Hisense Co Ltd v. Maxell Ltd

1. Case Identification

• Case #: IPR2020-01600
• Patent #: 10,327,029
• Filed: September 11, 2020
• Petitioner(s): Hisense Co. Ltd.
• Patent Owner(s): Maxell, Ltd
• Challenged Claims: 1-30

2. Patent Overview

• Title: Display Apparatus Controlled by Mobile Terminal
• Brief Description: The ’029 patent describes a display apparatus, such as a television, that can be controlled by an external mobile terminal. The system allows a user to switch the display from a first mode showing broadcast video to a second mode showing internet video, initiated by a communication from the mobile terminal that was previously displaying the internet video.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-9, 11-16, 18-24 and 26-30 are obvious over Bennett-3 in view of Ueda.

• Prior Art Relied Upon: Bennett-3 (Patent 9,247,175) and Ueda (WO 2006/028203).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bennett-3, the primary reference, discloses a television system controllable by two distinct types of remotes: a "typical remote control" and a "PTV remote control" with its own video screen. Petitioner mapped the PTV remote to the claimed "external mobile terminal" and the typical remote to the "remote controller." Bennett-3’s core "swap" functionality, where video content is exchanged between the TV and the PTV remote, was alleged to meet the claimed limitations. The "swap command," containing "identifiers" for video source and playback offset, was mapped to the "first information" that terminates the first operation mode (e.g., watching a broadcast) and starts the second (watching internet video from the PTV remote on the TV). Post-swap "control signals" from the PTV remote were mapped to the "second information" for controlling video playback, and a subsequent swap-back command was mapped to the "third information" terminating the second mode. Petitioner asserted that Ueda, which teaches a similar system, was added to provide express disclosure for well-known DVR functionalities (e.g., fast forward, rewind) that are only implicitly suggested in Bennett-3, thereby explicitly teaching the "control" of video content in the second operation mode.
  • Motivation to Combine: A POSITA would combine Bennett-3 and Ueda to improve the user experience of the Bennett-3 system. Both references describe highly similar systems where a remote with a screen controls a main display. A POSITA would have found it obvious to augment the functionality of Bennett-3's PTV remote by incorporating the well-known and desirable DVR control features explicitly taught by Ueda. Petitioner also cited Bennett-2 (from the same inventors), which expressly suggests adding functionalities like ‘seek,’ ‘pause,’ and ‘play’ to a nearly identical system.
  • Expectation of Success: A POSITA would have had a high expectation of success because both systems use conventional components and software-based controls. Integrating Ueda’s specific DVR commands into Bennett-3’s established control signal framework would have been a straightforward implementation of known functions.

Ground 2: Claims 1-30 are obvious over Bennett-3 in view of Ueda and Cho.

• Prior Art Relied Upon: Bennett-3 (Patent 9,247,175), Ueda (WO 2006/028203), and Cho (Patent 9,055,194).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon Ground 1 by adding Cho to provide explicit support for limitations in dependent claims not fully detailed in Bennett-3 or Ueda. Cho teaches a system for seamless content migration where a user can send "playback environment information" from a mobile phone to a TV to continue a streaming session. This information explicitly includes a URL for the content, the current playback position, and "authentication information." Petitioner argued that Cho's disclosure of "authentication information" directly teaches the "login information" required by claims 3, 10, 17, and 25. Similarly, Cho’s use of a URL to access content teaches the "address" required by claims 5-6, 12-13, 20-21, and 28-29. Cho also explicitly discloses the mobile terminal as a "smart phone," supporting the limitation in claims 18 and 26.
  • Motivation to Combine: A POSITA would combine the teachings of Cho with the Bennett-3/Ueda system to enhance the "swap" functionality. Cho provides a more robust and detailed implementation for the "identifiers" taught in Bennett-3 by explicitly including a URL and login data, which would be a predictable and advantageous improvement for accessing internet content. The systems are analogous, both addressing media switching between a mobile device and a TV.
  • Expectation of Success: There would be a high expectation of success because the information added from Cho (URL, authentication) is consistent with the type of identifier data already disclosed in Bennett-3. This data could be readily processed by the existing circuitry and software architecture of the Bennett-3 system.

4. Arguments Regarding Discretionary Denial

• Against §314(a) Denial (Fintiv): Petitioner argued that discretionary denial would be inappropriate. The co-pending district court litigation was in its very early stages, with minimal investment by the court or parties in invalidity issues. Petitioner contended that Patent Owner's initial assertion of an excessive number of patents and claims delayed Petitioner’s ability to formulate its IPR strategy. Furthermore, Petitioner highlighted the weakness of the patent's examination history and the strength of the invalidity grounds presented in the petition as factors weighing heavily in favor of institution to promote patent quality and system efficiency.
• Against §325(d) Denial: Petitioner argued that denial under §325(d) was unwarranted because the prior art and arguments were not substantively considered during prosecution. Although Bennett-3 and Cho were submitted in a large Information Disclosure Statement (IDS), the prosecution was extremely brief (18 days before the examiner), involved no office actions, and concluded with a Notice of Allowance that was cut and pasted from a seven-year-old ancestor patent. Critically, the Ueda reference was never before the examiner, and the specific combinations asserted in the petition were never considered.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’029 patent as unpatentable under 35 U.S.C. §103.