Apple Inc v. Qualcomm Inc

1. Case Identification

• Case #: IPR2018-01270
• Patent #: 9,203,940
• Filed: June 21, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Qualcomm Incorporated
• Challenged Claims: 1, 3-5, 7, 8, 10-16, 18, 19, 21, 22

2. Patent Overview

• Title: INTEGRATED PERSONAL DIGITAL ASSISTANT DEVICE
• Brief Description: The ’940 patent relates to an integrated device combining Personal Digital Assistant (PDA) and cellular telephone functionalities. The invention centers on a single power button that controls both computing and telephony functions, such as silencing an incoming call or activating the device's backlight.

3. Grounds for Unpatentability

Ground 1: Obviousness over Samsung and Vertaschitsch - Claims 1, 4, 7, 8, 12, 15, 18, and 19 are obvious over Samsung in view of Vertaschitsch.

• Prior Art Relied Upon: Samsung (Sprint Model SCH-3500 User Guide), Vertaschitsch (Application # 2006/0095849).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Samsung user guide for the SCH-3500 phone disclosed the core features of a mobile computing device with a display, radio, and a multi-function "End/Power" key. This key was shown to power the device on/off, mute an incoming ringer without turning the phone off, and activate the display's backlight when pressed. Petitioner asserted that Vertaschitsch supplied the necessary teaching of using one or more processors (e.g., a main processor for the user interface and a separate phone control processor) to manage applications and radio functions in an integrated PDA/phone device, as claimed. For dependent claims, Petitioner argued Vertaschitsch taught answering a call by selecting an on-screen icon, and Samsung disclosed a two-segment flip-phone design.
  • Motivation to Combine: A POSITA would combine Vertaschitsch's processor architecture with Samsung's phone to improve the performance, convenience, and usability of a device with integrated mobile telephone capabilities. Petitioner pointed out that Vertaschitsch explicitly taught its processor system could be "conveniently implemented on a...cell phone," providing a direct rationale for the combination.
  • Expectation of Success: The combination involved applying known processor techniques from Vertaschitsch to a known mobile device (Samsung) to achieve the predictable result of an improved, integrated device, which would have been a routine design choice.

Ground 2: Obviousness over Samsung, Vertaschitsch, and Sharp - Claims 3, 13, and 14 are obvious over Samsung in view of Vertaschitsch and Sharp.

• Prior Art Relied Upon: Samsung (Sprint Model SCH-3500 User Guide), Vertaschitsch (Application # 2006/0095849), and Sharp (WO 2001/28191).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Samsung/Vertaschitsch combination to address claims requiring the power button and display to be on different faces of the device. Petitioner argued that while Samsung’s phone had its display and power button on the same front face (though on different planes), a POSITA would look to Sharp to meet this limitation. Sharp explicitly disclosed a mobile phone with a display on its front face and an "on/off button" located on a side face.
  • Motivation to Combine: A POSITA would incorporate Sharp's side-mounted button to solve a design flaw in Samsung's flip phone, where the power button was inaccessible when the flip was closed. Sharp taught making components accessible "independent of whether the cover is in the closed or open configuration," providing a clear motivation to move the button for improved usability and convenience.
  • Expectation of Success: Modifying the button placement according to Sharp's teaching was a simple, predictable design choice to enhance accessibility, with a high expectation of success.

Ground 3: Obviousness over Samsung, Vertaschitsch, and Little - Claims 10, 11, 21, and 22 are obvious over Samsung in view of Vertaschitsch and Little.

• Prior Art Relied Upon: Samsung (Sprint Model SCH-3500 User Guide), Vertaschitsch (Application # 2006/0095849), and Little (Patent 5,642,413).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring a "ringer switch" to select between an audible ring (a first state) and a vibration (a second state), and for the power button to stop the vibration. Petitioner argued that while Samsung's volume keys could cycle through ring and vibrate modes, a POSITA would also be motivated to implement the dedicated electrical switch taught by Little. Little expressly disclosed a "switch positionable...between a ring circuit power source and an audible ringer...or a vibration assembly."
  • Motivation to Combine: A POSITA would add Little's dedicated switch to the Samsung/Vertaschitsch device to improve user convenience. Samsung already recognized the benefit of a silent vibrate mode, and Little's dedicated switch provided a more direct and efficient way for a user to select this mode compared to toggling through multiple volume settings. This modification would improve the device's operation in quiet situations.
  • Expectation of Success: Incorporating a well-known type of electrical switch to select between two known alert modes was a straightforward application of existing technology that would yield the predictable result of enhanced usability.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1-C for claims 5 and 16) based on adding Nakao (WO 2000/62120) to teach inverting the display via the power button as a method to conserve battery power.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-5, 7, 8, 10-16, 18, 19, 21, and 22 as unpatentable.