Apple Inc v. Li Chian Chiu

1. Case Identification

• Case #: IPR2023-00560
• Patent #: 11,016,564
• Filed: February 7, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Chian Chiu Li
• Challenged Claims: 1-6, 8-12, 14-16, and 18-20

2. Patent Overview

• Title: System and Method for Presenting Information on an Electronic Device
• Brief Description: The ’564 patent is directed to systems and methods for presenting information on an electronic device that is in a standby or idle state. The technology involves detecting a physical user interaction with the device (e.g., a shake), followed by using eye-tracking technology to ascertain if the user is gazing at the device, and then displaying content if the user's gaze is confirmed.

3. Grounds for Unpatentability

Ground 1: Claims 1–5, 8, 9, 11, 12, 14–16, 18, and 20 are obvious over Ryu in view of Hodge.

• Prior Art Relied Upon: Ryu (Patent 10,540,013) and Hodge (Application # 2010/0079508).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ryu teaches a method for an electronic device in standby mode to perform a function based on detected motion (e.g., shaking or rotating). Ryu further discloses that after detecting motion, the device can activate a front camera to determine if a user is looking at it before performing a preset function, such as displaying information. However, Ryu does not explicitly teach recognizing a specific authorized user. Hodge was argued to cure this deficiency by teaching an electronic device with gaze detection that can be activated by motion. Crucially, Hodge discloses using visual user identification capabilities, such as facial recognition, to distinguish between authorized and unauthorized users, thereby preventing the device from inadvertently transitioning from standby to active mode for an unauthorized person. Petitioner asserted the combination of Ryu's motion-and-gaze-activated system with Hodge's user-specific recognition renders the challenged claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Hodge's user-specific recognition with Ryu's system to improve the security and privacy of Ryu's device. This modification would prevent unauthorized users from gaining access and ensure that information is presented only to an authorized user, accomplishing Hodge's stated security benefits.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the modification required only simple programming techniques. Ryu already taught detecting facial features (e.g., distance between eyes, nose width), and a POSITA could readily adapt this to compare against the stored facial features of a registered user, as taught by Hodge.

Ground 2: Claims 1, 6, 8, 10, 14, and 19 are obvious over Ryu in view of Hodge, in further view of Stallings.

• Prior Art Relied Upon: Ryu (Patent 10,540,013), Hodge (Application # 2010/0079508), and Stallings (Patent 8,331,992).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Ryu/Hodge combination by adding the teachings of Stallings to address claim limitations related to the content presented. Petitioner argued the combination of Ryu and Hodge teaches presenting a "gateway screen" before executing a preset function. Stallings teaches a mobile device that, upon being woken from a sleep/locked state by user input, displays a plurality of windows containing user-configurable information, such as Really Simple Syndication (RSS) feeds for weather, stocks, news, and other notifications. Petitioner contended it would have been obvious to modify the gateway screen of the Ryu/Hodge combination to display a plurality of content items arranged by a service (e.g., RSS feeds), as taught by Stallings.
  • Motivation to Combine: A POSITA would combine Stallings with the Ryu/Hodge system to improve its functionality. Displaying user-configurable RSS windows on the gateway screen would provide the user with a quick and concise overview of pertinent, up-to-date information before they proceed to perform a specific device function. This would be a predictable improvement over a more static gateway screen.
  • Expectation of Success: Success was expected because the Ryu/Hodge combination already disclosed displaying a screen with multiple pieces of information. A POSITA would have understood that replacing or augmenting this information with the dynamic, user-selected content windows taught by Stallings would be a straightforward modification involving known programming techniques.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The parties have agreed to stay the parallel district court litigation pending the outcome of this inter partes review (IPR), minimizing concerns about parallel proceedings. Petitioner further contended that the Final Written Decision (FWD) in this IPR is likely to issue before a trial would occur in the district court. Given the minimal investment in the parallel proceeding and Petitioner’s stipulation not to pursue the same invalidity grounds in court, Petitioner asserted that the Fintiv factors weigh heavily in favor of institution.

5. Relief Requested

• Petitioner requests the institution of an IPR and the cancellation of claims 1-6, 8-12, 14-16, and 18-20 of Patent 11,016,564 as unpatentable.