PTAB

IPR2018-01275

Apple Inc v. Qualcomm Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Integrated Personal Digital Assistant Device
  • Brief Description: The ’940 patent discloses an integrated device combining the functionality of a personal digital assistant (PDA) and a cellular telephone. The invention centers on a single, multifunction power button that controls both computing and telephony features, such as silencing a ring for an incoming call or activating the display backlight based on context.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maloney, Beghtol, and Ishihara

Claims 1-4, 6, 8-9, 12-15, 17, and 19-20 are obvious over Maloney in view of Beghtol and Ishihara.

  • Prior Art Relied Upon: Maloney (Patent 6,453,169), Beghtol (Patent 6,253,075), and Ishihara (Patent 6,426,736).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the base reference, Maloney, discloses the core elements of the claimed invention: a portable radiotelephone with a display, radio, processor, and a multifunction power key. Maloney explicitly taught that a short press of this power key could silence an incoming call alert, while a longer press would power the device on or off. To meet remaining limitations, Petitioner asserted that Beghtol taught displaying incoming call identification information (e.g., caller ID) to allow a user to screen calls, and Ishihara taught the conventional feature of illuminating a display backlight for a predetermined time upon any key press to improve operability in dark environments.
    • Motivation to Combine: A POSITA would combine Maloney with Beghtol to incorporate the highly desirable and well-known feature of caller ID, thereby providing users greater control over incoming communications. Subsequently, a POSITA would add the backlight functionality from Ishihara, as it was a simple, predictable, and common solution to the known problem of using a mobile device in low-light conditions.
    • Expectation of Success: Petitioner contended that success was predictable because both Beghtol and Ishihara described their features as being broadly applicable to conventional mobile phones, such as the device taught in Maloney. The combination represented the integration of standard, known features into a base device to improve its functionality.

Ground 2: Obviousness over Maloney, Beghtol, and Ishihara in view of Vertaschitsch

Claims 7 and 18 are obvious over the combination of Maloney, Beghtol, and Ishihara in view of Vertaschitsch.

  • Prior Art Relied Upon: Maloney (Patent 6,453,169), Beghtol (Patent 6,253,075), Ishihara (Patent 6,426,736), and Vertaschitsch (Application # 2006/0095849).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the base combination of Maloney, Beghtol, and Ishihara from Ground 1. To address the limitations of claims 7 and 18, Petitioner introduced Vertaschitsch to teach enabling a user to answer a telephone call by selecting an icon presented on the display. Vertaschitsch specifically described this functionality in the context of a phone device with a touch-sensitive screen.
    • Motivation to Combine: Petitioner argued that while Maloney suggested its keypad could be a touch-sensitive screen, it omitted implementation details. A POSITA seeking to create a full-featured touch screen interface would naturally look to references like Vertaschitsch, which provided known methods for performing common phone functions, such as answering a call by tapping an on-screen icon. This combination would fulfill Maloney’s suggestion with a known technique.
    • Expectation of Success: The combination was asserted to be predictable because implementing on-screen controls for answering calls was a common and known technique for touch-screen devices at the time.

Ground 3: Obviousness over Maloney, Beghtol, and Ishihara in view of Little

Claims 10, 11, 21, and 22 are obvious over the combination of Maloney, Beghtol, and Ishihara in view of Little.

  • Prior Art Relied Upon: Maloney (Patent 6,453,169), Beghtol (Patent 6,253,075), Ishihara (Patent 6,426,736), and Little (Patent 5,642,413).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground also used the base combination from Ground 1. Petitioner introduced Little to teach a telephone device that includes a physical ringer switch allowing a user to manually select between different alert modes. Specifically, Little’s switch could be set to a first state for an audible ring or a second state for a silent vibration alert. The claims further require that pressing the power button stops the vibration when the switch is in the second state.
    • Motivation to Combine: Petitioner contended that a POSITA would be motivated to incorporate the ringer switch from Little into the Maloney device to improve its usability. Maloney already recognized the need for different operational modes (e.g., when stored in a pocket). Providing a manual switch for selecting between audible and vibration alerts was a well-known design choice that gave users direct control over the device’s behavior in various social environments.
    • Expectation of Success: Petitioner argued success would be predictable because incorporating a simple switch to select between two existing alert modes (audible and tactile, both mentioned in Maloney) was a routine and straightforward modification for a device designer.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although the Vertaschitsch reference was cited during prosecution, Petitioner asserted it was presented in the petition in a new context. Specifically, Vertaschitsch was used as a secondary reference within a new combination of prior art, whereas the Examiner had used it as a primary reference in different combinations.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6-15, and 17-22 of the ’940 patent as unpatentable.