PTAB

IPR2020-01598

Hisense Co Ltd v. Maxell Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Information Processing Apparatus, Display Apparatus, and Information Processing Method
  • Brief Description: The ’369 patent describes a system where a mobile terminal (e.g., a cellular phone) functions as a remote control for a television. The system allows a user to transfer or "swap" the display of video content, such as an internet webpage, from the mobile terminal to the television and then back again by exchanging a sequence of "information" or "communications."

3. Grounds for Unpatentability

Ground 1: Obviousness over Bennett-3 - Claims 1-3, 6-7, 10-12, and 15-16 are obvious over Bennett-3.

  • Prior Art Relied Upon: Bennett-3 (Patent 9,247,175).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bennett-3 discloses every element of the challenged claims. Bennett-3 teaches a "PTV remote control" with an integrated screen that interacts with a television to display content from various sources, including broadcast and the internet. Petitioner asserted that the claimed three-step communication sequence is disclosed by Bennett-3’s "swap" functionality. The "first information" corresponds to an initial swap command transferring video from the remote to the TV. The "second information" corresponds to standard remote control signals for operating the video on the TV. The "third information" corresponds to a second swap command that terminates the video on the TV and returns it to the remote.
    • Motivation to Combine (for §103 grounds): This ground relies on a single reference, arguing Bennett-3 itself renders the claims obvious.
    • Expectation of Success (for §103 grounds): Not applicable as this is a single-reference ground.

Ground 2: Obviousness over Bennett-3 and Yuasa - Claims 1-3, 6-7, 10-12, and 15-16 are obvious over Bennett-3 in view of Yuasa.

  • Prior Art Relied Upon: Bennett-3 (Patent 9,247,175) and Yuasa (Patent 8,321,898).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. Petitioner contended that if Bennett-3 is found not to explicitly disclose conventional remote control functions (e.g., "play," "pause," "stop") that could constitute the "second information," then Yuasa provides express disclosure of these features. Yuasa teaches a remote control that sends operation signals for starting, stopping, and pausing playback on a television.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Yuasa’s conventional playback controls with Bennett-3's system to enhance functionality and improve user experience, as these are well-known features for remote controls. Petitioner also cited Bennett-2 (a related patent from the same inventors as Bennett-3) which expressly incorporates Bennett-3 by reference and discusses adding such standard playback functionalities, providing an express motivation.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as this involves incorporating standard, well-understood remote control functions into an existing television control system using predictable wireless communication technologies disclosed in both references.

Ground 3: Obviousness over Bennett-3 and Cho - Claims 4-5, 8-9, 13-14, and 17-18 are obvious over Bennett-3 in view of Cho.

  • Prior Art Relied Upon: Bennett-3 (Patent 9,247,175) and Cho (Patent 9,055,194).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses the dependent claims requiring the "first information" to include "login" information. While relying on Bennett-3 for the core swapping system, Petitioner argued that Cho teaches the seamless migration of a streaming session from a mobile device to a television. Critically, Cho's transmitted "ContextInfo" includes authentication and login information to allow the television to take over an authenticated streaming session without interruption. This directly maps to the "login" limitation.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Cho's authentication transfer with Bennett-3’s media swapping system to solve the known problem of seamlessly transferring secure or subscription-based content between devices. This combination would avoid forcing the user to re-authenticate on the second device, which is a recognized advantage.
    • Expectation of Success (for §103 grounds): Success would be expected, as the combination involves adding a specific data field (authentication information) to the control signals already being exchanged in Bennett-3's system, which is a straightforward modification.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 4-5, 8-9, 13-14, and 17-18 over Bennett-3 in view of both Yuasa and Cho, relying on the same analyses presented in Grounds 2 and 3 to supply both conventional playback controls and login information.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under §314(a) based on Fintiv factors. Petitioner asserted that the co-pending district court litigation was in its very early stages, with minimal investment in invalidity discovery. It was further argued that Patent Owner's initial complaint, asserting 185 claims across eight patents, created delays that should not prejudice Petitioner. Finally, Petitioner contended that the petition was exceptionally strong and that the ’369 patent resulted from a weak examination history with no substantive prior art rejections, making PTAB review crucial for patent quality and systemic integrity.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’369 patent as unpatentable under 35 U.S.C. §103.