PTAB

IPR2018-00395

Apple Inc v. Uniloc Luxembourg SA

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1. Case Identification

2. Patent Overview

  • Title: Portable Computer System for Controlling Remote Devices
  • Brief Description: The ’018 patent describes a method and system where a portable computer, such as a PDA or palmtop computer, controls multiple remote devices over a wireless connection. The system discovers nearby devices by broadcasting a message, receives responses, manifests the discovered devices on a display, and transmits commands based on user input.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Leichiner (Japanese Pub. No. JPH06319177) and the Idiot’s Guide (“The Complete Idiot’s Guide to PalmPilot and Palm III”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Leichiner discloses the core invention: an adaptive remote controller, implementable on a palmtop computer, that uses a wireless link to control multiple devices. Leichiner’s controller discovers devices by broadcasting a polling message, receives responses, and displays corresponding icons on a touch-sensitive screen for user control. The Idiot’s Guide, describing the popular PalmPilot PDA, was argued to supply any missing details regarding standard palmtop computer functionality, specifically the use of a stylus with a separate input area (the “Graffiti” area) to register contact position and translate it into commands.
    • Motivation to Combine: A POSITA would combine these references because Leichiner expressly teaches implementing its controller on an “existing computer device [] such as a palmtop computer.” The Idiot's Guide describes the ubiquitous PalmPilot, which was the quintessential palmtop computer of the era. Combining the well-known input methods of the PalmPilot (described in the Idiot's Guide) with Leichiner’s adaptive remote control system was presented as a simple application of known technology to improve Leichiner's system.
    • Expectation of Success: The combination would have been predictable because PalmPilots were already being used as universal remote controls, and using the Graffiti area for command input was a known, efficient, and customizable feature.

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

  • Prior Art Relied Upon: Leichiner, the Idiot's Guide, and Dara-Abrams (Patent 6,456,892).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 1 to address claim 8, which adds the limitation of imparting motion to a displayed rendering (e.g., a control icon) in response to stylus movement on an input device. Petitioner asserted that while Leichiner and the Idiot's Guide provide the base system, Dara-Abrams teaches using a PDA as a universal remote with a graphical user interface (GUI) that includes interactive, animated controls like sliders, dials, and toggles that move in response to user interaction.
    • Motivation to Combine: A POSITA would combine Dara-Abrams with the Leichiner/Idiot's Guide system to create a more sophisticated and user-friendly interface. Both Leichiner and Dara-Abrams address adaptive remote controls for various consumer electronics. Incorporating Dara-Abrams' animated GUI elements into Leichiner's system was argued to be a predictable design choice to enhance user interaction, a stated goal of Leichiner.
    • Expectation of Success: Success was expected because implementing animated GUI controls on PDAs like the PalmPilot was well-known and within the skill of a POSITA.

Ground 3: Claims 11-17, 19, 21-22, 24-25, and 27 are obvious over Leichiner in view of the Idiot's Guide and Osterhout.

  • Prior Art Relied Upon: Leichiner, the Idiot's Guide, and Osterhout (Patent 7,149,506).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses the system claims, which recite hardware components like a processor, transceiver, display, and input device coupled to a bus. Petitioner contended that the combination of Leichiner and the Idiot's Guide teaches the overall system implemented on a PalmPilot. Osterhout was introduced because it explicitly discloses the typical internal architecture of a PDA like a Palm VII (a 3Com product, like the PalmPilot), showing a processor, transceiver, and I/O components (including a screen and pen-type input) all connected to a central bus.
    • Motivation to Combine: A POSITA, seeking to implement Leichiner’s system on a PalmPilot as described in the Idiot's Guide, would naturally look to a reference like Osterhout for the standard internal architecture of such a device. Osterhout provides the necessary, albeit conventional, details on how the components of a PDA are interconnected, filling in the structural blueprint for the claimed system.
    • Expectation of Success: The combination was argued to be entirely predictable, as it amounted to implementing a known software method (Leichiner) on a standard, commercially available hardware platform (PalmPilot) with a well-understood internal architecture (Osterhout).

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claim 10 over Leichiner, the Idiot's Guide, and Bell (for Bluetooth functionality) and for claims 18, 20, 23, and 26 based on combinations of all four secondary references (Idiot's Guide, Osterhout, Dara-Abrams, and Bell) with Leichiner.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not deny institution on cumulative grounds, despite a contemporaneously filed petition against the same patent. It was explained that this petition is based on the Leichiner reference, which was published more than five years before the ’018 patent’s priority date. The other petition was based on a different primary reference (Ben-Ze’ev) that was filed only a month before the priority date, making it susceptible to a "swearing behind" defense by the Patent Owner, a risk not present with the much older Leichiner reference.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-27 of the ’018 patent as unpatentable.