PTAB

IPR2023-00664

Masimo Corp v. Apple Inc

Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Navigating Between User-Interface Screens
  • Brief Description: The ’352 patent discloses methods for navigating among different user-interface screens (e.g., wake, home, widget, and control panel screens) on a touchscreen device using directional swipe gestures. The claimed invention centers on mapping specific swipe directions from a wake screen to display either a home screen or a widget screen.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chae and Narendra - Claims 1, 2, 6, 9, 10, 14, 17, 18, and 22 are obvious over Chae in view of Narendra.

  • Prior Art Relied Upon: Chae (Application # 2012/0129495) and Narendra (Application # 2013/0305351).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Chae, which discloses a dual-SIM smartphone, teaches the core limitations of claim 1. Chae shows a user swiping in a first direction (bottom-to-top) from a wake screen to display a home screen with application icons. It also discloses swiping in a second, different direction (top-to-bottom) from the wake screen to display a different screen containing user interface objects with application content (i.e., widgets). Narendra confirms that using directional swipes to navigate between multiple screens containing icons and widgets was well-known prior art for standard single-SIM smartphones.
    • Motivation to Combine: A POSITA would combine Chae’s specific multi-directional navigation from a wake screen with Narendra’s teaching that such navigation is a common feature on all smartphones, not just dual-SIM models. The motivation was to apply a known, efficient navigation method to improve user experience and convenience on a standard device.
    • Expectation of Success: A POSITA would have a high expectation of success, as combining these known software-based user interface features involved applying established functions for their predictable results.

Ground 2: Obviousness over Chae, Narendra, and Shuttleworth - Claims 3-5, 11-13, and 19-22 are obvious over Chae and Narendra in view of Shuttleworth.

  • Prior Art Relied Upon: Chae (Application # 2012/0129495), Narendra (Application # 2013/0305351), and Shuttleworth (Application # 2014/0189577).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Chae/Narendra combination to address claims reciting specific navigational paths, such as returning to the home screen from the widget screen. Shuttleworth teaches using a consistent, dedicated directional swipe gesture from any screen to access the home screen, effectively replacing a physical home button.
    • Motivation to Combine: A POSITA would combine Shuttleworth's "universal home gesture" with the Chae/Narendra system to enhance UI consistency and user-friendliness. Providing a single, learnable gesture to return to the home screen from any location (like the widget screen) is an obvious improvement over inconsistent or multi-step navigation methods.
    • Expectation of Success: A POSITA would expect success, as implementing a dedicated swipe gesture for a specific action was a common and easily configurable software design choice.

Ground 3: Obviousness over Chae, Narendra, and Karunamuni - Claims 7, 8, 15, 16, 23, and 24 are obvious over Chae and Narendra in view of Karunamuni.

  • Prior Art Relied Upon: Chae (Application # 2012/0129495), Narendra (Application # 2013/0305351), and Karunamuni (Application # 2015/0346976).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses claims that add a "control panel user interface." Karunamuni discloses a smartphone control center with controls for device functions like screen brightness and volume, which is accessible from the lock screen via a directional swipe gesture.
    • Motivation to Combine: A POSITA would combine Karunamuni’s control panel with the base Chae/Narendra system to provide users with quick and convenient access to common device settings—a well-known method for improving usability. To avoid ambiguity and user confusion, a POSITA would be motivated to assign a unique swipe direction to access the control panel, distinct from the directions used to access the home and widget screens.
    • Expectation of Success: A POSITA would expect success in integrating this known UI feature, as it was a straightforward software implementation.
  • Additional Grounds: Petitioner asserted alternative obviousness challenges based on adding Hong (Application # 2015/0095819) and/or Android (a 2012 YouTube video) to the primary combinations. These references were used to further support the POSITA's understanding of widgets and standard wake-up processes in the prior art.

4. Key Claim Construction Positions

  • “wake screen,” “home screen,” “widget screen,” and “control panel user interface”: Petitioner argued these terms are not mere labels but are defined by the functional language recited in the claims. For example, a “home screen user interface” is defined by the claim as being different from the wake screen and including a "plurality of application icons." Similarly, a "widget screen user interface" is distinguished by including objects that contain "application content."
  • “input that is directed to a portion of” a user interface: Petitioner proposed this means the input is directed to part of the touchscreen display itself, rather than an external physical button. The construction does not require the input to be at a predefined location on the screen, such as a virtual home button affordance.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, stating that factors 2, 3, 4, and 6 strongly favor institution. The parallel district court litigation was filed less than five months prior, and the median time to trial is nearly three years, meaning a final written decision in the inter partes review (IPR) would issue long before trial. Petitioner also stipulated that it will not pursue the same invalidity grounds in district court if the IPR is instituted. Finally, Petitioner asserted the petition presents a compelling case for unpatentability using prior art that is materially better than what the Examiner considered during prosecution.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-24 of the ’352 patent as unpatentable under 35 U.S.C. §103.