Magic Leap Inc v. percept Technologies Inc

1. Case Identification

• Case #: IPR2023-00494
• Patent #: 9,010,929
• Filed: January 20, 2023
• Petitioner(s): Magic Leap, Inc.
• Patent Owner(s): Percept Technologies Inc.
• Challenged Claims: 1-11, 15, 17, and 22

2. Patent Overview

• Title: Eyewear with Circuitry
• Brief Description: The ’929 patent describes eyeglasses with circuitry integrated into the frames to provide enhanced functionality. The disclosed enhancements fall into three categories: media focals (using imaging to improve user vision), telecommunications (integration with devices like cell phones), and entertainment (integration with devices like MP3 players).

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 10, 11, 15, 17, and 22 are obvious over Mann '895 in view of Pemer.

• Prior Art Relied Upon: Mann ’895 (Canadian Application No. 2,362,895) and Pemer (Application # 2005/0281440).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mann ’895 discloses a wearable eyeglass-based device with most of the claimed features, including a frame, lenses, and integrated circuitry for enhancing its use (e.g., providing a display, camera, speakers, and telephone functions). Mann ’895 also discloses using an iris or retinal scanner to authenticate a user and activate the eyewear's functionality via a "sight license." However, Petitioner contended that Mann ’895 does not explicitly teach that this activation is responsive to eye motion. Pemer was asserted to supply this missing element by disclosing an iris feature detector that captures sequential iris images in response to a user's "rapid eye motion" to identify and authenticate the user. The combination of Mann's smart eyewear with Pemer's motion-based iris scanner was argued to render the core limitation of the independent claims—an eye sensor activating circuitry responsive to eye motion—obvious.
  • Motivation to Combine: Petitioner asserted three primary motivations. First, a person of ordinary skill in the art (POSITA) would be motivated to substitute the conventional iris scanner in Mann ’895 with Pemer’s improved motion-based scanner, as Pemer expressly presents its technology as an improvement for authentication systems like the one in Mann ’895. Second, the combination would involve implementing known electronic components to achieve predictable results. Third, a POSITA would combine the references to gain the technical advantages of Pemer's system, which is less computationally intensive and therefore better suited for head-worn devices with limited battery and processing power.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because the combination involved implementing analogous and well-understood electronic components that would yield predictable results.

Ground 2: Claims 7, 9, 10, and 15 are obvious over Jannard.

• Prior Art Relied Upon: Jannard (Patent 7,278,734).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jannard, as a single reference, discloses all limitations of the challenged claims in this ground. Jannard describes head-wearable audio devices, including eyeglasses, with circuitry integrated into the frame. This circuitry can function as an MP3 player and communicate with a content source, such as a Bluetooth-enabled telephone, satisfying the "cell phone" and "MP3 player" limitations of claim 7. Critically, Jannard discloses that user controls can include a sensor to "monitor eye movement" and control the device based on the "blinking of the user's eyes," such as by turning the device power on or off. Petitioner asserted this directly teaches an eye sensor activating circuitry responsive to eye motion. Jannard also discloses a "pushbutton system for control" (claim 9) and a client-server architecture where the eyewear (client) downloads music from a network or the Internet (server), teaching the limitations of claims 10 and 15.
  • Motivation to Combine (for §103 grounds): As this ground is based on a single reference, the argument focused on how all elements were present in Jannard and how a POSITA would have understood their functions and interactions as claimed. For any elements not explicitly combined in Jannard, Petitioner argued it would be an obvious modification. For example, it would be obvious to a POSITA to integrate the disclosed content source (e.g., telephone circuitry) into the frame of the eyewear, as Jannard suggests that any of its described components can be enclosed within the frame's housing.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in implementing the claimed features, as Jannard describes using well-understood electronic components (processors, memory, sensors) in their conventional manner to achieve the disclosed functionalities.

4. Key Claim Construction Positions

• "media focals": Petitioner proposed this term should be construed as "circuitry that uses imaging techniques to improve the vision of the user." This construction is central to mapping the functionality of Mann '895 and Jannard to claim 7, which requires circuitry providing "media focals."
• "the eye sensor activating the circuitry responsive to eye motion of a user": Petitioner proposed this phrase means "the eye sensor making the inactive circuitry become active, in response to eye motion of a user." This construction focuses the invalidity argument on the specific act of turning on or enabling functions via eye movement, a feature Petitioner argued is explicitly taught by the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not issue a discretionary denial under Fintiv or 35 U.S.C. §325(d).
• Fintiv (§314(a)): Petitioner asserted that the petition presents compelling evidence of unpatentability, which, under the Board's guidance, weighs against denial. Petitioner also stated it would stipulate not to pursue the same invalidity grounds in the parallel district court litigation.
• Same Art or Arguments (§325(d)): Petitioner argued that none of the cited prior art references (Mann ’895, Pemer, or Jannard) were considered during the original prosecution of the ’929 patent. Therefore, the art and arguments presented in the petition are not the same or substantially the same as those previously before the Office, making denial under §325(d) inappropriate.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11, 15, 17, and 22 of the ’929 patent as unpatentable.