Apple Inc v. Smith Interface Technologies LLC

1. Case Identification

• Case #: IPR2024-01088
• Patent #: 10,656,758
• Filed: June 26, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael S. Smith
• Challenged Claims: 1, 9, 12, 19-22, 24-32, 35-43, 47, 57-59, 63, 71, 74, 81-84, 86-94, 97-105, 109, 119-121, 124

2. Patent Overview

• Title: Gesture-Equipped Touch Screen System, Method, and Computer Program Product
• Brief Description: The ’758 patent describes a touch screen user interface that distinguishes between different single-finger touch inputs on an application icon to trigger different actions. The system evaluates criteria like touch duration and movement to differentiate between a tap (to launch the app), a short hold (to display action options), a longer hold (to perform an operation like entering a reconfiguration mode), and a drag (to move the icon).

3. Grounds for Unpatentability

Ground 1: Obviousness over Chaudhri, Martyn, and Griffin - All Challenged Claims are obvious over Chaudhri in view of Martyn and Griffin.

• Prior Art Relied Upon: Chaudhri (Application # 2011/0252372), Martyn (Application # 2004/0051726), and Griffin (Application # 2011/0248948).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the independent claims’ core features were well-known and disclosed in the prior art. Chaudhri taught a touch-screen device with an application launching interface where a short "tap" gesture launches an application, a longer "touch-and-hold" gesture enters a "reconfiguration mode" for reorganizing icons, and a "drag" gesture moves an icon. To add the claimed functionality of displaying action options, Petitioner asserted a POSITA would look to Martyn, which taught displaying a contextual sub-menu of common functions (an "App Snapshot") in response to a "press and hold" on an application name. To distinguish between the multiple duration-based gestures (tap, hold for menu, longer hold for reconfiguration), Petitioner argued a POSITA would apply the teachings of Griffin, which disclosed using predetermined "touch thresholds" (e.g., duration) to trigger different functionalities.
  • Motivation to Combine: A POSITA would combine Martyn with Chaudhri to improve usability and efficiency, as providing a contextual menu for shortcuts was a common and well-known solution to streamline user interaction. A POSITA would combine Griffin's thresholding concept as a predictable solution to the known problem of distinguishing between multiple duration-based gestures, a problem created by combining Martyn's "press and hold" menu with Chaudhri's existing "tap" and "touch-and-hold" functions.
  • Expectation of Success: Petitioner contended that combining these known user interface techniques to achieve their respective, predictable functions would have carried a high expectation of success, as it involved applying known solutions to known problems in the art.

Ground 2: Obviousness over Chaudhri, Martyn, Griffin, and Os - All Challenged Claims are obvious over the combination in Ground 1 further in view of Os.

• Prior Art Relied Upon: Chaudhri (Application # 2011/0252372), Martyn (Application # 2004/0051726), Griffin (Application # 2011/0248948), and Os (Application # 2011/0167382).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 1 and introduced Os as an alternative basis for rendering obvious the claim limitation of moving an application icon after entering the reconfiguration mode. Specifically, Os addressed the scenario where a user performs the touch-and-hold gesture (to enter reconfiguration mode) and the subsequent drag gesture (to move the icon) as a single, continuous touch input without lifting their finger. Os taught implementing "continuous multipart gestures," such as a "tap and hold gesture" followed by "subsequent lateral movement of the contact," which directly corresponds to the claimed functionality.
  • Motivation to Combine: A POSITA would be motivated to incorporate Os's teaching of continuous multipart gestures to make Chaudhri's interface more intuitive and efficient. Allowing a user to enter the reconfiguration mode and immediately begin dragging an icon with a single continuous motion would be a predictable improvement, reducing finger movements and aligning with user expectations for direct manipulation interfaces.
  • Expectation of Success: Petitioner asserted that since continuous multipart gestures were a well-known technique for performing related tasks by 2011, a POSITA would have reasonably expected to successfully implement this feature in the context of Chaudhri’s icon rearrangement mode.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) (based on Advanced Bionics) is unwarranted because the Examiner did not substantively consider Chaudhri or the asserted combinations during prosecution, and the allowance was based on a material error of failing to properly search and apply the art.
• Petitioner further argued that denial under §314(a) (based on Fintiv) is inappropriate because several factors weigh against it. Petitioner intended to file a motion to stay the parallel district court litigation, which is in its early stages. Furthermore, the median time to trial in the relevant district (S.D. Cal.) is 40.2 months, making it likely that a Final Written Decision would issue well before any potential trial.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 9, 12, 19-22, 24-32, 35-43, 47, 57-59, 63, 71, 74, 81-84, 86-94, 97-105, 109, 119-121, and 124 of the ’758 patent as unpatentable.