Inter IKEA Systems BV v. Pointwise Ventures LLC

1. Case Identification

• Case #: IPR2025-00798
• Patent #: 8,471,812
• Filed: April 1, 2025
• Petitioner(s): Inter IKEA Systems B.V.
• Patent Owner(s): Pointwise Ventures, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Method and Apparatus for Pointing and Identification
• Brief Description: The ’812 patent describes a method for identifying an object using a pointing and identification device (PID), such as a cell phone. The method involves pointing the device at an object, capturing a digital image, communicating the image to a different location for analysis, and receiving a returned list of likely identified objects for user selection.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, and 10-12 are Anticipated by Darrell

• Prior Art Relied Upon: Darrell (Application # 2005/0162523).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Darrell discloses every element of the challenged claims. Darrell describes a “point-by-photography paradigm” using a camera-phone to capture an image of an object. This device functions as the claimed PID. The image is wirelessly sent to a remote computer for analysis, which satisfies the “communicating to a different location” limitation. The remote computer’s search engine then provides a “list of possible matching images” with associated URLs, which is returned to the user’s mobile device for review and selection. This, Petitioner asserted, meets the limitations of automatically identifying and returning a list of likely pointed-to objects.
  • Key Aspects: Petitioner contended that even if the "pointing and identification device" requires a reticle, Darrell discloses one in its viewfinder display for framing an object.

Ground 2: Claims 1-12 are Obvious over Boncyk in view of Darrell

• Prior Art Relied Upon: Boncyk (Application # 2004/0208372) and Darrell (Application # 2005/0162523).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Boncyk, which was considered during prosecution, discloses nearly all elements of the claimed method. Boncyk teaches a system where a user captures an image of an object with a mobile device, transmits it to a remote server for object recognition, and receives back information about the object. The only feature the examiner found lacking in Boncyk was the return of a "list of likely pointed-to objects" rather than a single identified object. Petitioner argued that Darrell explicitly remedies this by teaching the return of a "list of (candidate image, source URL) pairs" for the user to review.
  • Motivation to Combine: A POSITA would combine Boncyk with Darrell to improve the accuracy and user experience of Boncyk's system. Boncyk’s method of returning a single, software-determined match is prone to error, especially with objects that have a "similar appearance." Darrell teaches the benefit of returning a list, allowing the user to act as the "final judge" to select the correct match, thereby avoiding errors from a potentially incorrect automated identification.
  • Expectation of Success: The combination would have yielded predictable results, as both references operate in the same technical field of mobile image recognition and involve standard communication between a mobile device and a remote server.

Ground 3: Claims 1-12 are Obvious over Boncyk in view of Darrell and Fukuda

• Prior Art Relied Upon: Boncyk (Application # 2004/0208372), Darrell (Application # 2005/0162523), and Fukuda (Application # 2004/0125220).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the combination of Boncyk and Darrell. Petitioner argued that to the extent the Patent Owner asserts the claimed "pointing and identification device" requires a reticle for aiming that is not disclosed in Boncyk, Fukuda provides this element. Fukuda teaches a digital camera with a viewfinder that displays a reticle (a "rectangular area" or "pointer") that the user can move to define and illustrate the area of focus before taking a picture.
  • Motivation to Combine: A POSITA would incorporate Fukuda's reticle into the Boncyk/Darrell system to improve pointing accuracy. Since the Boncyk/Darrell systems rely on a user pointing a camera at an object of interest, adding a clear on-screen aiming mechanism like Fukuda's reticle would be a simple and well-known design choice to help users more accurately frame the intended object, leading to better recognition results.
  • Expectation of Success: Integrating a display reticle into a camera-phone was a routine and predictable modification with a high expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 5-9 based on Boncyk, Darrell, and the general knowledge of a POSITA, arguing it was common to take pictures of displays like TV screens, which would contain the claimed "spot," "sub-area," or "plurality of objects."

4. Key Claim Construction Positions

• Petitioner argued that the term "at least one actuation means" in claim 1 should be construed under pre-AIA 35 U.S.C. §112, ¶6 as a means-plus-function term.
  • Function: The recited functions are: (1) actuation by the user, (2) forming a digital image upon actuation, and (3) communicating the digital image upon actuation.
  • Corresponding Structure: Petitioner identified the corresponding structure disclosed in the ’812 patent as a computer user interface, such as a mouse, keyboard, or camera keyboard button(s), including trigger-style buttons.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both Fintiv (§314(a)) and §325(d).
  • Fintiv Factors: Petitioner argued these factors favor institution. The district court trial is scheduled for March 2026, creating minimal overlap with the IPR timeline, and litigation is in its earliest stages with no discovery served. Further, the IPR challenges claims 2-12, which were not asserted in the parallel litigation, reducing the overlap in issues.
  • §325(d) Factors: Petitioner asserted these factors also favor institution. Although Boncyk was considered during prosecution, the examiner was unaware of Darrell, which discloses the key "list" limitation that was the basis for allowance. Therefore, the examiner never considered the primary obviousness combination presented in the petition. Petitioner argued this is not a case of cumulative art but of new art that corrects an error in the original examination.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’812 patent as unpatentable.