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From Intellectual Property Law Daily, January 25, 2019

PTAB correctly upheld Apple’s obviousness challenges of display-screen claims and rejected challenges by LG

By Brian Craig, J.D.

Apple successfully challenged claims in two patents directed to solutions to problems with small display screens on electronic devices as obvious light of prior art. Obviousness challenges by LG Electronics to different claims, based on different prior art, failed.

In a case involving two patents owned by Conversant Wireless addressing problems with small display screens on electronic devices, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board. In a challenge brought by Apple to Conversant’s patent claims, the appeals court held that the Board properly found the claims were invalid based on obviousness. In the challenge brought by LG Electronics, the court upheld the validity of the patent claims because the Board properly construed the claims and considered the evidence (LG Electronics, Inc. v. Conversant Wireless Licensing S.A.R.L., January 25, 2019, O'Malley, K.).

Apple Inc. and LG Electronics, Inc. separately petitioned for inter partes review of U.S. Patent Nos. 8,434,020 ("the ’020 patent") and 8,713,476 ("the ’476 patent"), assigned to Conversant Wireless Licensing S.A.R.L. The ’020 and ’476 patents, both titled "Computing Device with Improved User Interface for Applications," are directed toward solving problems with small display screens on computing devices. Due to the more limited space on smaller display screens, data and functionality are typically divided into many layers or views, prohibiting users from being able to navigate quickly and efficiently to access data and activate a desired function. The patents tackle these small screen limitations by creating an "application summary" or "application summary window" that can be reached directly from the main menu on the display. The "application summary window" allows the user to view a limited list of common functions and commonly accessed data on the main menu.

Prior art. Three prior art references were patents referred to as Blanchard, Schnarel, and Aberg. All three references were patents aimed at optimizing screen space on small displays. Blanchard, titled "Arrangement for Dynamic Allocation of Space on a Small Display of a Telephone Terminal," disclosed an interactive telephone interface that used a series of menus and sub-menus within a "parent menu." Schnarel, titled "Graphical User Interface for a Screen Telephone," described a graphical user interface implemented as a "start" or "home" screen on a web telephone or other telephony device.

Procedural history. Apple petitioned for inter partes review after being sued by Conversant in the Eastern District of Texas. Apple asserted that certain claims in the ’020 patent and the ’476 patent were unpatentable. The Board concluded that the challenged claims were unpatentable as obvious over Schnarel in combination with two other prior art references in Apple’s challenge. LG also petitioned for inter partes review after being sued by Conversant. The Board upheld the validity of the patent claims in the challenge brought by LG. Conversant and LG both appealed.

Conversant’s appeal. The Federal Circuit first examined whether the Board properly concluded that the patent claims were invalid based on obviousness in the challenge brought by Apple. The court rejected one contention asserted by Conversant because Conversant failed to preserve the issue for appeal before the Board. The court held that an issue cannot be preserved for appeal merely because the Board found it uncontested. The court also concluded that substantial evidence supported the Board’s finding that a person of ordinary skill in the art would be motivated to combine Aberg’s "special" menu with Schnarel’s message pane, thereby satisfying the "reached directly" limitation of the claims. Therefore, the court affirmed the Board’s decision in Conversant’s appeal related to Apple’s challenge.

LG’s appeal. The Federal Circuit then turned to whether the Board properly upheld the validity of the patent claims in the appeal brought by LG. The Board properly construed the term "limited list" in the patent claims. Both parties’ experts at least implicitly agreed on construction of other patent claims. LG failed to prove that the asserted claims were unpatentable as obvious in light of Blanchard. LG contended that the Board ignored substantial evidence establishing that Blanchard disclosed a "limited list" of functions or data as required by the claims. But the Federal Circuit concluded that LG failed to present this evidence to the Board. Therefore, the court affirmed the Board’s decision to uphold the validity of the patent claims in LG’s appeal.

This case is No. 17-2028.

Attorneys: Ryan C. Morris (Sidley Austin LLP) for LG Electronics, Inc. Benjamin T. Wang (Russ August & Kabat) for Conversant Wireless Licensing S.A.R.L.

Companies: LG Electronics, Inc.; Conversant Wireless Licensing S.A.R.L.

MainStory: TopStory Patent TechnologyInternet FedCirNews

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