Parrot SA v. Drone Technologies Inc

1. Case Identification

• Case #: IPR2014-00730
• Patent #: 7,584,071
• Filed: May 6, 2014
• Petitioner(s): Parrot S.A. and Parrot, Inc.
• Patent Owner(s): Drone Technologies, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Remote-Controlled Motion Apparatus With Sensing Terrestrial Magnetism And Remote Control Apparatus Therefor
• Brief Description: The ’071 patent describes a system for controlling a remote vehicle, such as a hobby airplane, by tracking the physical movement of a handheld remote controller. Both the controller and the vehicle are equipped with magnetometers to sense their respective motion and orientation relative to the Earth's magnetic field, allowing the vehicle to mimic the controller's movements.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5 and 10-14 by Smith

• Prior Art Relied Upon: Smith (Patent 5,043,646).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smith, which was not considered during prosecution, discloses every element of the challenged claims. Smith teaches a remote control system for a hobby vehicle where both the handheld transmitter and the vehicle include magnetometers ("flux gate compasses") to sense their orientation. The transmitter sends a wireless signal corresponding to its orientation to the vehicle, which then processes this signal along with its own orientation data to control its movement. Petitioner asserted that limitations in dependent claims 2 and 4 ("comparison" and "difference of motion") are inherently disclosed, as determining the smallest angle of rotation to reach a target orientation necessarily requires comparing current and target orientations and calculating the difference. The conversion to a "baseband signal" (claim 10) was argued as an inherent feature of any functional radio communication system.

Ground 2: Anticipation of Claims 1-3, 5, and 10-13 by Potiron

• Prior Art Relied Upon: Potiron (French Patent No. 2,789,765).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Potiron, also not considered during prosecution, anticipates the core invention. Potiron describes a system for remotely controlling a vehicle, such as a rescue boat, using a handheld controller. Both the controller and the vehicle have magnetic compasses to determine their orientation relative to magnetic north. The controller transmits its orientation angle to the vehicle, which then uses a processor to compare the received angle with its own current orientation to calculate a new course. As with the Smith reference, Petitioner argued that the "comparison" (claim 2) and baseband signal conversion (claim 10) are inherent functionalities of the disclosed system.

Ground 3: Obviousness of Claim 15 over Smith in view of Spirov, Bathiche, and/or Shkolnikov

• Prior Art Relied Upon: Smith (Patent 5,043,646), Spirov (Application # 2006/0144994), Bathiche (Patent 7,145,551), and Shkolnikov (Application # 2004/0263479).

• Core Argument for this Ground:

  • Prior Art Mapping: Claim 15 adds a "configuration switch module" to the system of claim 14 (which adds a manual input module like a joystick) to allow a user to select between motion-based control, manual control, or a combination. Smith already taught the combination of motion sensing (magnetometer) and manual input (joystick) in a single controller. Spirov, Bathiche, and Shkolnikov were cited as evidence that providing multiple control modes and a switch to select between them was a well-known and desirable design choice for remote control devices at the time.
  • Motivation to Combine: A POSITA would combine a mode-selection switch with Smith’s system for the predictable purpose of enhancing user experience and control versatility. Providing users the option to switch between motion control and traditional joystick control was a common and obvious improvement for such devices.
  • Expectation of Success: Combining a standard electronic switch into the known circuitry of a remote controller like Smith's was a routine design task with a high expectation of success, as it involved integrating conventional components for their intended functions.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on Smith and Potiron. These grounds primarily adapted the base systems for specific vehicle types by combining them with prior art teaching airplane controls (Barr, Patent 7,219,861) or helicopter controls (Fouche, Patent 6,751,529), arguing these were obvious applications of the core technology explicitly suggested by the primary references.

4. Key Claim Construction Positions

• "difference of motion" (claim 4): Petitioner argued this term is vague but, under the broadest reasonable interpretation, should be construed as "calculations related to motion that causes a change in orientation." Petitioner contended that interpreting this to require calculating velocity from a magnetometer signal would claim an impossibility, as magnetometers alone cannot determine velocity. This construction supports the argument that the limitation is inherently met by prior art systems that calculate the difference between a current and target orientation.
• "information of the remote controller's motion in the 3D space" (claim 13): Petitioner proposed this be interpreted as any motion in 3D space, not necessarily motion along all possible axes. An alternative, narrower construction requiring detection of all possible 3D motion would, according to Petitioner, render the claim invalid as impossible to achieve with the magnetometer-only system described in the ’071 patent.

5. Key Technical Contentions (Beyond Claim Construction)

• Technical Infeasibility of the Patented System: A central theme of the petition was that a control system relying solely on magnetometers, as described in the ’071 patent, is technically incapable of providing the full three-dimensional motion control necessary to fly an aircraft. Petitioner argued that magnetometers can be used to determine orientation but cannot detect certain movements, such as translation along axes or rotation around a magnetic field line, leading to ambiguities and an unworkable system without undisclosed supplemental technology (e.g., accelerometers). This contention was used to argue that the patent fails to teach what it claims and that the prior art discloses everything that is actually workable in the claimed invention.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-15 of the ’071 patent as unpatentable under 35 U.S.C. §102 and §103.