Google LLC v. DDC Technology LLC

1. Case Identification

• Case #: IPR2023-00709
• Patent #: 10,528,199
• Filed: March 29, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): DDC Technology, LLC
• Challenged Claims: 1-2, 4-6, 17-26, 30, 34-35, 37-39

2. Patent Overview

• Title: Virtual Reality Viewer and Methods
• Brief Description: The ’199 patent discloses a virtual reality (VR) viewer that holds a mobile electronic device, such as a smartphone, for displaying content. The patent is directed to a mechanical input mechanism that allows a user to interact with the device’s touchscreen while it is enclosed within the viewer housing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kondo in view of Chu - Claims 1-2, 4-6, 17-26, 30, 34-35, and 37-39 are obvious over Kondo in view of Chu.

• Prior Art Relied Upon: Kondo (JP 3176588) and Chu (Application # 2013/0082963).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kondo disclosed the fundamental structure of the claimed invention: a VR viewer for a smartphone with a frame, horizontally-spaced lenses for stereoscopic viewing, and an external user input coupled to a touchscreen input. However, Kondo’s input mechanism is electrical (using conductive pads that are always in contact with the screen) and only works with capacitive touchscreens. The key distinction addressed by the combination is the mechanical nature of the input. Petitioner asserted that Chu disclosed a mechanical input mechanism (an actuator with a probe head) for a smartphone housing that only contacts the touchscreen when activated by a user (i.e., in a "second position"). Petitioner contended that replacing Kondo's electrical input with Chu's mechanical input would result in the claimed invention. This combination allegedly teaches all limitations of independent claims 1 and 30, including a "touchscreen input constructed of material and having a surface such that only a portion of the surface...is configured to contact a central region of the touchscreen when the...input is activated." Kondo established that the operational input area is central, and Chu’s probe head demonstrated a mechanism that only makes contact upon activation.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would be motivated to combine Kondo and Chu for several reasons. The primary motivation was to increase the viewer's usability and commercial appeal by making it compatible with both capacitive and resistive touchscreens, as Chu's mechanical input works with both types, unlike Kondo’s capacitive-only system. Both Kondo and Chu addressed the same problem of providing external input to an enclosed touchscreen, making Chu a natural source for a POSITA to consult. Additional motivations included incorporating Chu's more versatile input, which allows for variable pressure and swipe gestures, and leveraging its waterproof design to create a more durable and robust product.
  • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success in this combination because both Kondo and Chu involved simple, well-understood mechanical components. Integrating Chu’s mechanical actuator into Kondo’s viewer housing would be a routine modification requiring predictable results and little to no invention.

4. Key Claim Construction Positions

• "Virtual Reality Viewer": Petitioner proposed that this term, which appears in all challenged claims, should be construed as "A viewer of an artificial environment," where "viewer" includes both handheld devices and headsets. This construction was based on the patent’s own description, which explicitly stated that "viewers can be hand-held devices" or "worn on a user's head." The construction sought to clarify that the claims were not limited to a specific form factor, consistent with the technology at the time.

5. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments that discretionary denial would be improper under both 35 U.S.C. §314(a) (Fintiv factors) and §325(d).
• Fintiv Analysis: Petitioner argued that the factors strongly favored institution. The parallel district court litigation was in its infancy, having been recently transferred to a new venue (NDCA) with no trial date scheduled and no substantial investment made by the court or the parties. Petitioner contended this early stage meant a final written decision in the IPR would issue long before any potential trial.
• §325(d) Analysis: Petitioner asserted that denial under §325(d) was unwarranted because the primary references, Kondo and Chu, were not previously considered by the USPTO during the prosecution of the ’199 patent. Therefore, the petition raised new questions of patentability that had not been before the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4-6, 17-26, 30, 34-35, and 37-39 of the ’199 patent as unpatentable.