PTAB

IPR2015-01905

Apple Inc v. Ericsson Inc

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1. Case Identification

2. Patent Overview

  • Title: Radiotelephones Having Contact-Sensitive User Interfaces and Methods of Operating Same
  • Brief Description: The ’059 patent discloses a radiotelephone with one or more contact-sensitive transducers, described as elongate "touch strips" mounted on the device housing separate from the display. These strips are intended to receive user input, such as for scrolling, without consuming space on the device's front surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Iwata and Lee - Claims 1-4 and 10 are obvious over Iwata in view of Lee.

  • Prior Art Relied Upon: Iwata (Patent 6,009,338) and Lee (Patent 5,347,477).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Iwata disclosed the core features of independent claim 1, including a mobile phone with a housing, transceiver, and a contact-sensitive touchscreen display. Iwata’s device operated in two modes: a first "information terminal mode" where touch input is accepted, and a second "telephone mode" where the touchscreen is in a "sleeping status" and unresponsive to touch. To the extent Iwata did not explicitly teach scrolling rows of text in response to a moving contact (a swipe), Lee was cited. Lee taught a touch-based mobile computing device where swipe gestures ("flicks") were used to scroll text on the screen.
    • Motivation to Combine: A POSITA would combine Lee’s well-known swipe-to-scroll functionality with Iwata’s touchscreen phone to improve usability. Adding gesture-based controls was a known technique to simplify operations and provide users with more intuitive input methods. This combination represented the application of a known technique to a similar device to achieve predictable results.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in implementing gesture-based scrolling on a touchscreen device, as both references involved portable computing devices with touch interfaces.

Ground 2: Obviousness over Iwata, Lee, and Agulnick - Claims 5-9 are obvious over Iwata in view of Lee and Agulnick.

  • Prior Art Relied Upon: Iwata (Patent 6,009,338), Lee (Patent 5,347,477), and Agulnick (Patent 5,347,295).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Iwata and Lee. Petitioner asserted that for the limitations of dependent claims 5-9, which required detecting single-tap, double-tap, and multi-tap operations on an icon, Agulnick provided the missing teachings. While Iwata disclosed selecting on-screen "buttons and icons" by touching them, Agulnick explicitly taught a touchscreen system utilizing a variety of "gestural commands," including single taps for selection, double taps for selecting a word, and triple taps for selecting a sentence.
    • Motivation to Combine: A POSITA would be motivated to incorporate Agulnick's specific tap gestures into the Iwata/Lee device to provide users with a richer, more efficient set of selection options. Agulnick taught that its tap commands were "quick and convenient" and complementary to the "visible controls" (like icons) already present in Iwata. Adding these known tap detection techniques to a touchscreen device was a predictable design choice.
    • Expectation of Success: The combination was asserted to be predictable because implementing various tap-based commands on a touchscreen interface was a common practice in the art.

Ground 3: Obviousness over Iwata and Keen - Claims 11, 14, and 17 are obvious over Iwata in view of Keen.

  • Prior Art Relied Upon: Iwata (Patent 6,009,338) and Keen (Patent 5,526,422).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed method claims. Petitioner argued Iwata disclosed the elements of a first operational mode, where the device displays icons and takes action in response to touch. For the claimed second mode, where contact is detected but "no action" is taken, Petitioner cited Keen. Keen taught a touchscreen telephone with a "clean screen" mode, which a user could activate to clean the display. In this mode, the controller ignored all signals from the touch screen module—preventing inadvertent function activation—while the display itself remained powered on.
    • Motivation to Combine: A POSITA would combine Keen’s "clean screen" mode with Iwata’s touchscreen phone to solve the known problem of dirt and oil accumulation on displays, which could cause unwanted inputs during cleaning. Adding a mode to temporarily disable touch input while keeping the screen visible was an obvious improvement for maintaining the device.
    • Expectation of Success: Implementing a touch-input-disable mode on a touchscreen telephone was a straightforward application of a known solution to a known problem, yielding predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 12 and 15 are obvious over Iwata, Keen, and Lee, and that claims 13 and 16 are obvious over Iwata, Keen, and Agulnick. These grounds applied the scrolling and tapping functionalities of Lee and Agulnick, respectively, to the method claims established by the Iwata and Keen combination.

4. Key Claim Construction Positions

  • "image" (claim 1): Petitioner proposed this term be construed as a "graphical object, including but not limited to alphanumeric characters." This construction was argued to be consistent with the ’059 patent’s specification, which describes displaying "an image, e.g., a graphical object such as a row of alphanumeric characters."
  • "selectively display" (claim 3): Petitioner proposed this term be construed as "display in response to a selection." This interpretation was based on the specification’s disclosure that a transducer may be used to "selectively display" objects on the display "based on contact of an object."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-17 of the ’059 patent as unpatentable.