Apple Inc v. Smith Interface Technologies LLC

1. Case Identification

• Case #: IPR2024-01118
• Patent #: 10,656,754
• Filed: June 28, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael S. Smith
• Challenged Claims: 2, 80-83, 88, 90, 94, 95, and 97-100

2. Patent Overview

• Title: Devices and Methods for Navigating Between User Interfaces
• Brief Description: The ’754 patent discloses methods for navigating user interfaces on touch-screen devices. The technology involves detecting touch gestures and, in response, altering the display by, for example, blurring background objects or moving interface elements to transition between different user interface states or menus.

3. Grounds for Unpatentability

Ground 1A: Claim 2 is 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 Ahn discloses a mobile device with a touch screen that displays multiple objects (e.g., a clock widget and icons on a standby screen) and detects a "touch and drag" gesture to reveal a menu. Petitioner asserted that Ahn explicitly illustrates the background clock widget becoming blurred when a menu is opened. Chaudhri ’842 teaches transitioning between user interface states in response to a gesture and using changes in optical intensity (e.g., transparency, brightness, contrast) to provide visual feedback indicating the gesture’s progress. Petitioner contended that combining these references renders obvious claim 2’s central limitation: blurring a background object based on a change in the magnitude of a gesture being detected.
  • Motivation to Combine: A POSITA would combine Chaudhri ’842 with Ahn to implement the blurring effect already shown in Ahn. Because Ahn does not explain how the blurring is implemented, a POSITA would have looked to known techniques like those in Chaudhri ’842 to provide visual feedback to the user, thereby improving the interface's usability. This would have been a predictable application of known user interface design principles to enhance an existing feature.
  • Expectation of Success: Applying Chaudhri ’842’s well-understood visual feedback methods to Ahn’s user interface system would predictably result in a more intuitive user experience without requiring undue experimentation.

Ground 1B: Claims 83, 88, 90, 94, and 95 are obvious over Ahn, Chaudhri ’842, and Hinkley

• Prior Art Relied Upon: Ahn, Chaudhri ’842, and Hinkley (Application # 2011/0209093).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Ahn and Chaudhri ’842. Petitioner argued that Hinkley adds the teachings for dependent claim 83, which requires displaying a menu when both a distance and a duration threshold for a gesture are exceeded. Hinkley describes "bezel gestures" that are analogous to Ahn's edge-based gestures and explicitly teaches implementing a time delay (duration threshold) and considering the finger's location (distance threshold) before deploying a bezel menu.
  • Motivation to Combine: A POSITA would integrate Hinkley's gesture recognition techniques into the Ahn/Chaudhri ’842 system to create a more robust and error-resistant user interface. Distinguishing intentional gestures from accidental touches by using both duration and distance thresholds was a known method for improving usability. Given the similarity between Ahn's and Hinkley's edge-based menus, this combination represented a simple substitution of known elements for a predictable result.
  • Expectation of Success: Incorporating Hinkley’s specific gesture thresholds into Ahn’s system was a straightforward design choice with a high expectation of success in improving gesture recognition.

Ground 1C: Claims 80-82 are obvious over Ahn, Chaudhri ’842, and Shiplacoff

• Prior Art Relied Upon: Ahn, Chaudhri ’842, and Shiplacoff (Application # 2010/0095240).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground modifies the base combination of Ahn and Chaudhri ’842 by adding Shiplacoff to address the "multitasking interface" limitations of claims 80-82. Petitioner asserted Shiplacoff discloses a "card" metaphor for mobile devices, allowing a user to navigate between multiple active applications. This card-based system, which is optimized for switching between activities, was argued to be a multitasking interface.
  • Motivation to Combine: A POSITA would combine Shiplacoff's teachings with the Ahn/Chaudhri ’842 system to provide a solution for managing multiple applications, a feature not detailed in Ahn. Shiplacoff's card metaphor was a known paradigm to solve the problem of navigating active applications on small screens. A POSITA would be motivated to integrate this established solution to enhance Ahn's system with multitasking capabilities for the express benefit of improved functionality.
  • Expectation of Success: Integrating a known multitasking interface (Shiplacoff) with a gesture-based menu system (Ahn) was a predictable way to create a more powerful and versatile mobile device interface.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1D) against claims 97-100 based on the combination of all four references: Ahn, Chaudhri '842, Hinkley, and Shiplacoff.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is unwarranted because the primary prior art reference, Ahn, was never cited or considered by the Examiner during prosecution. Petitioner contended this represents a material error in allowance, as the combination of Ahn and Chaudhri ’842 teaches the key features the Examiner found patentable.
• Petitioner also argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in a very early stage, no trial date is set, and the projected trial is years after a Final Written Decision would issue. Petitioner further noted its intent to file a motion to stay the litigation, weighing in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 2, 80-83, 88, 90, 94, 95, and 97-100 of the ’754 patent as unpatentable under 35 U.S.C. §103.