ZTE Corp v. WSOU Investments LLC

1. Case Identification

• Case #: IPR2021-00695
• Patent #: 8,147,071
• Filed: March 26, 2021
• Petitioner(s): ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc.
• Patent Owner(s): WSOU Investments LLC D/B/A Brazos Licensing and Development
• Challenged Claims: 1-14

2. Patent Overview

• Title: Processor for Providing Image Data to a Projector
• Brief Description: The ’071 patent discloses a system where a processor provides image data to a projector based on detected movement. The system includes a movement sensor that generates movement signaling, which the processor uses to modify or select the image data sent to the projector.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7-11, 13, and 14 are unpatentable over Huebner under 35 U.S.C. §102 and/or §103.

• Prior Art Relied Upon: Huebner (Application # 2009/0091710).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Huebner, which describes an interactive image projecting device, anticipates every limitation of the challenged claims. Huebner’s microprocessor-based "control unit 24" was identified as the claimed "processor." This control unit receives "movement signals" from a "position sensor 38" (e.g., a MEMS accelerometer) and a "range locator sensor 51" to detect the device’s movement and distance from a surface. Petitioner contended this meets the limitation of an input for receiving "movement signaling." The control unit then modifies the image projected by "projector 42" based on this movement, such as by animating the image or adjusting its zoom. This functionality was argued to disclose providing "image data signaling to the projector based on received movement signaling," including discriminating movement criteria like displacement and speed.
  • Motivation to Combine (for §103 grounds): While primarily an anticipation argument, Petitioner asserted that if the Patent Owner argued Huebner’s disclosure of sending "video data" does not meet the "image data" limitation, it would have been obvious for a person of ordinary skill in the art (POSITA) to adapt Huebner’s system. Because video is a series of images, a POSITA would have found it obvious to send individual images or image data using the same disclosed pathways for sending video data.
  • Expectation of Success: A POSITA would have had a high expectation of success, as Huebner describes a fully functional system for controlling a projected image based on device movement.

Ground 2: Claims 1-14 are unpatentable over De Haan under 35 U.S.C. §102 and/or §103.

• Prior Art Relied Upon: De Haan (Application # 2010/0031201).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that De Haan, which describes a handheld device for projecting and interacting with content, also anticipates the challenged claims. De Haan’s "controller 315" was mapped to the claimed "processor." This controller receives gesture and non-gesture information from an "accelerometer 310," which corresponds to the claimed "movement signaling." Based on this movement information, the controller determines "compensation information" to stabilize the projected image or performs operations like scrolling and highlighting. Petitioner asserted this teaches providing image data based on movement. De Haan explicitly discloses measuring "trace or path information" and "speed," satisfying the claim limitations for movement criteria such as displacement and movement speed.
  • Motivation to Combine (for §103 grounds): The argument for obviousness was presented as an alternative. Petitioner contended that adapting De Haan's system for the specific functions claimed in the ’071 patent, such as incremental or continuous scanning (for dependent claims 6 and 7), would have been a predictable and obvious design choice. For example, De Haan’s disclosure of varying degrees of scrolling based on user gestures would have motivated a POSITA to implement both incremental (for icon selection) and continuous (for fast scrolling) scanning.
  • Expectation of Success: A POSITA would have expected success in implementing the claimed features, as De Haan describes using an accelerometer to control a projected user interface, which is a well-understood and predictable technical field.

4. Key Claim Construction Positions

• For the purposes of this inter partes review (IPR), Petitioner adopted the Patent Owner's proposed constructions from the parallel district court litigation.
• Petitioner stated that terms such as "movement signaling," "discriminate," and "the processor," which it had argued were indefinite in litigation, should be given their plain and ordinary meaning for this IPR. This strategic concession was made to focus the IPR on the prior art's teachings rather than on claim construction disputes.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be improper. It asserted that the parallel district court case was in its early stages, with a trial date more than a year away (June 2022) and minimal investment by the court and parties. Petitioner also committed to stipulating that it would not pursue the same invalidity grounds in the district court if the IPR was instituted, mitigating concerns of duplicative efforts.
• Petitioner also argued against denial under §325(d), emphasizing that the primary prior art references, Huebner and De Haan, were never considered by the examiner during the original prosecution of the ’071 patent. Petitioner contended these references are materially different from the art of record because they teach the key missing elements—projection imaging devices with movement sensors—that the Patent Owner had previously argued were absent from the cited art.

6. Relief Requested

• Petitioner requested the institution of an IPR and cancellation of claims 1-14 of Patent 8,147,071 as unpatentable.