PTAB

IPR2022-00371

Meta Platforms Inc v. EyesMatch Ltd

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1. Case Identification

2. Patent Overview

  • Title: Devices, Systems and Methods of Capturing and Displaying Appearances
  • Brief Description: The ’883 patent describes interactive imaging and display systems, primarily for retail environments. The core technology is a “mirror-display device” that allows a user to capture their appearance, view it later, and compare it with their current reflection, using a device that can function as a mirror, a display, or both.

3. Grounds for Unpatentability

Ground 1: Obviousness over Illsley, Horsten, New Scientist, Hoke, and Fischer - Claims 1-3, 8-9, and 12-14 are obvious over Illsley in view of Horsten, New Scientist, Hoke, and Fischer.

  • Prior Art Relied Upon: Illsley (European Patent App. Pub. EP 1,372,092), Horsten (WO 2003/079318), New Scientist (a 2004 article), Hoke (Patent 7,154,529), and Fischer (WO 2000/022955).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Illsley, discloses an "interactive trying-on cubicle" with all the basic components of claim 1, such as a camera, a mirror, and a display screen to allow a user to compare a current appearance with a previously captured one. However, Illsley depicted the mirror and screen as separate components. The secondary references were introduced to modify Illsley’s system. Horsten and New Scientist taught integrated "mirror-display" devices capable of selectably operating in a "mirror mode," a "display mode," and "both a mirror and a display mode" simultaneously (e.g., picture-in-mirror). Petitioner contended this directly addresses the limitations of claim 1[b]. Furthermore, Hoke and Fischer were cited for the conventional capability of capturing and storing video in addition to still images, satisfying the video-related limitations in the independent claims (1[c], 1[d], 12[b], 12[c]). For dependent claims, Illsley was alleged to teach multiple networked stations (claims 8-9) and an input device (claim 2), while Hoke taught an interface for downloading to a mobile storage device (claim 3).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Illsley with Horsten and New Scientist to create a more integrated, space-saving, and streamlined user experience, a modification Illsley itself suggested was possible. The combination provided the benefit of viewing a reflection and a displayed image in the same location. A POSITA would add the teachings of Hoke and Fischer to capture video because video provides more contextual information than still images, a known benefit, particularly for applications like trying on clothing where movement is important.
    • Expectation of Success: A POSITA would have had a high expectation of success because the proposed combination relied on well-known and commercially available technologies, such as integrated mirror TVs (as described in New Scientist) and digital cameras with video recording capabilities.

Ground 2: Obviousness over Ground 1 Art in view of Gorischek - Claim 17 is obvious over Illsley, Horsten, New Scientist, Hoke, and Fischer, in further view of Gorischek.

  • Prior Art Relied Upon: The prior art from Ground 1, with the additional reference Gorischek (Application # 2002/0196333).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted dependent claim 17, which adds the step of "rendering virtual effects on the mirror-display device" to the method of claim 12. Petitioner argued that Fischer (from Ground 1) already taught altering image brightness, which could satisfy the limitation. To strengthen the argument, Petitioner introduced Gorischek, which explicitly discloses a fitting-room system where a user can apply "virtual effects" such as experimenting with different shades of cosmetics on their real-time image without physically applying them.
    • Motivation to Combine: A POSITA would combine Gorischek's teachings with the system from Ground 1 to further enhance the user's shopping experience. Gorischek’s virtual try-on capability is directly analogous to Illsley’s physical try-on context. Adding this feature would allow users to rapidly envision different options (e.g., makeup, accessories) without physical effort, providing a clear and predictable improvement to the system.
    • Expectation of Success: Success was expected, as the ability to alter graphical images to apply virtual effects was a well-known and conventional technique in computer graphics at the time.

4. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its early stages. At the time of filing, the court had not issued any claim construction rulings, and the trial was scheduled nearly two years in the future. Petitioner also stipulated that it would not pursue in the district court any invalidity ground instituted in the IPR.
  • §325(d): Petitioner contended that denial under §325(d) was inappropriate because, while three of the cited references (Illsley, Fischer, Gorischek) were listed on an Information Disclosure Statement (IDS) during prosecution, the Examiner never applied them in a rejection or discussed them substantively. Moreover, Petitioner asserted that key references teaching the integrated multi-mode mirror-display (Horsten, New Scientist) and video capture (Hoke) were new and non-cumulative, presenting a materially different challenge than what the Examiner considered.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 8-9, 12-14, and 17 of the ’883 patent as unpatentable.