Magic Leap Inc v. percept Technologies Inc

1. Case Identification

• Case #: IPR2023-00495
• Patent #: 8,696,113
• Filed: January 20, 2023
• Petitioner(s): Magic Leap, Inc.
• Patent Owner(s): Percept Technologies Inc.
• Challenged Claims: 1-3, 12-14

2. Patent Overview

• Title: Wearable Optics with Dynamic Eye Tracking
• Brief Description: The ’113 patent discloses a wearable optics device, such as smart glasses, featuring a dynamic eye tracking mechanism. The system utilizes an “optical/perceptual parameter based operating system” to process inputs from the eye tracker and other sensors to control the device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Osterhout - Claims 1-3 and 12-14 are obvious over Osterhout.

• Prior Art Relied Upon: Osterhout (Application # 2011/0213664A1).
• Core Argument for this Ground: Petitioner argued that Osterhout, a single prior art reference, discloses every limitation of the challenged claims. Petitioner asserted that during prosecution, the Examiner overlooked express disclosures in Osterhout that correspond directly to the claim limitations added to overcome the Examiner’s rejections.
  • Prior Art Mapping: Petitioner contended that Osterhout’s “interactive head-mounted eyepiece” is a wearable optics device with a see-through lens, meeting the preamble and lens limitations of claims 1 and 12. Osterhout’s “eye tracking facility,” which tracks motion by using “the corneal reflection and the center of the pupil as features to track over time” and following “retinal blood vessels,” was argued to teach the claimed dynamic eye tracking mechanism utilizing corneal, pupil, and retina measurements. Further, Petitioner asserted that Osterhout’s operating system, which processes inputs from the eye tracker and other sensors (e.g., voice, gesture) to execute commands, constitutes the claimed “optical/perceptual parameter based operating system.” For dependent claims, Osterhout was argued to teach using eye tracking to control the OS (e.g., selecting an object) and using applications to control sensors (e.g., a video conferencing app controlling a camera). For claim 12, Osterhout’s disclosure of an “electrochromic layer” or an “anti-reflective layer” was argued to teach a lens with a plurality of layers.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground is based on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Obviousness over Mann and Vaissie - Claims 1-3 and 12-14 are obvious over Mann in view of Vaissie.

• Prior Art Relied Upon: Mann ’526 (Patent 6,307,526) and Vaissie (Patent 6,433,760).
• Core Argument for this Ground: Petitioner argued that Mann ’526 discloses a complete wearable eyeglass system with eye tracking and a graphical user interface controlled by eye and head movements. To the extent Mann ’526 does not explicitly detail the specific optical measurements for eye tracking, Vaissie provides this teaching.
  • Prior Art Mapping: Petitioner argued that Mann ’526 discloses a wearable optics device with lenses and an eye-tracking mechanism that is in optical communication with the lens. Mann ’526’s system uses a computer with a “reality window manager” (based on the X-windows system) that responds to eye and head tracking inputs, which Petitioner asserted meets the limitation of an “optical/perceptual parameter based operating system.” The combination with Vaissie was asserted to teach the specific optical parameter measurements. Vaissie discloses determining sight direction by measuring the pupil center and the barycenter of corneal reflections from infrared LEDs, expressly teaching the claimed pupil and corneal measurements.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Mann ’526 and Vaissie because Mann ’526 discloses an eye tracker with a camera and infrared sources but does not specify how to calculate eye gaze direction. Vaissie expressly teaches a method for calculating eye gaze using the same types of components (camera, IR LEDs) and suggests its use in head-mounted displays like the one in Mann ’526 to achieve advantages such as enhanced user interaction.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because the combination involves integrating Vaissie’s known eye-tracking algorithm with the analogous and well-understood hardware components already present in Mann ’526’s system.

4. Key Claim Construction Positions

• “optical/perceptual parameter based operating system”: Petitioner proposed this term be construed as an “operating system, not including a conventional mobile operating system such as Android or iOS, in which optical parameters and perceptual parameters are measured and used as inputs, controls, or feedback elements.” Petitioner argued its invalidity contentions succeed even under the Patent Owner’s proposed “plain and ordinary meaning” but offered this construction based on the patent’s specification to distinguish the invention from conventional systems.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: Petitioner contended that the challenged claims are not entitled to any priority date earlier than their filing date of March 15, 2013. This argument was based on the assertion that the claim term “optical/perceptual parameter based operating system” and the specific list of “optical parameter measurements” (ciliary, pupil, corneal, etc.) were new matter introduced in the application that matured into the ’113 patent and lacked support in any of the parent applications. This assertion is critical to establishing Osterhout, Mann ’526, and Vaissie as prior art.

6. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, citing compelling evidence of unpatentability across two independent grounds. Petitioner also stated it would stipulate not to pursue in the parallel district court litigation the same grounds or any grounds that could have reasonably been raised in the petition, which under then-current USPTO guidance would preclude a Fintiv denial.
• §325(d) (Same Art or Arguments): Petitioner argued against denial under §325(d), asserting that the Examiner made a material error during prosecution. For Ground 1, Petitioner claimed the Examiner overlooked express teachings of the dispositive optical parameter measurements in Osterhout. For Ground 2, Petitioner noted that the combination of Mann ’526 and Vaissie was never before the Examiner, as Vaissie was not of record during the original prosecution.

7. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-3 and 12-14 of the ’113 patent as unpatentable.