PTAB

IPR2016-00107

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 relates to a mobile radiotelephone featuring one or more contact-sensitive transducers, such as elongate strips, that are distinct from the device's display. These transducers are used to receive user input for functions like scrolling through displayed text.

3. Grounds for Unpatentability

Ground 1: Obviousness over Oga and Agulnick - Claims 1, 3-5, 7, 10-11, 15, 30, 33, 41, 46, 58, 63-64, and 66-67 are obvious over Oga in view of Agulnick.

  • Prior Art Relied Upon: Oga (Japanese Pat. Pub. No. H09-18566) and Agulnick (Patent 5,347,295).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Oga disclosed the foundational elements of a mobile radiotelephone, including a housing, a display, a transceiver, and a controller managing a touchscreen. Oga’s device operated in two modes: a first mode responsive to touch and a second, user-activated mode where touch input is disabled to prevent inadvertent contact. Petitioner asserted that Oga, however, did not explicitly teach scrolling displayed rows of text in response to a moving contact. This limitation was supplied by Agulnick, which taught implementing scrolling on portable computing devices through user actions like dragging a slider or performing "flick" gestures on a touch-sensitive surface. The combination of Oga's base device and Agulnick's scrolling and gesture-based command functionality was argued to render the challenged claims obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Agulnick’s well-known scrolling features with Oga’s device to solve a known problem: displaying information that exceeds the available screen space. This would be a particularly beneficial and predictable improvement for Oga’s disclosed text-based applications, such as its "memo function" and "SMS" messaging. Agulnick itself explained that scrolling is useful "when the information to be displayed cannot be shown in the space available." Implementing gesture-based scrolling would offer a more convenient user experience than tapping small buttons, representing a simple and obvious design improvement.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying a known user interface technique (touch-based scrolling) to a known type of device (a mobile phone with a touchscreen) to achieve a predictable result without altering the fundamental operation of either system.

Ground 2: Obviousness over Oga, Agulnick, and Silva - Claim 37 is obvious over Oga in view of Agulnick and Silva.

  • Prior Art Relied Upon: Oga, Agulnick, and Silva (Patent 5,996,080).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed dependent claim 37, which adds the limitation that the contact-sensitive transducer can be engaged by the thumb of the hand holding the device. Petitioner argued that the Oga and Agulnick combination taught the elements of base claim 30, upon which claim 37 depends. The additional limitation was supplied by Silva, which disclosed a handheld portable data terminal with a touchscreen ergonomically designed such that the "thumb of the user naturally falls" on the display. Silva explicitly taught one-handed operation where the user holds the device and interacts with the screen using the thumb of the same hand.
    • Motivation to Combine: A POSITA would combine Silva's ergonomic teachings with the Oga/Agulnick device as a matter of conventional design choice for handheld electronics. Optimizing a device for one-handed thumb operation was a common goal to enhance usability and convenience. Since Oga’s device was a handheld mobile phone, modifying it to be easily operated by the thumb of the holding hand would have been a natural and obvious step to improve its design.
    • Expectation of Success: Incorporating ergonomic principles for thumb-based interaction into a handheld touchscreen device was a well-understood practice. A POSITA would have expected this modification to work as intended, leading to a more user-friendly device with predictable results.

4. Key Claim Construction Positions

  • "image": Petitioner proposed construing this term as a "graphical object, including but not limited to alphanumeric characters." This construction was argued to be consistent with the ’931 patent’s specification, which provides an example of an image as "a row of alphanumeric characters." This interpretation supports the argument that scrolling rows of text, as taught by the prior art, meets the claim limitation of scrolling an "image."
  • "selectively display": Petitioner proposed construing this term as "display in response to a selection." This construction was based on language in the specification describing how the transducer can be used to selectively display graphical objects based on user contact. This interpretation was central to mapping the prior art's teachings of user-initiated scrolling and selection onto the corresponding claim limitations.

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, and 66-67 of the ’931 patent as unpatentable.