PTAB

IPR2018-00394

Apple Inc v. Uniloc Luxembourg SA

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1. Case Identification

2. Patent Overview

  • Title: Controlling Remote Devices with a Portable Computer System
  • Brief Description: The ’018 patent describes a method and system for controlling multiple remote consumer devices using a portable computer, such as a PDA or palmtop computer. The system uses a wireless broadcast message to discover nearby devices, which are then represented by icons on the computer's display for user selection and control.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ben-Ze'ev and Idiot's Guide - Claims 1-7 and 9-10

  • Prior Art Relied Upon: Ben-Ze'ev (Patent 6,791,467) and The Complete Idiot's Guide to PalmPilot and Palm III (“Idiot’s Guide”) (a 1999 publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ben-Ze’ev discloses the core limitations of independent claim 1, including an adaptive remote controller (implemented on a PDA) that uses a wireless, two-way communication protocol like Bluetooth to discover and control appliances. Ben-Ze'ev's controller broadcasts an "interrogation signal," receives responses, and manifests discovered appliances as selectable icons on its display. To the extent Ben-Ze'ev did not explicitly disclose using a separate input device (distinct from the touchscreen), the Idiot's Guide taught this feature. The Idiot's Guide described the standard functionality of a PalmPilot, including a "Graffiti Writing Area" input device where a stylus makes contact to register commands based on the position and movement of the stylus.
    • Motivation to Combine: A POSITA would combine these references because Ben-Ze'ev explicitly taught that its adaptive remote controller could be part of a PDA like a 3Com PalmPilot. This would have directly led a POSITA to consider the standard and well-known features of a PalmPilot, as detailed in the Idiot's Guide, including its Graffiti input area, to implement or improve upon Ben-Ze'ev's controller.
    • Expectation of Success: A POSITA would have a high expectation of success, as the proposed combination involved integrating known features of a specific, named commercial product (PalmPilot) into a system designed for that very platform. The use of the Graffiti area for command input was already established functionality, as evidenced by pre-existing software like "PalmRemote" which allowed users to control devices with Graffiti commands.

Ground 2: Obviousness over Ben-Ze'ev, Idiot's Guide, and Dara-Abrams - Claim 8

  • Prior Art Relied Upon: Ben-Ze'ev (Patent 6,791,467), Idiot’s Guide (a 1999 publication), 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 required "imparting motion to said rendering in response to movement of a stylus element." While Ben-Ze'ev disclosed displaying static "virtual keys," Dara-Abrams taught a universal remote control GUI with interactive and animated control elements, such as sliders, dials, and toggles, that respond to user input. Dara-Abrams specified that a user could interact with these elements by, for example, "moving a dial" on a PDA using a stylus and an electronic pad.
    • Motivation to Combine: A POSITA seeking to improve the user interface of Ben-Ze'ev's controller would have been motivated to incorporate the animated GUI elements taught by Dara-Abrams. Both references addressed the same technical problem of creating flexible GUIs for universal remote controls on PDAs. Adding animated controls would advance Ben-Ze'ev's stated goal of providing a "much more user-friendly" remote controller capable of handling any type of appliance.
    • Expectation of Success: The combination was predictable because both Ben-Ze'ev and Dara-Abrams contemplated implementation on PDAs like the PalmPilot, a device known to be customizable. A POSITA would have reasonably expected to be able to implement the animated controls of Dara-Abrams on the PalmPilot-based platform of Ben-Ze'ev.

Ground 3: Obviousness over Ben-Ze'ev, Idiot's Guide, and Osterhout - Claims 11-17, 19-25, and 27

  • Prior Art Relied Upon: Ben-Ze'ev (Patent 6,791,467), Idiot’s Guide (a 1999 publication), and Osterhout (Patent 7,149,506).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed the system claims, which recited specific hardware architecture such as a "bus" coupling a processor, transceiver, display, and input device. While Ben-Ze'ev described these functional components for its PDA-based controller, it did not specify their interconnection. Osterhout remedied this by disclosing the conventional internal architecture of a PDA (specifically a Palm VII), teaching that components like the processor, transceiver, screen, and pen-type input are all connected to a common bus.
    • Motivation to Combine: Because Ben-Ze'ev taught implementing its system using the components of a PDA like a PalmPilot, a POSITA would have naturally looked to prior art like Osterhout that described the standard internal structure of such devices. Osterhout provided the necessary, albeit conventional, implementation details for how the components disclosed by Ben-Ze'ev would be coupled together in a working device.
    • Expectation of Success: It would have been obvious and entirely predictable to use the standard bus architecture described in Osterhout to connect the functional components of the remote controller described in Ben-Ze'ev. This represented a routine application of known design principles for the very type of device Ben-Ze'ev suggested using.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 18 and 26 based on the combination of Ben-Ze’ev, the Idiot’s Guide, Osterhout, and Dara-Abrams, relying on the collective teachings of the prior art asserted in the preceding grounds.

4. Relief Requested

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