Apple Inc v. Smith Interface Technologies LLC

1. Case Identification

• Case #: IPR2024-01091
• Patent #: 10,936,114
• Filed: June 26, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael S. Smith
• Challenged Claims: 1, 27, 30, 32, 34, 59, 62, and 64

2. Patent Overview

• Title: GESTURE-EQUIPPED TOUCH SCREEN SYSTEM, METHOD, AND COMPUTER PROGRAM PRODUCT
• Brief Description: The ’114 patent discloses systems and methods for touch screen interfaces where the size of a displayed object is reduced in response to a detected gesture. The key feature is that the resulting size is inversely related to the magnitude of the duration of the gesture.

3. Grounds for Unpatentability

Ground 1A: Anticipation/Obviousness over Kim - Claims 1, 27, and 32 are anticipated by or obvious over Kim.

• Prior Art Relied Upon: Kim (Application # 2010/0302281).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim, which discloses a "touch-based zooming control method" for mobile devices, teaches all limitations of the independent claims. Kim described a "hold event" (a long press) that can be assigned to a "continuous zoom-out function." Petitioner asserted that this continuous zoom-out, which progresses as the hold is maintained, is a scaling operation that includes a reduction in size. As the hold gesture's duration increases, the object's size continuously decreases, thereby teaching the claimed inverse relationship between the gesture duration and the object's size. Kim also disclosed different operations for different gestures, such as a "double tap event" to return to a basic magnification, meeting the limitations for performing different operations based on gesture duration thresholds.
  • Key Aspects: This ground asserted that Kim alone provides a comprehensive disclosure of gesture-based zooming where the duration of the input directly controls the scaling operation, rendering the core inventive concept of the ’114 patent unpatentable.

Ground 2A: Obviousness over Kim in view of Bowens - Claims 1, 27, and 32 are obvious over Kim in view of Bowens.

• Prior Art Relied Upon: Kim (Application # 2010/0302281) and Bowens (Application # 2009/0273571).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground leveraged Kim's gesture-based zooming system and supplemented it with Bowens's specific teachings on gesture recognition. Bowens disclosed a detailed "state machine gesture recognition algorithm" for interpreting user inputs on a touch sensor. It explicitly described using timers and timeouts to distinguish between different gestures based on their duration, such as a tap, double tap, short press, and long press. The combination of Kim's zoom function responsive to a "long press" with Bowens's algorithm for detecting that long press was argued to render the claimed invention obvious.
  • Motivation to Combine: A POSITA would combine these references because Kim taught the desirability of responding to different gestures (e.g., tap, long press) but lacked specific implementation details for how to reliably distinguish between them. Bowens provided this missing detail with its well-known state machine algorithm. A POSITA would have been motivated to integrate Bowens's robust gesture detection method into Kim's system to improve its functionality and reliability.
  • Expectation of Success: Petitioner argued success would be expected because it involved applying a known gesture recognition algorithm (Bowens) to a device with gesture-based functionality (Kim). This combination would yield predictable results without altering the fundamental operations of either system.

Ground 1C: Obviousness over Kim in view of Burrough - Claim 30 is obvious over Kim in view of Burrough.

• Prior Art Relied Upon: Kim (Application # 2010/0302281) and Burrough (Application # 2010/0156818).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted claim 30, which required a "vibrator." Petitioner argued that the combination of Kim's gesture-based scaling with Burrough's teachings on haptic feedback rendered this claim obvious. Burrough taught a portable multi-touch device with a haptic actuator that provides a "vibro-tactile response" to user input, including zoom gestures, to make the user experience more efficient and realistic. The argument was that adding Burrough's vibrator to Kim's device would result in the claimed invention.
  • Motivation to Combine: A POSITA would combine these references to improve the user experience of Kim's device. Touch screens like Kim's lack the inherent tactile feedback of physical buttons. Burrough explicitly addressed this deficiency by teaching the addition of haptic feedback to confirm user actions like a zoom gesture. A POSITA would have been motivated to incorporate this known solution to enhance the usability of Kim's interface.
  • Expectation of Success: Success would be reasonably expected, as it involved integrating a known component (a haptic actuator from Burrough) into a standard portable electronic device (Kim) to provide a known benefit (tactile feedback).

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Lang (Application # 2006/0139320) to teach the implementation of Kim's system in a "smart watch," as well as more complex three- and four-way combinations of Kim, Bowens, Lang, and Burrough to meet various claim limitations.

4. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued against discretionary denial, asserting that none of the prior art or combinations relied upon in the petition were cited by the examiner or substantively discussed during prosecution. Petitioner contended that the claims were allowed due to a material error by the examiner, who failed to appreciate the teachings of the asserted prior art.
• §314(a) (Fintiv): Petitioner argued that the Fintiv factors strongly weighed against discretionary denial. Key arguments included: Petitioner's intent to file a motion to stay the parallel district court litigation; the median time to trial in the Southern District of California (40.2 months) is significantly longer than the statutory deadline for a Final Written Decision; and the parallel litigation is in its infancy, with minimal resources expended and discovery just beginning.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 27, 30, 32, 34, 59, 62, and 64 of the ’114 patent as unpatentable.