Apple Inc v. Smith Interface Technologies LLC

1. Case Identification

• Case #: IPR2024-01115
• Patent #: 10,656,754
• Filed: June 28, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael S. Smith
• Challenged Claims: 2, 27, 37, 58, 60-64, 67-79, and 223

2. Patent Overview

• Title: DEVICES AND METHODS FOR NAVIGATING BETWEEN USER INTERFACES
• Brief Description: The ’754 patent discloses user interface methods for touch screen devices. The technology centers on detecting a user's touch gesture and, in response, dynamically altering the visual display—specifically by blurring a background object—based on a change in the magnitude of the ongoing gesture to provide interactive visual feedback.

3. Grounds for Unpatentability

Ground 1: Claims 2, 27, 37, 58, 60-64, 67-79, and 223 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 the combination of Ahn and Chaudhri ’842 rendered all challenged claims obvious. Ahn was asserted to teach a mobile device with a touch screen that displays menus in response to a "touch and drag" gesture. Critically, Ahn’s figures illustrated that background UI objects, such as a clock widget, become blurred when a menu is opened. Petitioner contended, however, that Ahn showed only a static "before and after" blurring effect and did not disclose linking the degree of blur to the progress of the gesture. Chaudhri ’842 was presented as supplying this missing element. Chaudhri ’842 taught methods for transitioning between user interface states by providing visual feedback, specifically by changing an object's "optical intensity" (e.g., transparency, brightness, contrast) as a function of the user's progress in completing a gesture.

  • Petitioner argued that combining these teachings rendered independent claim 2 obvious. A person of ordinary skill in the art (POSITA) would have been motivated to apply Chaudhri ’842's dynamic feedback method to Ahn’s gesture-based menu system. This would result in an interface where the blur effect shown in Ahn is no longer static but instead changes progressively based on the magnitude of the user’s drag gesture, thus meeting the key limitation: "blur, based on a change in a magnitude of the gesture being detected."

  • For the dependent claims, Petitioner argued the combination taught the additional limitations. For example, Ahn explicitly taught using a "drag distance" threshold to trigger the display of a menu (addressing claim 27). The combination of Chaudhri ’842’s teachings on varying optical intensity (e.g., fading objects in and out) with general knowledge of "focus and context" techniques would have made it obvious to accompany the blur with fading (claim 58), sharpening, and magnification (claim 37) to further guide the user's attention.

  • Motivation to Combine: Petitioner asserted that a POSITA would combine the references to improve the usability of the interface disclosed in Ahn. Ahn showed a blur effect but provided no implementation details for how the effect should progress while the user performs the gesture. Chaudhri ’842 addressed this exact issue by teaching the use of dynamic optical effects to provide sensory feedback during a gesture, a well-known technique to improve user interaction. Both references shared the common goal of improving UI on small-screen mobile devices, making the combination a logical step to enhance Ahn's design.

  • Expectation of Success: The combination was argued to be a predictable application of a known solution to a known problem. Applying Chaudhri ’842's established method for providing visual feedback to Ahn’s user interface would have been a straightforward implementation for a POSITA, with a high expectation of successfully creating a more intuitive and responsive user experience.

4. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper. The petition emphasized that the primary prior art reference, Ahn, was never cited by the Applicant or considered by the Examiner during the original prosecution. Petitioner contended that this failure to consider a key reference that explicitly shows the combination of gestures and blurring constituted a material error in the examination, which strongly favors institution of the inter partes review (IPR).

• §314(a) (Fintiv): Petitioner asserted that the factors outlined in Apple Inc. v. Fintiv, Inc. weigh decisively against discretionary denial under 35 U.S.C. §314(a). The petition argued that the parallel district court litigation is in its infancy, with no significant resources expended and discovery just beginning. Furthermore, based on the median time-to-trial statistics for the Southern District of California (40.2 months), a Final Written Decision (FWD) in the IPR would issue long before any potential trial date. Petitioner also noted its intent to file a motion to stay the district court case, further weighing against denial.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 2, 27, 37, 58, 60-64, 67-79, and 223 of Patent 10,656,754 as unpatentable under 35 U.S.C. §103.