(IPR2018-00185) (P.T.A.B. 2018)
Fitzpatrick Secures Complete Victory in Opposing IPR On Behalf of Philips
On May 22, 2018, the Patent Trial and Appeal Board ruled in favor of Fitzpatrick’s client Koninklijke Philips N.V., fully denying a petition for inter partes review (IPR) filed by Microsoft Corp. and Microsoft Mobile Inc. against U.S. Patent No. RE43,564 (“the ’564 patent”). The ’564 patent relates to an auto-zoom function for a handheld device, such as a smartphone, that facilitates the selection of displayed features. Despite Microsoft advancing three separate grounds against each independent claim of the ’564 patent, the Board agreed with the arguments presented in the Patent Owner Preliminary Response and held that Microsoft failed to demonstrate a reasonable likelihood of success on any of those grounds.
Regarding the first ground, involving obviousness based on two references, the Board agreed with Philips that Microsoft’s proposed modifications would have changed the basic principles underlying the primary reference. In particular, the Board agreed with Philips that Microsoft’s alleged motivation to combine the two references contradicted the objectives stated in the primary reference.
Regarding the second ground, involving obviousness based on a single reference, the Board agreed with Philips that portions of the reference cited as corresponding to certain ’564 patent claim features did not actually suggest such claim features.
Regarding the third ground, involving obviousness based on three references, the Board agreed that a person of ordinary skill in the art would have had no reason to make the proposed combination. In particular, the Board appreciated that the primary reference relates to a handheld device, while a secondary reference involves 3D rendering and transformation operations necessitating a specialized 3D-processing workstation. While Microsoft’s theory relied on performing the 3D rendering and transformation operations on the handheld device, the Board agreed with Philips that such attempts would have overwhelmed the device’s limited processing power.
Philips was represented in this IPR by Fitzpatrick attorneys Justin Oliver, Stephen Yam, and Jason Dorsky.