Lenovo United States Inc v. Telefonaktiebolaget LM Ericsson

1. Case Identification

• Case #: IPR2025-00009
• Patent #: 10,972,654
• Filed: October 11, 2024
• Petitioner(s): Lenovo (United States) Inc.
• Patent Owner(s): Telefonaktiebolaget LM Ericsson
• Challenged Claims: 1, 3, 9, 10, 15, and 16

2. Patent Overview

• Title: Mobile Terminal and Method of Controlling Thereof
• Brief Description: The ’654 patent describes a mobile terminal with a camera and a touchscreen. The technology enables a user to set a focus point by touching the screen and then adjust an image capturing setting, such as brightness, by dragging an object on the screen while the focus point is maintained.

3. Grounds for Unpatentability

Ground 1: Obviousness over Park and Kim - Claims 1, 3, 9, 10, 15, and 16 are obvious over Park in view of Kim.

• Prior Art Relied Upon: Park (Korea Application # 10-2010-0027689) and Kim (Application # 2009/0015703).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Park discloses a mobile terminal with a camera, touchscreen, and controller that displays a preview image. Park teaches displaying a "focus region indicator" (the claimed auto focus guide) and a scroll bar for adjusting image settings like zoom and brightness. Dragging the scroll bar adjusts the setting value. However, Park's method for positioning the focus indicator involves a touch operation on the scroll bar, not directly on the desired focus point in the image. Petitioner asserted that Kim remedies this by explicitly teaching the selection of a focus area "by touching a point of the touch screen with his finger."
  • Motivation to Combine: A POSITA would combine Park and Kim to improve the user interface of Park's device. Park's system for adjusting focus is cumbersome, whereas Kim's touch-to-focus is a known, more intuitive method for achieving the same result. A POSITA would be motivated to substitute Park's focus selection method with Kim's superior method to create a more user-friendly and efficient device, a predictable improvement.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying a known technique (Kim's touch-to-focus) to a similar device (Park's mobile terminal) to yield predictable results. Implementing touch-based focus selection on a device with a touchscreen and camera was a well-understood technology.

Ground 2: Anticipation/Obviousness over Panasonic - Claims 1, 3, 9, 10, 15, and 16 are anticipated by, or obvious over, Panasonic.

• Prior Art Relied Upon: Panasonic (Operating Instructions for Digital Camera Model No. DMC-G2K, published 2010).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that the Panasonic camera manual discloses every limitation of the challenged claims. The manual describes a handheld digital camera (a mobile terminal) with a touchscreen and controller. It explicitly teaches a "1-area-focusing" mode where a user can touch a subject on the preview screen to move the Auto Focus (AF) area to that specific point. The manual further illustrates a draggable slide bar on the screen used to change the size of the AF area (an image capturing setting). Critically, Petitioner argued that figures in the manual show the AF area remains centered at its specific point while its size is adjusted via the slide bar, thus meeting the "while maintaining the displayed auto focus guide" limitation. The manual also shows similar slide bars for adjusting brightness and color.
  • Key Aspects: This ground asserted that a commercially available product's user manual, predating the patent's priority date, taught the entire claimed invention. Petitioner noted that the Patent Owner's expert in a related ITC proceeding acknowledged that Panasonic shows an auto focus guide appearing at the specific point the user touched in response to a first touch.

Ground 3: Obviousness over Kim and Panasonic - Claims 1, 3, 9, 10, 15, and 16 are obvious over Kim in view of Panasonic.

• Prior Art Relied Upon: Kim (Application # 2009/0015703) and Panasonic (Operating Instructions for Digital Camera Model No. DMC-G2K, published 2010).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative combination where Kim provides the base device: a portable terminal with a camera, touchscreen, and a controller that enables touch-to-focus functionality. Petitioner argued that while Kim teaches setting focus via touch, it does not explicitly disclose adjusting other image settings using a draggable on-screen indicator like a slide bar. Panasonic supplies this missing element by teaching the use of a draggable slide bar to adjust various image capture settings, including AF area size, brightness, and color, on a similar camera device.
  • Motivation to Combine: A POSITA would combine Kim and Panasonic to streamline the process of adjusting image settings. Adding Panasonic's well-known slide bar interface to Kim's device would be a simple, predictable design choice to improve usability and consolidate controls onto the main screen, allowing a user to adjust multiple parameters without navigating complex menus.
  • Expectation of Success: Success would be expected because the combination merely integrates a conventional UI element (a slide bar for setting adjustment from Panasonic) into a standard mobile camera system (from Kim). Both technologies were well-known and their integration would yield the predictable result of a more efficient user interface.

4. Key Claim Construction Positions

• Petitioner argued that no express claim constructions are necessary. However, Petitioner preemptively addressed a potential dispute over the term "while maintaining the displayed auto focus guide at the specific point."
• Petitioner contended this phrase only requires the position of the auto focus guide to remain fixed while a setting is adjusted. It argued against any interpretation that would also require the guide's size or other characteristics to remain unchanged, citing the prosecution history where this language was added simply to distinguish prior art that moved the location of the focus guide.

5. Arguments Regarding Discretionary Denial

• §325(d) Denial: Petitioner argued denial under §325(d) is inappropriate because the asserted prior art (Park, Kim, and Panasonic) was never cited or substantively evaluated by the Examiner during prosecution of the ’654 patent. Therefore, the arguments and art are not the same or substantially the same as what was previously before the office.
• Fintiv Denial: Petitioner argued denial under Fintiv is unwarranted. The petition asserted compelling evidence of unpatentability. Furthermore, the parallel district court litigation has been stayed since February 2024 and is expected to remain stayed until at least March 2025, well after the statutory deadline for a Final Written Decision in the IPR. Consequently, factors such as the trial date proximity and investment in the parallel proceeding strongly favor institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3, 9, 10, 15, and 16 of Patent 10,972,654 as unpatentable.