PTAB

IPR2018-00394

APPLE INC. v. Uniloc Luxembourg S.A.

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1. Case Identification

  • Patent #: 6,622,018
  • Filed: December 22, 2017
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): Uniloc Luxembourg, S.A.
  • Challenged Claims: 1-27

2. Patent Overview

  • Title: Method and System for Controlling a Plurality of Devices
  • Brief Description: The ’018 patent is directed to a portable computer system, such as a PDA or palmtop computer, for controlling remote devices over a wireless connection. The system discovers controllable devices by transmitting a broadcast message and receiving responses, then manifests the discovered devices on its display for user control.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 9-10 are obvious over Ben-Ze'ev in view of the Idiot's Guide.

  • Prior Art Relied Upon: Ben-Ze'ev (Patent 6,791,467) and the Idiot's Guide (The Complete Idiot's Guide to PalmPilot and Palm III (1999)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ben-Ze'ev teaches the core method of independent claim 1: an adaptive remote controller, implemented on a PDA, that uses a wireless transceiver to broadcast an interrogation signal to discover nearby appliances. Upon receiving responses, Ben-Ze'ev’s controller displays icons for the discovered devices, which a user can select to issue control commands. Petitioner asserted that the Idiot's Guide, which describes the well-known PalmPilot PDA, supplies the remaining limitations by teaching an "input device" (the "Graffiti Writing Area") where the position and movement of a stylus are registered and translated into specific commands.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because Ben-Ze'ev explicitly teaches that its controller can be part of a PDA like a 3Com PalmPilot. A POSITA implementing Ben-Ze'ev's system on a PalmPilot would naturally look to the standard features of that device, as described in the Idiot's Guide, including the Graffiti writing area for user input. Adding this known, efficient input method to Ben-Ze’ev’s system would have been an obvious design choice to provide an alternative, faster way to enter commands.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the Idiot's Guide demonstrates that using the Graffiti writing area to issue commands on a PalmPilot was already a well-established and functional technology.

Ground 2: Claim 8 is obvious over Ben-Ze'ev in view of the Idiot's Guide and Dara-Abrams.

  • Prior Art Relied Upon: Ben-Ze'ev (Patent 6,791,467), the Idiot's Guide (The Complete Idiot's Guide to PalmPilot and Palm III (1999)), and Dara-Abrams (Patent 6,456,892).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Ben-Ze'ev and the Idiot's Guide to address claim 8, which adds the limitation of "imparting motion to said rendering in response to movement of a stylus." Petitioner argued that while Ben-Ze'ev discloses displaying renderings of controls (e.g., virtual keys), Dara-Abrams explicitly teaches a universal remote GUI on a PDA that includes interactive, animated control elements like sliders and dials that are "user-modifiable" and respond to user input. Dara-Abrams describes a user "moving a dial" on the GUI to control a device.
    • Motivation to Combine: A POSITA would combine Dara-Abrams with Ben-Ze'ev to improve the user-friendliness and sophistication of Ben-Ze'ev's interface. Since both references address adaptable GUIs for universal remotes on PDAs, a POSITA seeking to enhance Ben-Ze’ev’s system would have been motivated to incorporate the well-known animated controls from Dara-Abrams to provide a more intuitive and feature-rich user experience.
    • Expectation of Success: Success would be expected because Dara-Abrams already taught the implementation of such interactive GUI elements on a PDA, making their integration into another PDA-based remote control system predictable.

Ground 3: Claims 11-17, 19-25, and 27 are obvious over Ben-Ze'ev in view of the Idiot's Guide and Osterhout.

  • Prior Art Relied Upon: Ben-Ze'ev (Patent 6,791,467), the Idiot's Guide (The Complete Idiot's Guide to PalmPilot and Palm III (1999)), and Osterhout (Patent 7,149,506).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed system claims (starting with claim 11) that recite a specific hardware architecture, including a bus to which a processor, transceiver, display device, and input device are coupled. Petitioner contended that while Ben-Ze'ev teaches a PDA-based system with these components, it does not explicitly detail their interconnection. Osterhout, which describes the internal structure of a typical PDA (a Palm VII), was argued to supply this missing detail by disclosing a standard architecture where a processor, transceiver, display (screen), and input device (pen-type input) are all connected via a bus.
    • Motivation to Combine: A POSITA tasked with building the PDA-based remote controller of Ben-Ze'ev would have been motivated to consult a reference like Osterhout for the conventional internal structure of such a device. Because Ben-Ze'ev suggests using a PalmPilot, it would have been obvious to implement it using the known, standard bus architecture for Palm-type devices as taught by Osterhout. This combination represents merely applying a known hardware configuration to implement Ben-Ze'ev's conceptual system.
    • Expectation of Success: A POSITA would have expected success because Osterhout describes a conventional, proven hardware layout for the very type of device Ben-Ze'ev proposes using, ensuring a predictable and functional result.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 18 and 26 based on the combination of Ben-Ze'ev, the Idiot's Guide, Osterhout, and Dara-Abrams, which relied on the collective teachings of the prior art references detailed in the grounds above.

4. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-27 of the ’018 patent as unpatentable under 35 U.S.C. §103.