PTAB

PGR2018-00020

MerchSource LLC v. DDC Technology LLC

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1. Case Identification

2. Patent Overview

  • Title: Virtual Reality Viewer with Capacitive Touchscreen Input
  • Brief Description: The ’184 patent describes a virtual reality (VR) viewer for use with a touchscreen mobile device. The invention addresses the problem of interacting with the device’s screen while it is enclosed in the viewer by providing an integrated user input mechanism—either non-movable or movable—that transfers a capacitive touch to the touchscreen.

3. Grounds for Unpatentability

Ground 1: Anticipation of Non-Movable Input Claims - Claims 1-3, 6, and 8-10 are anticipated under 35 U.S.C. §102 by Gigaom.

  • Prior Art Relied Upon: Gigaom (a June 28, 2014 online article titled "Why Google Cardboard Is Actually A Huge Boost For Virtual Reality" including a user comment dated July 7, 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Gigaom, which discusses the Google Cardboard VR viewer, anticipates the non-movable input claims. The core of the argument relied on a reader's comment suggesting an alternative to the viewer’s magnet-based input: placing "a metal tape at the separator between the eyes" that "has contact with the touch screen." Petitioner argued a POSITA would understand this as describing a fixed, conductive input on the viewer's central divider, accessible from the exterior, which directly maps to the limitations of independent claim 1.
    • Key Aspects: The anticipation argument for this set of claims hinges on a public comment posted to a news article, which Petitioner contended constitutes a printed publication disclosing all elements of the claimed non-movable embodiment.

Ground 2: Anticipation of Movable Input Claims - Claims 12, 15-17, 19, and 20 are anticipated under 35 U.S.C. §102 by Tech#.

  • Prior Art Relied Upon: Tech# (a YouTube video titled "Use Google Cardboard Without Magnetometer" published on May 10, 2015).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that the Tech# video, which demonstrates a modification to a Google Cardboard viewer, anticipates the movable input claims. The video shows an external sliding magnet (the user input) attached to an aluminum foil strip that passes through a cutout in the viewer. Moving the magnet from a first to a second position pulls an internal coin stack into contact with moistened cotton swabs fixed to the central divider, which in turn contact the touchscreen to register a touch. Petitioner argued this mechanism meets all limitations of independent claim 12, including a user input with distinct first and second positions that causes physical contact with the touchscreen.

Ground 3: Obviousness of Movable Input Claims - Claims 12-20 are obvious over Tech# in view of Compton.

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Tech# provides the basic framework of a VR viewer with a movable, capacitive input mechanism. Compton, which is directed to a head-mounted display, discloses a more robust and reliable lever-based input mechanism. Compton's lever, when actuated by an external button, moves a conductive tip to contact the mobile device's touchscreen.
    • Motivation to Combine: A POSITA would combine the references to improve the rudimentary input mechanism of Tech# (foil, coins, and wet cotton swabs). Compton was analogous art that addressed the same technical problem—providing reliable input to an enclosed touchscreen. A POSITA would have been motivated to replace the imprecise and non-durable mechanism of Tech# with the more stable and mechanically reliable lever system of Compton to create a better-functioning, commercially viable product.
    • Expectation of Success: The combination was a predictable substitution of one known input mechanism for another to improve performance. A POSITA would have had a high expectation of success in integrating Compton's proven lever design into the Cardboard-style viewer of Tech#, as it involved applying known mechanical principles to achieve a more reliable input.

  • 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 grounds relied on arguments that any missing elements represented mere design choices or predictable variations for a POSITA.

4. Key Claim Construction Positions

  • "user input that ... and has a first position and a second position" (Claim 12): Petitioner argued this term should be construed to mean that the user input itself must physically move between two different positions. This construction was central to the arguments for the movable input claims (12-20) and to differentiate them from the static input of claims 1-11.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date: Petitioner contended that claims 10 and 12-20 are not entitled to the ’184 patent's earliest priority date of July 16, 2014 (from the ’376 provisional application). It was argued that the key limitations for these claims—the movable input with a "first and second position" and the "cut-out" for user input access—were not disclosed until the later ’857 provisional application, filed May 14, 2015. This later effective date was critical for establishing the Tech# video (published May 10, 2015) as prior art against these claims.

6. Arguments Regarding Discretionary Denial

  • Petitioner preemptively argued that the Board should not deny institution based on any alleged contractual agreement between the parties that Petitioner would not contest the validity of the ’184 patent. Citing Supreme Court and PTAB precedent, including Lear v. Adkins, Petitioner asserted that such "no-challenge" clauses are unenforceable as they contravene the strong public policy interest in challenging and eliminating invalid patents.

7. Relief Requested

  • Petitioner requested institution of a Post-Grant Review (PGR) and cancellation of claims 1-20 of Patent 9,811,184 as unpatentable.