PTAB

IPR2016-00106

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 ’931 patent discloses a radiotelephone with one or more contact-sensitive strips for user input. The technology is presented as an improvement over prior art input systems like keys or mechanical wheels, offering a thin profile and greater reliability by eliminating moving parts for functions like scrolling.

3. Grounds for Unpatentability

Ground 1: Obviousness over Iwata and Lee - Claims 1, 3-5, 30, 33, 46, 58, 63, 64, 66, 67 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 limitations of the challenged claims, including a mobile telephone with a touchscreen on its front surface. Iwata’s device operated in two modes: an "information terminal mode" where the touchscreen was active, and a "telephone mode" (with a cover closed) where the touchscreen entered a "sleeping status" and was unresponsive to prevent unintended activation. Petitioner contended that while Iwata taught input via pen or finger contact, it did not explicitly detail scrolling via a moving "swipe" gesture. Lee was introduced to supply this missing element, as it disclosed a touch-based portable computing device that utilized various gestures, including a traditional swipe-to-scroll function.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Iwata and Lee for several reasons. First, it would improve usability by providing the ability to operate the device via well-known gestures. Second, it would simplify operations for users, allowing them to focus on other issues while using the device. Third, it represented the mere application of a known technique (swipe-to-scroll from Lee) to a known device (the Iwata touchscreen phone) to achieve predictable results.
    • Expectation of Success: A POSITA would have recognized that applying Lee's swipe-to-scroll functionality to Iwata's touchscreen device would predictably enhance user interaction without altering the fundamental operation of Iwata's device.

Ground 2: Obviousness over Iwata, Lee, and Bomer - Claims 7 and 10 are obvious over Iwata in view of Lee and Bomer.

  • Prior Art Relied Upon: Iwata (Patent 6,009,338), Lee (Patent 5,347,477), and Bomer (Patent 6,496,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Iwata and Lee to address dependent claims requiring the identification of a graphical object based on the position of contact. Petitioner argued that Bomer taught the incremental feature of a cursor controlled by a touch-pad or other touch-type device. In Bomer, manipulating the cursor could highlight and/or scroll through selections, thereby identifying a graphical object based on contact position and providing visual feedback.
    • Motivation to Combine: A POSITA would have been motivated to add Bomer's cursor control to the Iwata/Lee device for the predictable purpose of providing visible feedback to the user during scrolling and selection. This addition would fulfill the known need for a user interface that could be manipulated by a single finger for both cursor positioning and selection, and it would be a straightforward application of a conventional feature to an existing design to yield predictable improvements in usability.

Ground 3: Obviousness over Iwata, Lee, and Silva - Claims 15, 37, and 41 are obvious over Iwata in view of Lee and Silva.

  • Prior Art Relied Upon: Iwata (Patent 6,009,338), Lee (Patent 5,347,477), and Silva (Patent 5,996,080).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims requiring the contact-sensitive surface to be engaged by the thumb of the hand holding the device, as well as claims specifying the transducer type (e.g., resistive, capacitive). Petitioner asserted that Silva disclosed a portable data collection terminal with a touchscreen where the "thumb of the user naturally falls" on the display when the device is held. Silva also explicitly disclosed that its touchscreen could be a resistive or capacitive transducer, both of which were well-known in the art.
    • Motivation to Combine: Petitioner argued a POSITA would integrate Silva's teachings for reasons of conventional design and ergonomics. Using the thumb of the holding hand is a natural and common way to interact with a mobile device, so modifying Iwata's device for such use would have been an obvious design choice. Similarly, selecting a specific transducer type like resistive or capacitive from the known options disclosed by Silva would have been a matter of routine implementation based on desired performance characteristics.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 11 based on the combination of Iwata, Lee, Bomer, and Agulnick (Patent 5,347,295). Agulnick was introduced to teach detecting a "momentary contact" or tap gesture to initiate an action, arguing this was a common and convenient input method that a POSITA would have been motivated to add.

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 specification, which describes the controller 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 description of using the transducer to "selectively display" graphical objects on the display "based on contact" with the transducer.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-5, 7, 10, 11, 15, 30, 33, 37, 41, 46, 58, 63, 64, 66, and 67 as unpatentable.