Apple Inc v. OpenTV Inc

1. Case Identification

• Case #: IPR2015-00980
• Patent #: 5,566,287
• Filed: March 31, 2015
• Petitioner(s): Apple Inc.
• Patent Owner(s): OpenTV, Inc.
• Challenged Claims: 1, 5, 7, and 16

2. Patent Overview

• Title: Asynchronous Maintenance of Graphical Objects on a Display
• Brief Description: The ’287 patent relates to a method for asynchronously managing graphics on a display device. The method separates the act of changing a graphical object's attribute from the act of redrawing the screen, placing the screen update process under the control of the application program to optimize perceived system response.

3. Grounds for Unpatentability

Ground 1: Obviousness over Garnet Publications - Claims 1, 5, 7, and 16 are obvious over Kosbie or Garnet Source Code in combination with Garnet Manual or Garnet IEEE.

• Prior Art Relied Upon: Kosbie (a 1990 academic paper), Garnet Source Code (publicly available source code, 1991), Garnet Manual (a 1989 reference manual), and Garnet IEEE (a 1990 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Garnet system, a well-documented university project for building graphical user interfaces, taught all elements of the challenged claims. The Garnet system utilized a "Programmer-Selected Update" model where an application changes an object's properties (e.g., position or color), which corresponds to the claimed "drawing request." This action adds the object to an "Invalid-Objects list." At a later time determined by the programmer, an "Update" routine is called, corresponding to the claimed "image update request." This routine determines "clipping regions" (drawing areas) from the bounding boxes of the objects on the list, retrieves these entries, and redraws the invalid objects and any other objects they intersect.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of the various Garnet publications because they all describe the same system, share common authors, and were intended to be a cohesive set of documentation. A POSITA would naturally consult all available documentation to understand the complete functionality of the Garnet system.
  • Expectation of Success: A POSITA would have a high expectation of success in implementing the claimed method using the Garnet system, as the references collectively provide a complete and operational framework for asynchronous, application-controlled screen updates.

Ground 2: Anticipation by InterViews Publications - Claims 1, 5, 7, and 16 are anticipated by Vlissides, IV Source Code, or Linton.

• Prior Art Relied Upon: Vlissides (a 1988 USENIX conference paper), IV Source Code (InterViews Source Code Version 3.1, 1992), and Linton (a 1990 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the InterViews system, a software package developed at Stanford University, anticipated every limitation of the challenged claims. The system employed a "damage" class for incremental updates. An application program signals a change by calling an "Incur" operation on a graphic object, which serves as a "drawing request." This operation determines the object's bounding box (a rectangular "drawing area") and adds it to a list of damaged areas. At a later time, the application calls an "Update" or "Repair" function (an "image update request"), which retrieves the damaged areas from the list and redraws them by calling a "DrawClipped" function on all objects that intersect the damaged areas. This process directly maps to the method steps of claim 1. Dependent claims 5, 7, and 16 were also allegedly disclosed, as InterViews explicitly taught using rectangular drawing areas and handling object moves.

Ground 3: Obviousness over Garnet and InterViews Publications - Claims 1, 5, 7, and 16 are obvious over the combination of the Garnet and InterViews publications.

• Prior Art Relied Upon: A combination of the Garnet publications (Kosbie, Garnet Source Code, etc.) and the InterViews publications (Vlissides, Linton, etc.).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that to the extent the Garnet system's "Invalid-Objects list" was not considered a "list of...drawing areas," it would have been obvious to modify Garnet based on the explicit teachings of InterViews. InterViews clearly disclosed maintaining a list of rectangular damage areas, not just objects. A POSITA would have found it a simple design choice to adopt InterViews' area-storage method within the broader display management system of Garnet.
  • Motivation to Combine: A POSITA would combine the teachings of Garnet and InterViews because they were contemporaneous systems developed in similar academic environments to solve the exact same problem: efficient, object-oriented graphics updates. Furthermore, the Garnet IEEE article explicitly cited a key InterViews paper, directly motivating a POSITA to look to and combine the teachings of the InterViews system with Garnet.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these systems, as both were proven, functional toolkits. Integrating the area-list management from InterViews into Garnet's update algorithm would have been a predictable implementation detail.

4. Key Claim Construction Positions

• "drawing request" (claim 1): Petitioner argued this term, which does not appear in the specification, should be construed as "notification that an attribute of a graphical object has changed." This construction was based on Figure 1 of the patent, described as illustrating the "present invention," where the first step (box 302) is "Change Graphic Attribute," which triggers the subsequent processing by the display manager.
• "image update request" (claim 1): Petitioner argued this term, also absent from the specification, should be construed as "instruction to initiate a screen redraw." This aligns with the patent's goal of separating the attribute change from the redraw and is supported by Figure 1, where the application later performs a separate "Issue Update Request" (box 304) to trigger the screen redraw.

5. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1, 5, 7, and 16 of Patent 5,566,287 as unpatentable.