
Petitioner cites Rosenhan as disclosing an ergonomic handle that
couples to a smart phone and has buttons that allow a user one handed
control of camera functions, e.g., zoom and record functions, through a
wired or wireless electronic interface, such as a Bluetooth interface. Paper 2
(“Petition” or “Pet.”), 12–15 (citing Ex. 1005 ¶¶ 5, 6, 22, 24, 26–27, 29).
Figure 2A of Rosenhan, reproduced below, is a side view of its ergonomic
handle and a smartphone.

Figure 2A of Rosenhan showing a handle portion and
smartphone
Rosenhan’s device 100 includes grippable handle portion 102 with
undulating finger recesses 105. Ex. 1005 ¶ 23. Petitioner notes that
Rosenhan employs mounting structure 108 having a pair of opposed arms
110 and clip 112 disposed on one end of the arms. Pet. 22 (citing Ex. 1005
¶¶ 24–25). Petitioner further states that Rosenhan’s mounting structure is
designed to secure a smartphone having a specific width and thickness. Id.
(citing Ex. 1003, Welch Decl. ¶ 99). We also note that Rosenhan discloses
telescoping arms. Ex. 1005 ¶ 41.
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2. Claim 29
The preamble of claim 29 (29P) recites a “handheld device to
wirelessly operate a camera of a mobile device.” Petitioner cites Rosenhan’s
disclosure of a handle mount device that includes controls for controlling,
zooming or recording over a wireless connection, e.g. Bluetooth, interface.
Pet. 23–24 (citing Ex. 1005 ¶¶ 6, 29; Ex. 1003, Welch Decl. ¶¶ 84–85).
Petitioner identifies as claim element 29A the limitation that recites a
holder that holds the mobile phone during use. Id. at 24. Petitioner cites
Rosenhan’s disclosure of mounting structure 108 having arms 110 and clips
112 to hold the smartphone while the user grips handle 102 as teaching
claim element 29A. Id. at 24–25 (citing Ex. 1006 ¶ 24; Ex. 1003, Welch
Decl. ¶ 86).
Petitioner identifies four “handle apparatus” limitations (claim
elements 29B.1 through 29B.4) in claim 29. Pet. 25–30. As to the recited
“handle apparatus coupled to the holder” (claim element 29B.1), Petitioner
cites Rosenhan’s disclosure of an ergonomic grippable handle 102 at a
proximal end of handle mount device 100 that may be gripped by a user. Id.
at 25–26 (citing Ex. 1006 ¶ 22, Fig. 1B; Ex. 1003, Welch Decl. ¶ 87).
Petitioner identifies the command key limitations as claim element
29B.2 and breaks them into two command key limitations. Pet. 26–28. As
to the recitation of “a command key that during use is selectable and
corresponds to a camera function of the mobile device” (claim element
29B.2a), Petitioner cites Rosenhan as disclosing buttons pressed by the user
to send, e.g., zoom and record commands to the smartphone by pressing a +
or – key, respectively. Id. (citing Ex. 1005 ¶ 27). Petitioner identifies other
controls in Rosenhan’s mount device 100, including focusing, color balance,
video or photo mode selection, flash or other lighting controls, flip function,
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and other functions available through video capabilities of the smart phone.
Id. As to the recitation of the command key positioned on the handle
apparatus such that the user is able to hold the handle and select the
command key with one hand (claim element 29B.2b), Petitioner cites
Rosenhan’s disclosure of command keys on the handle within easy reach of
the same hand the operator uses to hold the handle, such that the user can
control operable features of the mobile phone. Id. at 26–28 (citing Ex. 1005
¶¶ 22, 28; Ex. 1003, Welch Decl. ¶¶ 89–90, 94).
Petitioner identifies claim element 29B.3a as reciting a wireless
interface module that provides a wireless connection to the phone during
operation. Pet. 28. Petitioner cites Rosenhan as disclosing a wireless
connection between the handle and smartphone over Bluetooth. Id. at 28–29
(citing Ex. 1003 ¶¶ 29, 46; Ex. 1003, Welch Decl. ¶ 91). Petitioner
identifies as claim element 29B.3b the recitation that the camera’s remote
control is provided over the wireless connection and cites to Rosenhan’s
disclosure that electronic connection interface may sync or otherwise control
the zoom and record functions of the camera using the Bluetooth connection.
Id. at 29–30 (citing Ex. 1005 ¶¶ 5–6, 29; Ex. 1003, Welch Decl. ¶¶ 91–92).
Petitioner identifies as claim element 29B.4.a–c the limitations that
recite, respectively, (a) a command key module that during use provides a
command to perform a camera function via a wireless connection, (b) that a
command key is one of a plurality of keys on the handle and (c) that each of
the plurality of keys corresponds to a respective command. Pet. 30–33.
Petitioner notes that the ’627 patent provides a limited description of the
command key module, but argues that such features as receiving an
indication of a user’s selection of a command by pressing a button is well
known to those of ordinary skill. Id. at 30–31 (citing Ex. 1003, Welch Decl.
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¶¶ 66, 93). Petitioner further notes that Rosenhan discloses a set of buttons
on the handle including zoom key 114 and record key 116, as well as control
keys for selecting video or photo modes, color balance and focusing. Id. at
31 (citing Ex. 1005 ¶¶ 27–28, 52–55; Ex. 1003, Welch Decl. ¶¶ 88, 96). As
further evidence that Rosenhan discloses this limitation, Petitioner further
notes that Rosenhan discloses transmitting a command corresponding to a
user selected button to the mobile phone via a wireless Bluetooth
connection. Id. at 32–33 (citing Ex. 1005 ¶¶ 26–29, 46; Ex. 1003, Welch
Decl. ¶ 94).
The Patent Owner Response argues that Rosenhan does not disclose
claim limitation 29B.3b, which recites “wherein remote control of the
camera feature of the mobile device is provided over the wireless
connection.” PO Resp. 3; Hr’g. Tr. 22:4–13. According to Patent Owner
“Rosenhan is completely silent on the subject matter of remotely controlling
the camera feature as claimed.” PO Resp. 4.
Patent Owner acknowledges: (i) that Rosenhan’s electronic
connection interface 118 may comprise a wireless connection, such as a
Bluetooth or IR connection, and (ii) that Rosenhan’s electronic connection
interface provides electronic communication between zoom control button
414 and record control button 416 on device 400 and smartphone 10. PO
Resp. 5 (citing Ex. 1005 ¶¶ 29, 46). According to Patent Owner, although
Rosenhan’s buttons 414, 416, which are called “zoom control” and “record
control” respectively, may communicate with the smartphone, in Rosenhan
“no example is stated where activating such buttons effects such ‘control.’”
Id. Patent Owner contends that “[r]emote control is a completely different
thing than wireless connection.” Hr’g. Tr. 24:2. Patent Owner argues
Rosenhan’s reference to “the Bluetooth signal that gives it the impression
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that this is remote control is nothing more than just reminding you that there
is a wireless connection. It’s not remote control. Because if it were, it
would be in the text.” Id. at 25:21–24 (referencing Rosenhan’s description
of Figures 6A and 6B); see also id. at 25:8–16.
Notwithstanding Patent Owner’s argument that Rosenhan does not
disclose remote control, we note that Rosenhan explicitly describes “controls
disposed on the handle mount device (e.g., on the grippable handle portion)
for controlling at least one of recording or zooming, and an electronic
connection interface for providing electronic communication between
controls of the handle mount device and the smartphone.” Ex. 1005 ¶ 6; see
also id. ¶¶ 7–8. In addition, Rosenhan’s discussion of zoom control button
114 and record control button 116 states “toggle type focus control button
114 of Figs. 1B and 2A may alternatively be employed with any of the
embodiments.” Ex. 1005 ¶ 46. Rosenhan further states “[w]ireless
connection 418 provides an electronic connection interface for providing
electronic communication between controls 414 and 416 on device 400 and
smartphone 10.” Id.
Patent Owner further argues “[a]nd likewise, no text in Rosenhan
states that any such communication happens at all (‘control’ or otherwise)
when the handle is loose from the smartphone case.” PO Resp. 5. On this
point, Patent Owner contends that Rosenhan does not teach “remote
control,” as that term used in claim 29, based on the language in the
Specification that “[i]n certain embodiments, remote control operations can
also be performed (for example, a non-fixed mode). PO Resp. 4 (quoting
Ex. 1001, 2:31–34) (emphasis by Patent Owner). According to Patent
Owner, this statement in the Specification specifies “the scope of remote
control to be understood as controlling the camera feature of the mobile
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device via the wireless connection at least when the mobile device is not
fixed to the holder of the handheld device.” Id. (emphasis by Patent
Owner). We note that by arguing “at least” a non-fixed mode, Patent Owner
does not disclaim remote control when the mobile phone is affixed to the
handle.
Petitioner argues that Patent Owner’s arguments fail for two reasons:
(1) “the challenged claims do not require that the control buttons operate
when the handle is loose from the smartphone case” (non-fixed mode), and
(2) “even if the challenged claims required this sort of ‘non-fixed mode’ of
remote control . . . Rosenhan expressly teaches it.” Pet. Reply 4. As to its
first argument, Petitioner states that claim 29 covers at least a fixed mode,
rather than a non-fixed mode, because independent claim 29’s limitations
repeatedly recite “during use,” e.g., “when the handle is coupled to the
holder and the holder is holding the mobile device.” Id. at 5. As to its
second argument, Petitioner states “even if such an ‘uncoupled’ remote
control were to be read in as a limitation of claim 29 . . . Rosenhan clearly
states that for Rosenhan’s wireless Bluetooth control ‘no physical electronic
connection is required.” Id. at 7.
The ’627 patent Specification does not define the term “remote
control.” Patent Owner acknowledges that “remote control is when you are
controlling something from a remote location.” Hr’g. Tr. 24:4–5. Patent
Owner’s argument overlooks that the purpose of the communication in
Rosenhan is to control operations of the smartphone camera, as discussed
above. See Ex. 1005 ¶¶ 6–8, 46. For example, when the zoom control
button is pressed, Rosenhan communicates a signal to the smartphone that
causes the smartphone camera to zoom in or out. Id. ¶ 22 (“with a single
hand, the user can conveniently and easily operate both record button 116
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(FIG. 2A) with wrapped around fingers, while simultaneously allowing
operation of zoom button 114 with the thumb. (FIG. 1B)”); see also ¶ 26
(“[I]llustrated positioning of controls 114 and 116 may be particularly
advantageous as it allows convenient control within a single gripping hand
as the finger tips (e.g., the index finger) can depress record button 116, and
the thumb can easily manipulate either side of toggle Zoom control 114.”).
Thus, Rosenhan teaches buttons (i.e., command keys) on the handle that
control the camera features, as claimed. Rosenhan’s controls are provided
via a wireless communication path (or wireless connection). Rosenhan
explicitly states that “electronic connection interface 118 may comprise a
wireless connection (e.g., through Bluetooth, IR, etc.) so that no physical
electronic connection is needed.” Id. ¶ 29. Thus, irrespective of whether the
smartphone is connected to the handle or not, as long as the smartphone is in
range of the wireless signal, Rosenhan provides remote control of the
camera features over the wireless connection, as recited in claim limitation
29.B.3b.
We also agree with Petitioner that an analysis of the language of
independent claim 29 and dependent claim 37 compels a finding that
Rosenhan teaches or suggests the limitations of the claims as written. Claim
29 recites a “handheld device to wirelessly operate a camera” that comprises
“a holder that, during use, holds the mobile device.” (emphasis added). Pet.
Reply 4–6. Claim 29 further recites a handle apparatus coupled to the
holder. That handle apparatus, which is coupled to the holder, includes a
wireless module that provides a wireless connection to the mobile device
and “remote control of the camera feature of the mobile device is provided
over the wireless connection,” as recited in claim 29. As the handle
apparatus is coupled to a holder that holds the mobile phone during use and
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the handle includes a wireless control module to control the mobile phone’s
camera remotely via the wireless connection, claim 29 is not limited to a
“non-fixed” implementation in which the mobile device is not held by the
holder during use.
Patent Owner’s arguments concerning remote control are also
inconsistent with its own description of “a commercial embodiment of the
invention claimed by the ’627 patent called the HandlePa.” PO Resp. 2.
According to Patent Owner, “we customized a phone case that could be
easily installed and removed (or could stay on for protection), coupled to an
extendable, grippable stick that could be easily decoupled when not in use.
Ex. 2001, Declaration of Ramzi Khalil Maalouf, (“Maalouf Decl.”) ¶ 7.
Patent Owner further testified:
The HandlePa is a selfie stick with control buttons to
communicate wirelessly with the smartphone and to control and
operate at least the camera function using just one finger. The
apparatus yields clearer and steadier pictures than the prior art,
while allowing the user to take more difficult angle shots using
only one hand to securely grasp the stick and operate the systems
safely and comfortably.
Maalouf Decl. ¶ 9. Patent Owner’s description of the commercial
embodiment of the invention does not mention a “non-fixed” mode of
operation. Patent Owner’s description of its own commercial embodiment
of the invention emphasizes many of the same features as those described by
Rosenhan.2 See, e.g., Ex. 1005 ¶¶ 6–8, 29.
Finally, the explicit teachings of Rosenhan refute Patent Owner’s
arguments that the difference between international CPC classification of the

2 As discussed further herein, another section of the Patent Owner Response
attempts to limit the invention to a “selfie stick,” although there is no such
limitation recited in the claims.
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’627 patent and that of Rosenhan “establishe[es] the fact that Rosenhan does
not even relate to remotely controlling the camera features, at least as
claimed.” PO Resp. 4–5.
Having reviewed the evidence and arguments of record, we conclude
that Petitioner has established by a preponderance of the evidence that
Rosenhan discloses the limitations of claims 29. Although written in the
context of Ground 2, i.e., that claim 37 is obvious over Rosenhan in view of
Kim, (PO Resp. 8–9), Patent Owner’s discussion of objective indicia of
obviousness (“secondary consideration”) applies to all of Petitioner’s
challenges. We address secondary considerations in Section VI.F herein.
C. Claim 37 as Obvious over Rosenhan and Kim
1. Kim
Kim discloses a wireless remote control device for self-photography
using a mobile camera. Ex. 1007, 1:9–14. A perspective view of mobile
phone held in a holder in Figure 11 of Kim is reproduced below.

Figure 11 of Kim
Referring to Figure 11, Petitioner cites Kim as disclosing a self-
photography device whose core components include graspable handle part
10, telescoping shaft 30, and mounting part 20 that serves as a mount to
which mobile 50 is affixed and permits the user to change the direction of
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the mobile phone as desired. Pet. 35 (citing Ex. 1007, 3:23–24, 5:13–17,
5:22–23, 11:14–15). Petitioner notes that Kim’s handle portion includes a
wireless transmitter that communicates with a receiver in the phone mount to
activate the phone’s touchscreen and that a battery coupled to the wireless
transmitter provides power to the transmitter and other components on the
handle. Id. at 35–36 (citing Ex. 1007, 3:22–26, 5:24–30, 6:9–11, 6:28–7:3).
Petitioner’s annotated version of Figure 5 of Kim, which illustrates a
cross sectional view of a phone held in a mounting part of the holder, is
reproduced below.

Petitioner’s annotated version of Figure 5 of Kim
Pet. 37. Petitioner’s annotated version of Figure 5 of Kim shows a cross
sectional view of a mobile phone in a mounting part of the holder. Id.
Petitioner cites Kim as disclosing a phone mount with horizontally sliding
holder 250 actuated by spring 260 to affix mobile phones 50 of different
thickness to the mount. Id. at 37–38 (citing Ex. 1003, Welch Decl.
¶¶ 98–106).
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2. Claim 37
Claim 37 depends from claim 29 and recites that the holder adjusts,
using the sliding member, to hold mobile phones of various sizes. As to this
limitation, Petitioner cites Kim’s disclosure that its mobile phone holder 250
is actuated by holder spring 260, so as to hold mobile phones of different
thicknesses. Pet. 41 (citing Ex. 1007, 9:24–26, 14:14–14; Ex. 1003, Welch
Decl. ¶¶ 124–125). Noting that Kim includes an adjustable mechanism for
holding a smartphone and attaches to an extendable rod by way of a pivot
point, Patent Owner states “[t]he mechanism in Kim is much thicker than the
phone itself. Prelim. Resp. 19. However, in both the Preliminary Response
and the Patent Owner Response, Patent Owner does not contest explicitly
that Kim discloses a sliding member that adjusts to hold a phone of various
sizes, as recited in claim 37.
For the reasons discussed above, we find that Petitioner has
demonstrated by a preponderance of the evidence the combined teachings of
Rosenhan and Kim disclose the limitations of claim 37.
3. Reasons to Combine Rosenhan and Kim
Noting that Rosenhan does not disclose explicitly that its mounting
structure can accommodate smartphones of different width and thickness
and that both Rosenhan and Kim concern remotely controlling a smartphone
used as a camera, Petitioner argues that a person of ordinary skill in the art
would have been motivated to modify Rosenhan’s mounting structure to
include an adjustable phone mount, such as that disclosed by Kim, in order
to accommodate commercially available smartphones and their diverse form
factors. Pet. 40–41 (citing Ex. 1003, Welch Decl. ¶¶ 107, 121–122).
Petitioner further emphasizes Rosenhan’s explicit suggestion that other
mount structures could be used to secure the smart phone to the mount
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device. Id. at 38 (citing Ex. 1005 ¶¶ 24–25, 48–49; Ex. 1003, Welch Decl.
¶ 107).
The Patent Owner Response does not explicitly address the reasons to
combine the teachings of Rosenhan and Kim advanced in the Petition, but
includes a section entitled “Arguments copied from the Preliminary
Response”.3 PO Resp. 10. In its Preliminary Response, Patent Owner
argued that a person of ordinary skill would not have been motivated to
combine the teachings of Rosenhan and Kim because such a combination
“results in a larger, bulkier, more cumbersome, end-weighted device that
would be more difficult to hold in a stable position during video shoots.”
Prelim. Resp. 20. According to Patent Owner, Petitioner’s proposed
combination “significantly changes the relationship of the smartphone
screen to the grip, changing the principle of operation of the device” and
defeats Rosenhan’s goal of an ergonomic and compact design. Id. at 20–21.
In our institution decision, we found these arguments unavailing. Dec.
to Inst. 29. We again note that Petitioner cites Kim for its teaching of a
holder that adjusts to smartphones of different widths and thicknesses, but
that Patent Owner’s arguments in the Preliminary Response are drawn to
other features of Kim that Petitioner does not cite in its combination with
Rosenhan. Id.
The Patent Owner Response does not respond directly to the issues
discussed above. We find that Petitioner has demonstrated by a

3 Patent Owner’s arguments copied from the Preliminary Response are
drawn from its response to “Ground 3” concerning the combination of
Fromm, Fenton, and Bolton. In the absence of a specific response to
Petitioner’s arguments concerning the reasons to combine Rosenhan and
Kim in Ground 2, we review Patent Owner’s Preliminary Response on that
ground, as well.
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preponderance of the evidence that a person of ordinary skill would have
had reason to combine the teachings of Rosenhan and Kim and that their
combined teachings disclose the limitations of claim 37.
4. Additional Arguments
Although written in the context of Petitioner’s challenge to claim 37
as obvious over Rosenhan and Kim, Patent Owner advances additional
arguments concerning hindsight and secondary considerations that do not
distinguish Petitioner’s challenge based on Rosenhan and Kim (Ground 2)
from Petitioner’s challenge based on Fromm, Fenton and Bolton (Ground 3).
Therefore, we review Petitioner’s assertions concerning Fromm, Fenton, and
Bolton, before turning to the additional arguments relevant to both Grounds
2 and 3 presented in the Patent Owner Response. We address Patent
Owner’s additional arguments in Sections VI.E–F herein.
D. Claims 29 and 37 as Obvious over Fromm, Fenton, and Bolton
1. Fromm
Figure 2 of Fromm reproduced below is a side view of an apparatus
for supporting a camera.

Figure 2 of Fromm
Figure 2 of Fromm is a side view of a camera supporting apparatus in a fully
extended position Fromm. Ex. 1008, 4:26–27. Figure 2 shows extensible
telescoping support 16 that extends between base assembly 12, where a
camera is secured, and handgrip 14. Ex. 1010, 1:15–25. A battery powered
remote control device, e.g., one integrated into the handle, allows the user to
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activate a zoom, shutter release, and playback from the remote control using
communication codes, e.g., infrared codes. Id. at 7:54–8:11.
2. Fenton
Fenton discloses an apparatus suitable for holding a mobile device and
attaching to other apparatus. Ex. 1009, Abstract. Figure 1 of Fenton is
reproduced below.

Figure 1 of Fenton
Figure 1 of Fenton is a diagram of a universal holder for smart phones,
computer tablets and other electronic devices. Ex. 1009, 18. Figure 1 of
Fenton shows universal smart phone holder 1 with main body 9, upper finger
2a with upper tip 1a and lower finger 2b with lower tip 1b connected
together by spring component 6 and that pulls the fingers together in the
direction 7aa. Id. at 27. The mobile device is held tightly between an upper
inner cavity formed by main body 9, upper finger 2a and upper tip 1a, and a
lower cavity formed by main body 9, lower finger 2b and lower tip 1b. Id.
3. Bolton
Bolton discloses an accessory that can remotely control a portable
media device (PMD) capable of storing and playing still images and/or
recording video and audio. Ex. 1010, Abstract ¶ 24. Communication
between the accessory and the PMD according to a PMD specific protocol is
achieved over a physical connection (e.g., USB, FireWire, or universal
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asynchronous receiver/transmitter (UART)) or a wireless channel (e.g.,
Bluetooth and Wi-Fi). Id. ¶¶ 22, 38–39. The accessory can include a power
button, a photo button, a record button, a preview button, playback controls,
and a mode button to change operation modes, e.g., to toggle between still
photo mode and video mode, and a touch screen or display. Id. ¶¶ 22–23.
4. Claim 29
Petitioner first contends that the combination of Fromm, Fenton and
Bolton discloses the “handheld device” to “wirelessly operate a camera” in
the preamble of claim 29. Pet. 51–52. Petitioner cites Figure 1 of Fromm as
showing a camera secured to a base assembly and Figure 15 of Fromm as
showing base assembly 12 and handgrip 14, such that the user holds the
handgrip and aims the camera, which may be a picture phone or video
phone, with the lens facing himself. Id. (citing Ex. 1008, 2:62–63, 3:63–65,
5:30–35, 5:49–52, 6:31–35; Ex. 1003, Welch Decl. ¶ 148).
Noting that Fromm refers to a “special adaptor” for a picture phone
and video phone, Petitioner cites Fenton as disclosing such a special adaptor
in the form a universal mobile device holder. Id. at 49 (citing Ex. 1009,
2:20–27; Ex. 1003, Welch Decl. ¶ 163).
Petitioner cites Bolton’s disclosure of remote, wireless camera
control, e.g., using Bluetooth technology, as teaching the wireless operation
of the mobile phone in the preamble of claim 29. Id. at 52 (citing Ex. 1008
¶ 22; Ex. 1003, Welch Decl. ¶ 163).
Petitioner next turns to the “holder” limitation identified in the
Petition as claim limitation 29A. Pet. 52–54. Petitioner notes that Fromm’s
handheld device 10 includes base assembly 12, handgrip 14, and elongated
extensible support 16 with a coupling mechanism, e.g. a ball seated in the
base assembly and a threaded stud carried by the ball, to couple a film or
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digital camera to the handle. Id. 52–53 (citing Ex. 1008, 5:49–52, 6:21–31,
Fig. 5). In the combination of Fromm and Fenton, Petitioner cites the
universal holder shown in Figure 7C of Fenton, reproduced below, as
Fromm’s special adaptor for a mobile phone. Id. at 44–45, 53–54.

Figure 7C of Fenton showing the elements of a universal
mobile phone holder
Petitioner notes that the universal holder in Figure 7C of Fenton
includes a main body with overlapping portions 9a/9b, spring 6 and upper
and lower fingers 2a/2b “configured such that the spring mechanism may be
compressed in order to apply a generally outward force that may in turn
apply a generally inward force between the upper finger 2a and the lower
finger 2b of the universal holder 1 that may be sufficient to hold a mobile
device 4 securely within the universal holder between upper finger 2a and
lower finger 2b.” Id. at 44–45, 53–54 (quoting Ex. 1012, 41:14–19).
Mr. Welch points out that when a mobile device is placed between upper
finger 2a and lower finger 2b, spring mechanism 6a is compressed, exerting
a force in the direction of arrows 41 and 42 to pull fingers 2a and 2b together
and hold the mobile device securely within the universal holder. Ex. 1003,
Welch Decl. ¶¶ 151–152 (citing Ex. 1009, 41:22–42:18).
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Petitioner next turns to the “handle apparatus limitations of clam 29B,
i.e., claim limitations 29B.1 (handle apparatus), 29B.2 (command key),
29B.3 (wireless interface module, and 29B.4 (command key module).
Pet. 54.
As to the “handle apparatus” limitation identified in the Petition as
claim limitations 29B.1, Petitioner cites Fromm’s handgrip 14 coupled to
base assembly 12 using elongated extensible support 16. Id. at 55–56 (citing
Ex. 1008, 5:48–52, Fig. 5). In the combination with Fenton, Fromm’s
handgrip 14 is coupled to Fenton’s universal device holder. Id. at 56 (citing
Ex. 1003, Welch Decl. ¶¶ 153–154).
Petitioner next turns to the “command key” limitations identified in
the Petition as claim limitations 29B.2a (“a command key that during use is
selectable and corresponds to a camera feature of the mobile device”) and
29B.2b (“wherein the command key is positioned on the handle apparatus
such that a user is able to, with one hand, both hold the handle apparatus and
select the command key”). Pet. 17, 57. Petitioner cites Bolton’s remote
control accessory having buttons/keys provided on a user interface,
including a power button to turn the accessory on and off, a photo button and
a record button to instruct the camera of the mobile phone take a photograph
or capture video, a mode button to change the camera mode, and a preview
button to enable display of a captured image. Pet. 57 (citing Ex. 1010,
¶¶ 22, 31, Fig. 1A). Noting Bolton’s explanation that a user can select input
controls over user interface 222 to invoke mobile phone functionalities,
Petitioner argues Bolton teaches the command key limitation identified as
claim element 29B.2a because the selection of a button by a user results in a
command being sent from the remote control to the mobile device. Id. at 57.
Petitioner further notes that Bolton’s PMD includes a microcontroller or
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microprocessor that executes program code to perform the various functions
by establishing a wireless connection between the PMD and the mobile
phone and exchanging commands and data in accordance with a protocol.
Id. at 57–59. Petitioner notes that in Bolton PMD 202 and accessory 220 are
connected by a wireless communication channel, e.g., a Bluetooth
connection, such that the devices can communicate with each other and act
accordingly. Id. For example, in the photo review mode, the accessory
recognizes when a user presses the photo button and can send a
CameraButtonStatus command with the CameraAction bit set, causing the
camera to capture a still picture. Id. at 59–60 (citing Ex. 1010 ¶¶ 38–39, 57;
Ex. 1003, Welch Decl. ¶¶ 162, 167).
As to claim element 29B.2b, Mr. Welch testifies that Fromm’s
handheld device is configured so that a user can operate the remote control
with the hand holding the handgrip and, when integrated into Fromm’s
handheld, the buttons of Bolton’s user interface can be located on the top
surface of the handle to facilitate the user’s one-handed operation of the
mobile phone. Ex. 1003, Welch Decl. ¶¶ 158–160.
Petitioner next turns to the wireless interface module limitations
identified in the Petition as limitations 29B.3a (“a wireless interface module
that, during use, provides a wireless connection to the mobile device”) and
29B.3b (“wherein remote control of the camera feature of the mobile device
is provided over the wireless connection”). Pet. 17, 60. As to claim
limitation 29B.3a, Petitioner cites Bolton’s remote control accessory as
providing communication between the handle and the mobile telephone,
using WiFi or Bluetooth technology. Id. at 60–61 (citing Ex. 1010 ¶ 3;
Ex. 1003, Welch Decl. ¶ 162). As to claim limitation 29B.3b, Petitioner
argues that, integrated into Fromm’s handheld device, Bolton’s remote
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control feature controls the mobile personal device, e.g., capturing still
images and video, and rewind and replay. Id. at 61 (citing Ex. 1010 ¶¶ 22,
24; Ex. 1003, Welch Decl. ¶¶ 161–163).
Petitioner next turns to claim limitations 29B.4a (“a command key
module that, during use, provides, via the wireless connection, a control
command to the mobile device such that the control command indicates to
the mobile device to perform the camera feature”), 29B.4b (“wherein the
command key is one of a plurality of command keys positioned on the
handle apparatus”), and 29B.4c (“wherein each of the plurality of command
keys corresponds to a respective command”). Pet 16, 62.
Petitioner cites Bolton’s remote control including the set of buttons
discussed above in which a user’s selection of a button causes a command to
be sent from the remote control to the mobile phone. Pet. 62 (arguing that
Bolton teaches claim limitations 29B.4b, i.e., the command key is one of a
plurality of keys, and 29B.4c, i.e., each command key corresponds to a
respective command).
As to claim element 29B4.a, i.e., a command key module that sends
the selected command via a wireless connection from the remote to the
mobile device, Petitioner notes that in Bolton when a connection is achieved,
e.g., via a Bluetooth wireless connection, Bolton’s microcontroller executes
programming so that devices communicate by exchanging protocol specific
commands and data. Id. at 63–64 (citing Ex. 1010 ¶¶ 33, 38–39, 57;
Ex. 1003, Welch Decl. ¶ 167).
Patent Owner does not respond to Petitioner’s arguments that Fromm,
Fenton, and Bolton teach each of the limitations of claim 29. See generally
Prelim. Resp. 21–23; PO Resp. 6–11. Having considered the evidence and
arguments of record, we find that Petitioner has demonstrated by a
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preponderance of the evidence that the combined teachings of Fromm,
Fenton, and Bolton disclose the limitations of claim 29.
5. Claim 37
Claim 37 depends from claim 29 and recites “the holder, during use
and using the sliding member, adjusts to hold mobile phones of various
sizes.” Petitioner cites Fenton as disclosing its universal holder “may be
adjusted to fit mobile devices of different dimensions.” Pet. 65 (quoting
Ex. 1009, 29:3–5). We find that Petitioner has demonstrated by a
preponderance of the evidence that the limitations of claim 37 are taught by
the combination of Fromm, Fenton, and Bolton.
6. Reasons to Combine Fromm, Fenton, and Bolton
Petitioner contends that a person of ordinary skill in the art would
have been motivated to use Fenton’s mobile phone holder as Fromm’s
“special adaptor” for holding a phone. Pet. 47. Petitioner notes that Fromm
explicitly states “if [a] camera is a picture phone, a special adaptor may be
required” (id. at 48–49 (citing Ex. 1008, 6:31–35; Ex. 1003, Welch Decl.
¶ 143)) and argues that Fenton is such a “special adaptor” that allows a
person to expand the commercial application of Fromm’s handle to devices
having a variety of form factors by attaching a mobile smart phone to
another apparatus (id. at 49 (citing Ex. 1009, 2:20–27; Ex. 1003, Welch
Decl. ¶¶ 138–139)).
Petitioner further notes that both Fromm and Fenton are directed to
camera holding techniques and are highly relevant to the ’627 patent’s
mechanism for holding a camera phone. Pet. 49. In addition, Petitioner
points out that Fenton teaches the use of a threaded bolt, similar to Fromm’s
threaded stud, and a threaded nut as fastener receivers. Id. at 47–48 (citing
Ex. 1009, 60:10–14). According to Petitioner, because Fromm uses a well-
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known standardized connector, it would have been a simple matter to
modify Fenton to include the standard threaded hole to couple to Fromm’s
stud. Id.
Noting that Fromm’s remote control functionality is limited to certain
digital/film cameras, Petitioner argues a person of ordinary skill would have
been motivated to replace Fromm’s remote control functionality with
Bolton’s remote control functionality to accommodate the additional
functionalities of smartphones. Id. at 49–50.
The Patent Owner Response does not address explicitly the arguments
concerning the reasons to combine Fromm, Fenton, and Bolton advanced in
the Petition, but copies arguments from the Preliminary Response. PO Resp.
10. In its Preliminary Response, Patent Owner contended that in relying on
the combined teachings of Fromm, Fenton, and Bolton, Petitioner engages in
impermissible hindsight, arguing “Petitioner’s approach instead appears to
argue motivations to combine the three references at a general level (e.g., not
tied to particular features of claims 29 and 37) to conceptualize a new,
composite Fromm-Fenton-Bolton ‘super-reference’, and then proceeds to
pick and choose at will from the separate references.” Prelim. Resp. 23.
The Patent Owner Response repeats these arguments. PO Resp. 11.
In our Decision to Institute we found Patent Owner’s argument
unavailing. Dec. to Inst. 32–33. Petitioner points out that Fromm and
Fenton both are directed to techniques for holding a camera and are
therefore highly relevant to each other and to the subject matter of the
’627 patent. Pet. 49. Petitioner points out that Fromm, which concerns a
film or digital camera, explicitly states that a “special adaptor” would be
needed to accommodate a smart phone. Pet. 48–49 (citing Ex. 1010,
6:31–35; Ex. 1003, Welch Decl. ¶ 143). Petitioner cites Fenton as teaching
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the special adaptor suggested by Fromm in the form of universal adjustable
mount for a mobile device, such as a smart phone for attachment to another
apparatus, such as Fromm’s handle. Id. (citing Ex. 1009, 2:20–27; Ex. 1003,
Welch Decl. ¶ 139). Petitioner further notes that a person of ordinary skill
would recognize that the functionality for remotely controlling a smart
phone differs from that required to remotely control Fromm’s film or digital
camera and would have been motivated to employ Bolton’s methods and
techniques for remote control of smartphones. Id. at 50.
Having considered the evidence or record, we find that Petitioner has
demonstrated a person of ordinary skill in the art would have had reason to
combine the teachings of Fromm, Fenton, and Bolton and that the combined
teachings of these references disclose the limitations of claims 29 and 37.
E. Additional Hindsight Arguments
The Patent Owner Response advances an additional hindsight
argument, asserting that “Petitioner is attempting to take an undue advantage
of knowledge gained in the last decade, to allege obviousness of the claimed
invention.” PO Resp. 9. Petitioner responds that the Patent Owner
Response “points to no instance where Petitioner or Petitioner’s declarant
allegedly rely on such knowledge.” Pet. Reply 19. According to Petitioner,
although “as Patent Owner alleges, ‘a lot of advancements’ may have
occurred in ‘the past 8-9 years’ . . ., none of those advancements are
reflected in the art or the arguments in the Petition, and the Patent Owner
Response does not demonstrate otherwise.” Id.
Patent Owner does not deny that the references Petitioner relies upon
are prior art. We find that Petitioner has demonstrated that a person of
ordinary skill would have had reason to combine the teachings of Rosenhan
and Kim (Ground 2) and Fromm, Fenton and Bolton (Ground 3) and that
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each of the limitations of claims 29 and 37 is taught by the asserted
combinations of the references. See also Dec. to Inst. 28–29, 31–33.
F. Objective Considerations Raised in the Patent Owner Response
1. Long Felt Need
Patent Owner asserts that Petitioner “over-generalizes the invention
which is made from a new combination and arrangement of known
elements to produce a new and beneficial result that satisfied a long felt
need.” PO Resp. 6 (emphasis in original). According to Patent Owner,
Petitioner “over-generalizes the claimed invention as being related to a
device that holds a camera phone on an end of a stick, and enables a user to
wirelessly control the camera phone with the help of buttons positioned on
the other end of the stick” in a manner that “is unjustified and prima facie
vague.” Id. at 7 (emphasis in original). Without giving any examples or
citing any evidence, Patent Owner contends that mobile phones with camera
functionalities have been known since the late 1990s and “difficulty in
clicking selfies with such camera phones have been a problem ever since,
and much longer as far as clicking self-pictures from a camera.” Id. at 8.
Noting that Petitioner cites references from the 1980s connecting
cameras to telescoping sticks and from the 1990s concerning Bluetooth
operation, Patent Owner’s “over-generalization” argument attempts to
redefine the scope of the invention as “selfie sticks,” stating “all the
ingredients used by the IPR petition to allege the obviousness of the claimed
solution were well known even much before the existence of the problem,
i.e., difficulty in clicking selfies with camera phones.” PO Resp. 8. Patent
Owner argues:
Even with the problem and the ingredients for a solution already
known for a very long time (as alleged in the IPR petition), it
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took almost 15 years for someone to think of this invention. It is
not apparent to the undersigned what took experts (or ordinarily
skilled persons for that matter) so long to arrive at a solution of
this long existing and very common problem, particularly when
the solution is a new combination of known elements which
produced a new and beneficial result that satisfied a long felt
need. This can only be because, at the time of the invention, the
claimed solution was not as obvious as alleged by the IPR
petition, in that, it is not merely a combination of teachings of a
stick, a mounting means, and a wireless control. Thus, the
alleged over-generalization of the claimed solution and
obviousness allegations thereon are unjustified and prima facie
vague.
Id. at 8–9.
Patent Owner further argues commercial factors, stating that it
engineered, designed, tested, and manufactured its HandlePa product,
producing 11,550 units, but, because Patent Owner could not gain a foothold
when cheap, similar products flooded the market, “we continued to focus on
securing the patent rights to the invention at the USPTO.” PO Resp. 3.
According to Patent Owner:
when considering the global commercial success of the modern
selfie sticks, which became common a year or 2 after we began
reducing our invention to practice. It would therefore be clear to
anyone with reasonable thinking that the modern selfie sticks
(modeled after our invention) solved a long felt need for a
solution to a very commonly faced problem.
Id. at 8. Petitioner points out that, although Patent Owner seeks to redefine
“modern selfie sticks” as “modeled after our invention” the evidence of
record offers no evidence to support Patent Owner’s assertions. Pet. Reply
11.
Petitioner argues Patent Owner shows no long felt need for the
following reasons: (1) although the ’627 patent describes using its one-
handle interface in conjunction with an iPhone interface, nowhere does it
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describe taking “selfies,” nor does it describe the invention as a selfie stick
(Pet. Reply 11–12); (2) the iPhone product referenced in the ’627 patent
application, filed in late 2012, did not offer a front facing camera for taking
“selfies” until 2010 (id. at 13 (citing Ex. 1022, 91; Ex. 1047)); (3) in
November 2011, the year after releasing its first iPhone with a front facing
camera, Apple implemented a feature allowing its cameras to be controlled
wirelessly using Bluetooth (id. at 13–15 (citing Ex. 1024, 2)) and, similarly,
a number of other publications predating Patent Owner’s earliest application
date disclosed wireless control in conjunction with a handle or stick for
holding a mobile device or camera (id. citing Pet. 28–30 (discussing
Rosenhan), 35–36 (discussing Kim), and 47–47 (discussing Bolton)); and
(4) Patent Owner’s assertion of long felt need for “selfie” capability
contradicts Patent Owner’s prior testimony that the problem solved by the
claimed invention came about in 2011/2012 when the sizes of smartphones
increased substantially and more and more users began using them for taking
pictures instead of conventional cameras (id. at 15 (quoting Ex. 2001,
Maalouf Decl. ¶ 6)).
2. Commercial Success
Petitioner also argues that Patent Owner demonstrates no commercial
success, notwithstanding its assertions concerning the global success of
modern selfie sticks. See Pet. Reply 16–19. Petitioner notes that Patent
Owner does not identify actual sales of the HandlePa product. Id. at 17.
Petitioner further notes (1) that Patent Owner fails to establish a connection
between himself (or his predecessors in interest) and a YouTube video
attributed to OONO that Patent Owner asserts describes HandlePa as
practicing the claimed invention and (2) that the YouTube video had been
viewed only 88 times (including views by Petitioner’s counsel and
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paralegal) in the period from October 13, 2014, to February 21, 2021. Id. at
16–17 (citing Ex. 1049, Declaration of Arie Pellikaan (“Pellikaan Decl.”)
¶ 3, App. A). Petitioner also notes that Patent Owner provides no
evidentiary support that any of the similar products that allegedly flooded
the market before its patent issued practice any of the claims of the
’627 patent. Id. at 18.
3. Analysis of Objective (Secondary) Considerations
“In order to accord substantial weight to secondary considerations in
an obviousness analysis, the evidence of secondary considerations must have
a nexus to the claims, i.e., there must be a legally and factually sufficient
connection between the evidence and the patented invention.” Fox Factory,
Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (internal
quotations omitted). “[T]here is no nexus unless the evidence presented is
‘reasonably commensurate with the scope of the claims.’” In re Affinity
Labs of Tex., 856 F.3d 883, 901 (citing Rambus Inc. v. Rea, 731 F.3d 1248,
1257 (Fed. Cir. 2013) (quoting In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011)).
Patent Owner’s arguments concerning long felt need and commercial
success are in the context of “selfie-sticks.” Patent Owner’s generalized
arguments about long felt need and accusations concerning commercial
success are not tied to the limitations of the claims. We again turn to the
language of the claims. Notwithstanding Patent Owner’s redefinition of the
problem as “difficulty in clicking selfies with camera phones,” independent
claim 29 does not recite such a limitation. Claim 29 is drawn to a handheld
device to wirelessly operate a camera of a mobile device; the handheld
device includes a handle coupled to a holder that holds the mobile device
during use; the handle includes a command key positioned on the handle for
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one-handed selection by the user to provide, over a wireless connection,
control commands to the mobile phone’s camera feature. As discussed
above, the references cited by Petitioner demonstrate that such devices were
well known before Patent Owner filed the Chinese application that is the
basis of the ’627 patent’s foreign priority claim. Claim 29 does not limit the
camera feature to a “selfie” feature, e.g., a feature that activates the lens to
focus on the photographer. Patent Owner has not established a nexus
between the subject matter of the claims and its long-felt need or
commercial success arguments.
Even if Patent Owner had established such a nexus, the evidence
before us does not establish a long felt need. Patent Owner offers no
evidence concerning the introduction of “selfies.” As Petitioner points out,
there was no need for a selfie stick until the ability to take a selfie came into
existence in 2010, and by 2011, it was known to control the camera
functions using wireless Bluetooth techniques. Pet. Reply 11–14. Both of
these events occurred before Nov. 28, 2012, the filing date of Chinese patent
application to which the ’627 patent claims priority. Ex. 1001 (code 30).
Similarly, Patent Owner’s generalized arguments concerning the
popularity of selfie sticks do not tie the success of any specific product to the
claims of the ’627 patent. To the extent selfie sticks became popular
products, Patent Owner has introduced no evidence that their popularity was
in any way tied to the claims of the ’627 patent, which issued in November
2016.
For the reasons discussed above, we find that Patent Owner has not
demonstrated that the asserted objective indicia of nonobviousness weigh
against our conclusion that the claims would have been obvious.
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G. Other Issues Raised by Patent Owner
1. The Effect on the Economy
Patent Owner contends that the Decision to Institute inter partes
review did not include a “required analysis of economic factors.” PO
Resp. 22 (citing 35 U.S.C. § 316(b). According to Patent Owner,
“instituting trial statistically leads nearly always to cancellation of
challenged claims, after a proceeding that on average costs a patent owner
over $450,000” and “cause[s] Chinese manufacturers not to pay licensing
fees into the United States that they otherwise would be obligated to pay.”
Id. at 21–22. Patent Owner further states “cancellation will likely occur not
because it is inevitably correct, but because Petitioner is able to start an
administrative process with no upside for Patent Owner that Patent Owner
cannot afford to defend to the fullest.” Id. at 22. Patent Owner does not
present evidence or otherwise address the effect on the economy. Id. at
21–23.
The claims of a patent define the scope of the invention and serve to
put the public on notice of the subject matter that is covered by the patent.
For this reason, our analysis focuses on the subject matter recited in the
claims.
Patent claims cannot be a moving target. As discussed above, Patent
Owner has attempted to redefine the invention to include features not found
in the claims. One example is Patent Owner’s argument that remote control
means some kind of non-fixed or loose operation, although the claims recite
the mobile device is held on the holder attached to the handle when in use.
Another example is Patent Owner’s attempt to redefine the invention as a
selfie stick, although that feature is not recited in the claims. The U.S.
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patent statutes do not authorize us to extend patent protection to features that
are not recited in the claims.
Each case that comes before us is an individual matter, decided solely
on its merits. The scope of our review is the patentability of the claims, as it
is the claims that set forth the limits of the patent grant. See Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). To the extent that
other avenues exist to protect Patent Owner’s products or unpatentable
technology, such matters are beyond our purview. As discussed above, the
claims in this case recite subject matter that is not entitled to patent
protection. We do not have the authority to waive the statutory
requirements.
2. Expert Testimony
Patent Owner asserts that, based on his own experience, he can
provide “an equally persuasive ‘expert’ argument for non-obviousness.” PO
Resp. 9–10. Patent Owner fails to recognize that, although we can consider
Patent Owner’s views, as an interested party, Patent Owner’s “expert
opinion” is of less probative value than if it were from a neutral party.
3. The Qualifications of the Panel and Other Cases
Patent Owner’s arguments against the integrity and competency of the
individual members of the panel and his suggestion that he will not receive a
fair hearing (PO Resp. 13–14, 23) are not germane to the merits of this case,
and we decline to address them further.
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Patent Owner’s assertions concerning other cases, including Apple v.
Iancu4 and Arthrex5 are not germane to the matters at issue in this Decision,
and we do not address them further.
4. Discretion under Section 325(d)
Patent Owner repeats arguments from the Preliminary Response
urging the exercise of discretion to deny institution because the Office had
considered the same or substantially the same prior art previously. PO Resp.
11–12. We fully addressed this issue in the Decision to Institute and
declined to exercise discretion to deny institution. Dec. to Inst. 18–19. At
this stage of the proceeding, the issue is moot.
VII. CONCLUSION6
Having considered the evidence and arguments of record, we
conclude that Petitioner has demonstrated by a preponderance of the
evidence that challenged claims 29 and 37 are unpatentable. In particular,
Petitioner has demonstrated by a preponderance of the evidence that claim
29 is unpatentable under 35 U.S.C. § 103 over Rosenhan, that claim 37 is

4 Case No. 5:20-CV-06128-(N.D. Ca).
5 In addition, we do not reach Patent Owner’s Appointments Clause
challenge because the Supreme Court has resolved the issue. See United
States. v. Arthrex, 141 S. Ct. 1970, 1986–87, 1997 (2021)..
6 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2020-00483
Patent 9,503,627 B2
38
unpatentable over Rosenhan and Kim, and that claims 29 and 37 are
unpatentable under 35 U.S.C. § 103 over Fromm, Fenton, and Bolton.
In summary:

VIII. ORDER
In consideration of the above it is:
ORDERED that claims 29 and 37 are unpatentable; and
FURTHER ORDERED that that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.
Claims 35 U.S.C. § Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
29 103 Rosenhan 29
37 103 Rosenhan,
Kim
37
29, 37 103 Fromm,
Fenton, Bolton
29, 37

Overall
Outcome
29, 37
IPR2020-00483
Patent 9,503,627 B2
39
FOR PETITIONER:

Derrick Toddy
Andrew Mason
John Vandenberg
KLARQUIST SPARKMAN, LLP
derrick.toddy@klarquist.com
andrew.mason@klarquist.com
john.vandenberg@klarquist.com

FOR PATENT OWNER:

Ramzi K. Maalouf
ram@omegaus.com