Many are familiar with the international intellectual property battle that has been raging in recent years between mobile computing device developers Apple Inc. (NASDAQ:AAPL) of Cupertino, CA, and Samsung Electronics Co. (KRX:005930) of Seoul, South Korea. Apple has been accusing Samsung of being a principal imitator of its technologies since April 2011, after which Samsung has countersued, alleging infringement of its own patents. In total, there are twelve patents involved in the case, seven which are owned by Apple, and five owned by Samsung. In recent months, Apple has had the upper hand on Samsung, which was ordered by the Federal Circuit last fall to pay a $548 million judgement against the corporation.
In late January, however, an inter partes review (IPR) request filed with the Patent Trial and Appeal Board (PTAB) throws the future of one of the Apple patents involved with this case into question. IPR2016-00500, filed by Intellectual Integrity, LLC, of Frisco, TX, challenges multiple claims in Apple’s U.S. Patent No. 7864163, titled Portable Electronic Device, Method, and Graphical User Interface for Displaying Structured Electronic Documents. This is one of only three utility patents owned by Apple brought up in its infringement lawsuits against Samsung. This also marks the first time that an IPR has been requested to review one of Apple’s many patents.
The Apple patent challenged in IPR, the ‘163 patent, has been sometimes referred to as the ‘touch-to-zoom’ patent because it covers zoom display techniques which can be implemented in an electronic device. There are three claims in the patent which are challenged: claims 2, 50 and 52. Claim 2 is directed at a computer-implemented method of displaying a plurality of content boxes, detecting a gesture on a displayed portion of content boxes, determining a box at the location of the gesture and enlarging the box so that it is substantially at the center of the display. Claims 50 and 52 are directed at portable electronic devices including processing and electronic components for carrying out the computer-implemented method outlined in Claim 2. The IPR filing claims that the methods and devices involved in the challenged claims were completely anticipated in prior art that existed before September 6th, 2006, the earliest priority date for the ‘163 patent.
Interestingly, this IPR has been filed on an patent Apple is trying to enforce upon Samsung for royalties, but Samsung didn’t file the IPR. In fact, Intellectual Integrity, which is run by sole proprietor and managing member Ronald Burns of Frisco, TX, has not been accused by Apple of infringing upon that patent. Despite no noticeable legal impetus for the IPR filing, Intellectual Integrity still has the legal grounds to file such a request with PTAB thanks to the 2011 America Invents Act (AIA), a piece of federal legislation which allows any party other than the patent owner to challenge a patent’s claims through the IPR process as long as that party has not previously challenged the validity of that patent in court.
The grounds for invalidity which Intellectual Integrity argues makes the aforementioned claims obvious involves a June 2004 reference paper referred to as “Harada,” a copy of which we were unable to find. According to the IPR filing, the Harada paper counts as prior art and discloses browser style user interfaces for touchscreen devices, including cell phones, digital cameras and PDAs. Intellectual Integrity also argues that Harada discloses the technique of tapping on an image to enlarge and center that image on a display. The filing also includes some screenshots from a May 2003 user’s manual for a Hewlett-Packard printer, the HP H5500, which invoke the printer’s ability to resize images on a display. The filing states that, because the HP H5500 is both a computer and a portable electronic device with a touchscreen display, the claims in Apple’s ‘163 patent are anticipated.
Nobody’s carrying an HP printer in a pocket, but there is a truth to the sense that it is portable in that it can be moved from room to room. It would likely require a plug connected to an electrical outlet but it does technically move. As for the charge that the HP H5500 is a computer, it’s also true that the device has a display, a processor and a memory, which are bare minimum requirements for a device that could be considered a computer. Further, the HP H5500 uses the Microsoft Windows Mobile 2003 operating system, further allowing Intellectual Integrity to make the assertion that the device is a computer.
This IPR filing would not invalidate the entirety of Apple’s ‘163 patent and it leaves 58 other claims intact, including the first claim. It’s also tough to tell what the motives are for filing this IPR. We’ve talked before on this website about how some have used the IPR process for financial gain, most notably among them including hedge fund manager Kyle Bass, by challenging a patent and short selling that company’s stock. Some observers of the situation have suggested that Intellectual Integrity is trying to challenge the patent in order to obtain some of the revenue stream for that technology which is integral to smartphone operation. However, to do that, Intellectual Integrity would have to have its own patents in that tech sector and we couldn’t find any patents assigned to that company, according to Innography’s patent portfolio analysis tools.
What makes this situation even more unique is that, although this is the first Apple patent challenged through an IPR, Apple is very familiar with the process. Since the PTAB began accepting petitions for post-grant patent review, Apple has filed 252 PTAB trial petitions, the most among any organization according to a recent PTAB report issued by Lex Machina. A total of 197 of those PTAB petitions requested an IPR. Interestingly, Samsung is second-place in this respect by having filed for 155 PTAB trials, including 141 IPR requests. Accord to the PTAB report, less than 3 percent of patents complete the IPR process with all of its original claims left intact. 18 percent of the time, all of the claims petitioned for review are invalidated by the PTAB trial.