PTAB

IPR2015-01674

TCT Mobile US Inc v. Telefonaktiebolaget LM Ericsson

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Radiotelephone with a Contact-Sensitive Transducer
  • Brief Description: The ’931 patent discloses a mobile radiotelephone with a contact-sensitive transducer, such as a touch-sensitive strip, used to control graphical user interface (GUI) functions. The technology enables user input, including scrolling through lists and selecting items, by detecting moving contact on the transducer's surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Palatsi in view of Moore - Claims 1-11 and 15 are obvious over Palatsi in view of Moore.

  • Prior Art Relied Upon: Palatsi (Patent 5,892,475) and Moore (Patent 4,566,001).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Palatsi taught a portable telephone with nearly all claimed features, including a housing, display, transceiver, and a controller for a "scroll-and-select menu system" operated by push-button soft keys. Moore disclosed an interactive display terminal with contact-sensitive touch strips flanking the screen, which produced an output signal based on the position of a touch. Moore explicitly taught using these strips for scrolling via a stroking motion and for selection via a pressing motion. Petitioner asserted that the combination of Palatsi and Moore disclosed every limitation of independent claim 1, including a contact-sensitive transducer (Moore's touch strips) on the front surface that produces an output signal in response to moving contact to scroll displayed rows. Dependent claims were allegedly obvious as the combination also taught confronting the transducer with a thumb (claim 2), selectively displaying images and graphical objects like rows of text (claims 3-5), highlighting selected items (claim 8), and detecting momentary contact for selection (claim 11). Moore also explicitly disclosed resistive transducers (claim 15).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Palatsi and Moore to improve Palatsi's user interface. Replacing Palatsi's push-type keys with Moore's touch strips was presented as a predictable design choice to provide a more intuitive method for scrolling, increase functionality, and reduce the consumption of space on the small device, a need identified in Palatsi. Palatsi itself contemplated using "touch sensors" instead of keys, providing a clear suggestion for the modification.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved substituting one known user input device (push-buttons) with another known input device (touch strips) to perform their well-understood functions of scrolling and selection.

Ground 2: Obviousness over Palatsi in view of Moore and Tiilikainen - Claim 12 is obvious over Palatsi in view of Moore and Tiilikainen.

  • Prior Art Relied Upon: Palatsi (Patent 5,892,475), Moore (Patent 4,566,001), and Tiilikainen (European Patent No. EP0721272A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Palatsi and Moore from Ground 1 to address the additional limitation of claim 12: initiating an action in response to detecting a "plurality of momentary contacts occurring within a predetermined time interval" (i.e., a double-tap). While Palatsi/Moore taught single momentary contact for selection, Tiilikainen, a Nokia patent concerning a mobile phone GUI, explicitly disclosed that a selection "can be thought of as being activated by double-pressing, i.e. pressing the required column quickly two subsequent times."
    • Motivation to Combine: Petitioner argued that a POSITA seeking to further enhance the user-friendliness of the Palatsi/Moore device would have looked to other known input methods like the double-tap taught by Tiilikainen. Both Palatsi and Tiilikainen were Nokia patents directed at improving mobile phone interfaces in the same era, making Tiilikainen a natural source for a POSITA to consult. Adding a double-tap function was argued to be an obvious way to implement an additional command without adding more physical buttons, consistent with the goal of device simplification.
    • Expectation of Success: Implementing a known double-tap input method from Tiilikainen into the controller logic of the proposed Palatsi/Moore device would have been a straightforward programming task for a POSITA with a high expectation of success.

4. Key Claim Construction Positions

  • "contact-sensitive transducer...which produces an output signal": Petitioner proposed this term be construed as "a device that converts physical contact of an object with the device to an electrical signal." This construction was central to mapping Moore's touch strips, which convert physical touch position into a voltage, onto the claim language.
  • "graphical object(s)": Petitioner proposed this term be construed as "visual element(s) including image(s) and/or row(s) of alphanumeric characters." This construction was used to argue that the text-based menu items displayed in Palatsi (e.g., "Lights," "Messages") met the claim limitation for displaying and selecting graphical objects.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the grounds presented were not redundant to those in other IPR petitions filed against the ’931 patent. Those other petitions relied on a reference (Iwata) that disclosed a full touchscreen display. In contrast, this petition relied on Palatsi and Moore to disclose a "contact-sensitive transducer" embodied as a touch-sensitive strip separate from the display. Petitioner contended this addressed a different, narrower interpretation of the claims consistent with the patent's original specification, thus presenting distinct unpatentability questions.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12 and 15 of Patent RE43,931 as unpatentable.