PTAB

PGR2018-00019

MerchSource, LLC v. DDC Technology, LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Virtual Reality Viewer with Touchscreen Input
  • Brief Description: The ’117 patent is directed to a virtual reality (VR) viewer for use with a mobile electronic device. The patent describes an integrated user input mechanism that allows a user to cause a touch event on the device's touchscreen while it is enclosed within the viewer, purportedly improving on prior art magnet-based or separate input devices. The claims cover embodiments with both non-moveable (Claims 1-11) and moveable (Claims 12-20) input mechanisms.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are anticipated by Gigaom under 35 U.S.C. §102.

  • Prior Art Relied Upon: Gigaom (a June 28, 2014 online article including a public comment dated July 7, 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gigaom, specifically a comment by user "tobiasclaren," disclosed every limitation of claims 1-4. The comment suggested modifying a Google Cardboard VR viewer by adding "a metal tape at the separator between the eyes" that "has contact with the touch screen." Petitioner contended a person of ordinary skill in the art (POSITA) would understand this to describe a non-moveable, conductive input that extends from an internal point of contact with the mobile device's touchscreen to the viewer's exterior, allowing a user to complete a capacitive circuit by touching the external portion of the tape. This arrangement teaches the claimed housing, lenses, and non-moveable conductive touchscreen input in physical contact with the device.

Ground 2: Claims 12-14 and 18-20 are anticipated by Tech# under 35 U.S.C. §102.

  • Prior Art Relied Upon: Tech# (a YouTube video published May 10, 2015).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the Tech# video, which demonstrates a modification to a Google Cardboard viewer, anticipates the "moveable input" claims. The video shows an external sliding magnet (the "user input") conductively coupled via an aluminum foil strip to an internal coin stack. The user input is moveable between a first (default) position and a second (actuated) position. When moved to the second position, the internal coin stack is pulled into contact with moistened cotton swabs that are fixed to the viewer's central divider and touch the screen, thereby transferring a capacitive touch. This mechanism, Petitioner argued, discloses all elements of independent claim 12, including a user input accessible from the exterior that has a first and second position and a conductively coupled touchscreen input that makes physical contact with the screen when the user input is in the second position.

Ground 3: Claims 12-20 are obvious over Tech# in view of Compton under 35 U.S.C. §103.

  • Prior Art Relied Upon: Tech# (a 2015 YouTube video) and Compton (Application # 2013/0141360).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground asserts that even if Tech# does not anticipate all limitations, it would have been obvious to a POSITA to combine the teachings of Tech# and Compton. Tech# provides the basic framework of a VR viewer with a moveable, conductive input. Compton discloses a head-mounted display with more robust and reliable input mechanisms, such as a lever-and-rocker-arm assembly (button 510, arm 512, tip 610) made of durable, suitable conductive materials (e.g., conductive fabric or plastic) for interacting with a capacitive touchscreen.
    • Motivation to Combine: A POSITA would have been motivated to replace the rudimentary, "homemade" input mechanism of Tech# (which uses failure-prone elements like moistened cotton swabs and foil) with the more durable, reliable, and mechanically stable lever mechanism taught by Compton. The goal would be to improve the accuracy, consistency, and durability of the input, which was a known problem in the art.
    • Expectation of Success: The combination would involve substituting one known type of input mechanism for another to achieve the predictable result of a more reliable VR viewer input. Compton explicitly teaches the materials and mechanical principles for such an input, so a POSITA would have had a high expectation of success in integrating its superior mechanism into the Tech# viewer design.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 2-11 are obvious over Gigaom alone and claims 12-20 are obvious over Tech# alone. These arguments relied on similar rationales, contending that any missing elements represented simple design choices or predictable variations of the primary reference.

4. Key Claim Construction Positions

  • Petitioner argued for a construction of the term "a user input that ... has a first position and a second position" (claim 12).
  • The proposed construction requires that the "first position" and "second position" be physically distinct positions, such that the user input is required to move from the first to the second to actuate the touch event. This construction is central to the arguments concerning the moveable input mechanism disclosed in Tech# and Compton.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not deny institution based on a contractual no-challenge clause that the Patent Owner had previously asserted in a related matter.
  • Petitioner contended that, based on long-standing Supreme Court precedent (Lear, Inc. v. Adkins) and PTAB decisions, such clauses are unenforceable as they contradict the strong public policy interest in challenging and eliminating invalid patents. It argued that statutory grounds for denial of Post Grant Review (PGR) do not include contractual estoppel.

6. Relief Requested

  • Petitioner requested institution of a PGR and cancellation of claims 1-20 of the ’117 patent as unpatentable under 35 U.S.C. §§ 102 and 103.