“Last Monday, Apple was finally successful in getting two IPRs instituted on Nartron’s ‘183 patent after failing five other times—a classic example of multiple petitions creating havoc for a patent owner.”

Last week, the Patent Trial and Appeal Board (PTAB) issued 23 institution-phase decisions in inter partes review (IPR) proceedings, resulting in 14 IPR institutions and nine IPR denials. Two of the instituted IPRs were brought by Facebook, which is seeking to invalidate claims of a photo tagging patent asserted against it in district court by Blackberry. Apple saw two of three IPRs instituted against Firstface, but the consumer tech giant was still successful in challenging claims from both of the fingerprint authentication patents it was seeking to invalidate. Apple also saw two successful IPR institutions against Nartron after failing in a series of petitions challenging the same patent.

Facebook, Inc. v. Blackberry Limited

On August 5, a panel of administrative patent judges (APJs) instituted two IPR proceedings filed by social media giant Facebook and its subsidiaries WhatsApp and Instagram. Both IPRs challenge the same 12 claims of Blackberry’s U.S. Patent No. 8279173, User Interface for Selecting a Photo Tag. The ‘173 patent, which is directed to a user interface for selecting tags to associate with photos on social networking or photo sharing applications, has been asserted by Blackberry against Facebook in a lawsuit that was filed in the Central District of California in March 2018.

In the lawsuit, which includes allegations that Facebook and its subsidiaries infringed upon claims of seven Blackberry patents, Blackberry accused Facebook and Instagram of infringing and actively inducing infringement of the ‘173 patent. Blackberry alleged that the photo tagging service offered by defendants met all limitations of claim 1 of the ‘173 patent including a method of selecting a photo tag for a tagged photo, displaying a tag list matching a search string and displaying type indicators for each tag. Facebook should have known of the ‘173 patent as early as March 2014, when the USPTO cited the patent to the company during prosecution of its own patent application. The photo tagging service available through Facebook and Instagram allegedly infringed upon claims 1, 2, 7, 8, 13 and 14 of the ‘173 patent.

If either of the IPRs filed by Facebook are successful, each of the ‘173 patent claims asserted by Blackberry will be invalidated on Section 103 obviousness grounds. In IPR2019-00516, Facebook asserts prior art challenges that primarily rely on combinations involving either U.S. Patent No. 7945653, Tagging Digital Media (“Zuckerberg”) or U.S. Patent No. 7415662, Digital Media Management Apparatus and Methods (“Rothmuller”). In instituting the IPR, the APJ panel was persuaded that Zuckerberg identified two different tag sources from either a friends list or a text list. The PTAB determined that Facebook demonstrated a reasonable likelihood of prevailing on obviousness based on the combination of Zuckerberg, U.S. Patent No. 7831913, Selection-Based Item Tagging (“MacLaurin”) and either Rothmuller or a 2005 book describing the use of photo tagging features in Adobe Photoshop Elements (“Plotkin”).

In IPR2019-00528, Facebook relies on many of the same prior art references asserted in its other IPR challenge of the ‘173 patent. The PTAB instituted this IPR after determining the reasonable likelihood that claims are invalid based on either MacLaurin alone or in combination with either Rothmuller or Plotkin. The APJ panel found that MacLaurin “light ‘tagging mode’” that “allow[s] a user to choose between ‘tag guesses’ using cursor arrows” would have suggested the existence of a list of tag suggestions. The APJ panel also dismissed Blackberry’s request for discretionary denial of this IPR as being redundant of the other IPR petition. In denying that request, the PTAB noted that the Zuckerberg reference was central to five of seven grounds of unpatentability raised in the other petition but wasn’t even included as a secondary reference in this proceeding. The PTAB specifically cited the USPTO’s recent trial practice guidance concerning parallel petitions challenging the same patent and while the panel acknowledged that such petitions are generally disfavored, but it instituted the petition anyways based on the strength of the arguments in either petition, the circumstances of the related district court proceedings and because insufficient time remained to receive and evaluate additional briefing on the parallel petitions as prescribed by the guidance.

Apple Inc. v. Firstface Co., Ltd.

On August 5, the PTAB issued decisions on three petitions for IPR proceedings brought by Apple to challenge the validity of patents owned by Korean entity Firstface, instituting two of the IPRs and denying one other. However, the IPR that was denied institution challenged the same patent targeted in one of the instituted IPRs, so Apple may be successful in prevailing against both of the challenged Firstface patents at issue in these three proceedings. The patents, asserted against Apple in a Northern District of California infringement suit, are U.S. Patent No. 8831557, Method, System, and Mobile Communication Terminal for Performing Specific Function When Mobile Communication Terminal is Activated, and U.S. Patent No. 9633373, Activating Display and Performing Additional Function in Mobile Terminal With One-Time User Input. The ‘557 patent discloses a mobile communication terminal, such as a smartphone, with an activation button switching the device from an inactive state to an active state. The ‘373 patent covers a method for performing a specific function, such as fingerprint recognition, when a mobile communication terminal is activated.

Both the ‘557 patent and the ‘373 patent were asserted by Firstface in a lawsuit filed in April 2018 in Northern California. Firstface’s infringement allegations centered on Apple products supporting fingerprint authentication and Siri voice command functionality, including multiple generations of the iPhone and the iPad. Firstface also alleged that Apple had knowledge of the ‘557 patent in early 2015, when the Korean firm approached Apple with an opportunity to license its patent portfolio. This March, U.S. District Judge James Donato entered an order denying Apple’s motion to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6) seeking to dismiss the direct and indirect infringement claims as well as enhanced damages for willful infringement of the ‘557 patent. Judge Donato determined that the allegations regarding Apple’s infringing activity after the 2015 licensing proposal was enough to allow the claim to proceed.

The PTAB denied institution of IPR2019-00611, filed by Apple to challenge the ‘557 patent. Apple challenged claims 1, 8, 9 and 15 of the patent as obvious based on two combinations of prior art references. One combination was U.S. Patent Application 20090083850, Embedded Authentication Systems in an Electronic Device (“Fadell”), WO Patent Application No. 2010126504, Fingerprint Scanner (“Gagneraud”), and a 2009 Apple user guide for iPhone OS 3.1 software (“iOS”). The PTAB dismissed Apple’s arguments on this combination because those arguments weren’t premised on the APJ panel’s construction of the claim term “simultaneously.” Apple also challenged the same claims based on the combination of U.S. Patent Application No. 20100017872, User Interface for Mobile Computer Unit (“Goertz”), and German Patent Application No. 19710546, Authentication of Multimedia Terminals by Electronic Fingerprint (“Herfet”). Again, this obviousness argument failed because the PTAB’s construed “simultaneously” to mean that the user identification function and the activation of the display are performed when the user presses the activation button without additional steps, and not just at the same time as Apple had proposed.

However, the PTAB instituted IPR2019-00612, which challenged the same claims of the ‘557 patent using the same combinations of prior art and the PTAB was persuaded Apple’s arguments regarding both combinations demonstrated a reasonable likelihood of prevailing on the obviousness challenges. The PTAB agreed that Gagneraud’s fingerprint scanning and recognition occurred simultaneously with turning on a machine, making it obvious to combine with Fadell to achieve its goal of authenticating a user quickly and seamlessly. The PTAB also agreed that an ordinarily skilled artisan would have been motivated to modify the high security lock unlocking functionality in Goertz with the fingerprint recognition performance of Herfet to simplify the user experience. Firstface had argued that the PTAB should deny institution of this IPR because Apple relied on the same arguments in the other IPR that was denied. However, the PTAB wasn’t convinced that it should deny institution as the IPRs were premised on different possible interpretations of the claim term “simultaneously.”

Apple was also successful in IPR2019-00613 as the PTAB instituted Section 103(a) obviousness challenges against claims 1, 2, 4 through 6 and 11 through 14 of the ‘373 patent. In its challenge, Apple relied on the combination of iOS, U.S. Patent Application No. 20100138914, System and Method of Providing Biometric Quick Launch (“Davis”), and either Goertz or U.S. Patent Application No. 20120133484, Multiple-Input Device Lock and Unlock (“Griffin”). The PTAB found that Apple adequately supported its contention that the combination of Griffin and Davis disclosed an activation button to turn on the display and then initiate a fingerprint authentication function. Further, Apple’s argument that the combination of Goertz and Davis disclosed the activation of the touch screen display and fingerprint authentication upon one-time pressing of the activation button.

Apple Inc. v. UUSI, LLC d/b/a/ Nartron

Last week, we covered the PTAB’s denial of institution to an IPR petition filed by Apple challenging Nartron’s U.S. Patent No. 5796183, Capacitive Responsive Electronic Switching Unit, which covers a circuit that makes a “zero force” manual electronic switch possible in touch screen devices. Last Monday, Apple was finally successful in getting two IPRs instituted on the ‘183 patent after failing five other times—a classic example of multiple petitions creating havoc for a patent owner.

In IPR2019-00358, instituted on August 5, Apple primarily relied on a prior art combination that was also asserted in the IPR that was denied last week: U.S. Patent No. 4561002, Capacitive Touch Switch Arrangement (“Chiu”), and U.S. Patent No. 4418333, Appliance Control System (“Schwarzbach”). The PTAB determined that Chiu alone met many limitations of the claims challenged by Apple and that a person of ordinary skill would have been motivated to modify Chiu’s signal output voltage with the microprocessor supply voltage of Schwarzbach. The PTAB also analyzed the General Plastic factors based on Nartron’s arguments that this IPR should be denied because Samsung had previously challenged the same claims in a previous IPR proceeding. The PTAB found that multiple factors weighed against denying the institution, including adequate explanation for the time elapsed between the petitions, because Nartron delayed in filing its infringement suit against Apple, and Apple’s unawareness of the prior art asserted in the IPR as it had no reason to search for the prior art until the infringement allegations.

IPRs Instituted Week Ending Friday, August 9

IPR2019-00359: Apple Inc. v. USSI, LLC d/b/a Nartron – U.S. Patent No. 5796183, Capacitive Responsive Electronic Switching Unit

IPR2019-00382: Bowtech, Inc. v. MCP IP, LLC – U.S. Patent No. 9816775, Balanced Pulley Assembly for Compound Archery Bows, and Bows Incorporating That Assembly

IPR2019-00383: Bowtech, Inc. v. MCP IP, LLC – U.S. Patent No. 9423201, same title as the ‘775 patent

IPR2019-00443: Ring LLC v. SkyBell Technologies, Inc. – U.S. Patent No. 9160987, Doorbell Chime Systems and Methods

IPR2019-00447: Ring LLC v. SkyBell Technologies, Inc. – U.S. Patent No. 9743049, Doorbell Communication Systems and Methods

IPR2019-00514: American National Manufacturing Inc. v. Sleep Number Corporation – U.S. Patent No. 5904172, Valve Enclosure Assembly

IPR2019-00527: Smartmatic USA Corporation v. Election Systems & Software, LLC – U.S. Patent No. 7753273, Ballot Marking System and Apparatus Utilizing Multiple Key Switch Voter Interface

IPR2019-00610: Starbucks Corporation v. Fall Line Patents, LLC – U.S. Patent No. 9454748, System and Method for Data Management

IPR2019-00746: ARRIS Solutions, Inc. v. Realtime Adaptive Streaming, LLC – U.S. Patent No. 8867610, Systems and Methods for Video and Audio Data Distribution

IPRs Denied Week Ending Friday, August 9

IPR2019-00515: U.D. Electronic Corp. v. Pulse Electronics, Inc. – U.S. Patent No. 6593840, Electronic Packaging Device With Insertable Leads and Method of Manufacturing

IPR2019-00567: Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc. – U.S. Patent No. 9689024, Methods for Droplet-Based Sample Preparation

IPR2019-00568: Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc. – U.S. Patent No. 9856530, Methods and Systems for Processing Polynucleotides

IPR2019-00584: Ingenico Inc. v. IOENGINE, LLC – U.S. Patent No. 9774703, Apparatus, Method and System for a Tunneling Client Access Point

IPR2019-00618: VRG Controls, LLC v. Dresser, LLC – U.S. Patent No. 8141843, Fluid Control Valve

IPR2019-00655: Cambrios Film Solutions Corporation v. C3Nano Inc. – U.S. Patent No. 9183986, Metal Nanowire Inks for the Formation of Transparent Conductive Films With Fused Networks

IPR2019-00660: Unified Patents Inc. v. Velos Media, LLC – U.S. Patent No. 8768077, Image Processing Device and Image Processing Method

IPR2019-00726: Unified Patents Inc. v. GE Video Compression, Inc. – U.S. Patent No. 6943710, Method and Arrangement for Arithmetic Encoding and Decoding Binary States and a Corresponding Computer Program and a Corresponding Computer-Readable Storage Medium