Apple Inc v. Smith Interface Technologies LLC

1. Case Identification

• Case #: IPR2024-01086
• Patent #: 10,656,754
• Filed: June 28, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael S. Smith
• Challenged Claims: 2, 8, 10, 16, 24, 26, and 224

2. Patent Overview

• Title: Devices and Methods for Navigating Between User Interfaces
• Brief Description: The ’754 patent relates to user interfaces for touch-screen devices. The technology involves altering a user's experience based on touch gestures by implementing display functions, such as blurring background objects in response to user input.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ahn in view of Chaudhri ’842 - Claims 2, 8, 10, 16, 24, 26, and 224 are obvious over Ahn in view of Chaudhri ’842.

• Prior Art Relied Upon: Ahn (Application # 2008/0207188) and Chaudhri ’842 (Application # 2007/0150842).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Ahn and Chaudhri ’842 teaches all limitations of the challenged claims. Ahn disclosed a mobile device with a touch screen that displays menus in response to a "touch and drag" gesture initiated from an edge of the screen. Critically, Ahn illustrated that opening such a menu causes a background object (e.g., a clock widget on the standby screen) to become blurred. However, Ahn did not explicitly describe the blurring as being progressive or tied to the gesture's magnitude. Chaudhri ’842 addressed improving user feedback during transitions between user interface states (like opening a menu). It taught using changes in "optical intensity" (e.g., transparency, blur) that correspond to the progress of a user's gesture to provide sensory feedback. Petitioner contended that combining Chaudhri ’842's teaching of progressive visual feedback with Ahn's user interface renders obvious the key limitation of blurring an object "based on a change in a magnitude of the gesture."
  • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Ahn and Chaudhri ’842 for several reasons. Both references sought to improve the usability of mobile devices. A POSITA implementing the blurring effect shown in Ahn would have naturally looked to a reference like Chaudhri ’842 for implementation details, such as providing progressive visual feedback to the user during the gesture. This combination represented applying a known technique (progressive blurring for user feedback) to a known system (Ahn's edge-menu UI) to achieve a predictable result. Furthermore, Petitioner argued that progressively varying the blur was one of a limited, predictable number of ways to implement the effect shown in Ahn.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying known user interface solutions to solve known usability problems and achieve predictable outcomes.
  • Key Aspects: The core of the argument rested on the Examiner's allowance being based on the feature of progressively blurring an object based on gesture magnitude, a feature Petitioner argued was explicitly motivated by combining Chaudhri ’842's teachings with the system disclosed in Ahn. For dependent claims, Petitioner mapped limitations to known "focus and context" techniques, such as blurring a background layer (claim 24) or keeping an object in focus while blurring others (claim 10).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a).
• §325(d) (Advanced Bionics): Petitioner asserted that institution is strongly favored because the primary reference, Ahn, was never cited by the Applicant or considered by the Examiner during prosecution. Therefore, the Examiner materially erred by allowing the claims without considering this key prior art and its combination with Chaudhri ’842.
• §314(a) (Fintiv): Petitioner argued that five of the six Fintiv factors weighed against discretionary denial. Key arguments included that the parallel district court litigation is in its infancy, a motion to stay would be filed, and the median time to trial in the Southern District of California (40.2 months) is significantly longer than the deadline for a Final Written Decision (FWD) in the inter partes review (IPR).

5. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 2, 8, 10, 16, 24, 26, and 224 of the ’754 patent as unpatentable.