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PTAB Cites “Idiot’s Guide” in Invalidating Uniloc Patents

Publications / Jun 19, 2019

By Clyde Shuman

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office invalidated three patents owned by frequent patent plaintiff Uniloc 2017 LLC, finding one of the challenged patents invalid as obvious over a combination of prior art including “The Complete Idiot’s Guide to PalmPilot and Palm III.”

In separate decisions in three inter partes review proceedings, case numbers IPR2018-00394, IPR2018-00387 and IPR2018-00389, Apple Inc. challenged claims in three different patents that Uniloc had asserted against a number of tech companies, including HTC Corp. and LG Electronics Inc., which joined Apple in two of the IPR challenges.

In the ‘394 proceeding, the Board said that the challenged claims to U.S. Patent No. 6,622,018, which covers a “a system for controlling a remote device over a wireless connection,” were invalid as obvious in light of a proposed combination of earlier remote control patents and “The Complete Idiot’s Guide to PalmPilot and Palm III.” Apple had argued that a person of ordinary skill in the art would have known to combine U.S. Patent No. 6,791,467 to Ben-Ze’ev, which taught how to locate and control remote devices, with the touchscreen disclosed in the Idiot’s Guide, to arrive at most of the challenged claims. The Board agreed, saying that “petitioner has articulated sufficient reasoning with some rational underpinning to support the legal conclusion that its proffered combination of Ben-Ze’ev and Idiot’s Guide would have been obvious to one of ordinary skill in the art.”

In support of its obviousness argument, Apple presented an archived webpage screenshot of a PalmPilot software, called “PalmRemote,” showing how to use certain touchscreen commands to control certain device functions. Uniloc claimed the screenshot was a “mere illustration,” and thus insufficient to show that the relevant software existed at the time, or that a person of ordinary skill would have known to combine the Ben-Ze’ev patent with the Idiot’s Guide. The Board disagreed, noting that the screenshot had been used only as “implicit support for [Apple’s] reason to combine.”

In the other two IPR proceedings, the Board found that the challenged claims to Uniloc’s U.S. Patent Nos. 7,653,508 and 8,712,723, both covering monitoring and counting human steps, were obvious in light of the combined teachings of U.S. Patent Nos. 7,698,097 (“Fabio”) and 7,463,997 (“Pasolini”). On its face, the ‘723 patent is a continuation of the ‘508 patent.

Apple, joined by HTC and LG, argued that the combination of Fabio’s pedometer, which comprises an inertia sensor, and Pasolini’s method of detecting human steps using a three-axis accelerometer, rendered all claims of the two patents invalid as obvious. The Board agreed.

The Board also declined to consider arguments fronted by Uniloc in the latter two proceedings, that the Board’s appointment of Administrative Law Judges in the IPRs somehow violated the Appointments Clause of Article II of the Constitution. The Board noted that it had previously “declin[ed] to consider . . . constitutional challenge[s] as, generally, ‘administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.’” Square, Inc. Unwired Planet LLC, Case IPR2014-01165, slip op. at 25 (PTAB Oct. 30, 2015) (Paper 32) (quoting Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995)).”

By way of background, in 2017, Uniloc filed several patent infringement actions against Apple, HTC and LG, and others, alleging that the companies’ smartphones and other devices infringed several patents, including the ones at issue in the IPRs.