Trials@uspto.gov
`Tel: 571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`
`Paper 29
`Date: October 25, 2023
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`DDC TECHNOLOGY, LLC,
`Patent Owner.
`____________________________
`
`IPR2023-00708
`Patent 9,811,184 B2
`____________________________
`
`
`
`Before KALYAN K. DESHPANDE, Acting Deputy Chief Administrative
`Patent Judge, PATRICK M. BOUCHER, and JULIET MITCHELL DIRBA,
`Administrative Patent Judges.
`
`DESHPANDE, Acting Deputy Chief Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. §314
`
`
`
`
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`PUBLIC VERSION
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`
`Tel: 571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`
`Paper 29
`Date: October 25, 2023
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`DDC TECHNOLOGY, LLC,
`Patent Owner.
`____________________________
`
`IPR2023-00708
`Patent 9,811,184 B2
`____________________________
`
`
`
`Before KALYAN K. DESHPANDE, Acting Deputy Chief Administrative
`Patent Judge, PATRICK M. BOUCHER, and JULIET MITCHELL DIRBA,
`Administrative Patent Judges.
`
`DESHPANDE, Acting Deputy Chief Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. §314
`
`
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`PUBLIC VERSION
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`IPR2023-00708
`Patent 9,811,184 B2
`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition (Paper 2 (“Pet.”)), seeking
`inter partes review of claims 1–5, 7–10, 12, and 16–18 of U.S. Patent
`No. 9,811,184 B2 (Ex. 1001 (“the ’184 patent”)). See Pet. 1. DDC
`Technology, LLC (“Patent Owner”) filed a Preliminary Response.
`Papers 12 (public), 14 (confidential) (“Prelim. Resp.”). With our
`authorization (Ex. 3003), Petitioner filed a Reply (Papers 16 (confidential),
`17 (public) (“Reply”)), and Patent Owner filed a Sur-reply (Papers 21
`(confidential), 22 (public) (“Sur-reply”)).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition, Preliminary
`Response, Reply, and Sur-reply, we conclude that the information presented
`shows that there is a reasonable likelihood that Petitioner would prevail in
`establishing the unpatentability of at least one challenged claim of the
`’184 patent.
`
`A. Related Matters
`The parties identify that the ’184 patent is involved in DDC Tech.
`LLC v. Landsberg Orora, et al., 3-23-cv-01160 (N.D. Cal. 2022) (“the
`California litigation”) and DDC Tech., LLC v. Emerge Techs., Inc. d/b/a
`Utopia 360, et al., 3-22-cv-01263 (N.D. Tex. 2022). Pet. 4; Paper 3, 3–4.
`The parties identify that the ’184 patent was involved in
`MerchSource, LLC, et al. v. DODOcaseVR, Inc., et al., PGR2018-0020
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`(PTAB 2018); DDC Tech., LLC v. Mattel, Inc., 1-21-cv-01781 (D.
`Del. 2021); DDC Tech., LLC v. Unofficial Cardboard, Inc., 1-21-cv-05596
`(N.D. Ill. 2021); DDC Tech., LLC v. Merge Labs, Inc., 6-21-cv-00850 (W.D.
`Tex. 2021); DDC Tech., LLC v. DPI, Inc., 4-21-cv-00402 (E.D. Mo. 2021);
`DDC Tech., LLC v. Sanho Corp., 1-21-cv-00152 (D. Del. 2021);
`DODOCASE VR, Inc. f/k/a DODOcase, Inc. v. MerchSource, LLC, 3-17-cv-
`07088 (N.D. Cal. 2017); and DODOcase, Inc. v. DGL Grp., LLC, et al., 1-
`17-cv-01188 (D. Del. 2017). Pet. 3–6; Paper 3, 3–5.
`The parties identify U.S. Patent Nos. 9,420,075, 9,723,117,
`10,528,199, 11,093,000, 11,093,001, and 11,449,099 as patents related to the
`’184 patent. Pet. 2–3; Paper 3, 2. In addition to identifying the judicial
`proceedings above as also variously involving, or having involved, these
`related patents, the parties identify that U.S. Patent Nos. 9,420,075 and
`9,723,117 were variously involved in MerchSource, LLC, et al. v.
`DODOcaseVR, Inc., et al., IPR2018-00494 (PTAB 2018); MerchSource,
`LLC, et al. v. DODOcase VR, Inc., et al., PGR2018-00019 (PTAB 2018);
`and DODOcase, Inc. v. DGL Grp., LLC, et al., 1-17-cv-01188 (D.
`Del. 2017). Pet. 3, 6; Paper 3, 3, 5.
`Additionally, the following proceedings before the Board involve the
`same parties as the instant proceeding: IPR2023-00707 (U.S. Patent
`No. 9,420,075 B2), IPR2023-00709 (U.S. Patent No. 10,528,199 B2),
`IPR2023-00710 (U.S. Patent No. 11,093,000 B2), and IPR2023-00711 (U.S.
`Patent No. 11,093,001 B1).
`B. The ’184 Patent (Ex. 1001)
`The ’184 patent discloses an improved virtual reality viewer for use
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`with a touchscreen-enabled mobile device. Ex. 1001, Abstract. The viewer
`includes two lenses, an enclosure, and a touchscreen input. Id. at 12:66–
`13:11. The touchscreen input is made of a conductive material and
`physically contacts the touchscreen upon receipt of the mobile device by the
`enclosure. Id. at 5:37–42. The disclosed virtual reality viewer is shown in
`Figures 1 and 6A as follows:
`
`
`
`Figure 1 (left) illustrates virtual reality viewer 10 with enclosure 12
`having first and second sides, 25 and 30. Id. at 3:49–4:35. The first side
`holds first and second lenses 70, and the second side is configured to receive
`mobile device 15. Id. Figure 6A (right) is a side-view cross-section of the
`viewer, illustrating touchscreen inputs 26a–d in physical contact with
`touchscreen 17 of the mobile device. Id. at 5:23–6:14. The touchscreen
`inputs are electrically coupled, via leads 28a–d, to user inputs 29a–d, thereby
`relaying user interaction to the touchscreen. Id. The ’184 patent discloses a
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`second embodiment in Figure 7, seen as follows:
`
`
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`Figure 7 illustrates viewer 700 comprising a moveable user input in
`
`the form of lever 722. Id. at 10:1–11:42. When actuated from a first to a
`second position, the lever causes touchscreen input, metallic shield 725, to
`come into physical contact with the touchscreen of the mobile device. Id.
`The touchscreen input is located at a separator between the eyes, view
`divider 710. Id.
`
`C. Challenged Claims
`Petitioner challenges claims 1–5, 7–10, 12, and 16–18 of the
`’184 patent. Pet. 38–103.
`Subsequent to the filing of the Petition, Patent Owner filed a statutory
`disclaimer, a first corrected statutory disclaimer, and a second corrected
`statutory disclaimer under 35 U.S.C. § 253(a) to disclaim claims 1–5 and 7–
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`10 of the ’184 patent. Ex. 2049 (“Disclaimer in a Patent Under
`37 C.F.R. 1.321(a)”; “Corrected Notice Regarding Disclaimed Claims”;
`“2nd Corrected Notice Regarding Disclaimed Claims”); see
`35 U.S.C. § 253(a); 37 C.F.R. § 1.321(a). Because Patent Owner’s second
`corrected statutory disclaimer satisfies all regulatory requirements to
`disclaim claims 1–5 and 7–10, we do not consider Petitioner’s challenges to
`those claims. See Ex. 2049; 37 C.F.R. § 1.321(a); General Electric Co. v.
`United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017)
`(precedential).
`Claim 12, the only remaining independent claim, is illustrative of the
`challenged claims and is reproduced as follows:
`12. A virtual reality viewer for use with a mobile electronic
`device having a touchscreen, the viewer comprising:
`a first lens and a second lens, wherein the first lens is
`facing the same direction as the second lens, and wherein the
`first lens and the second lens are spaced apart in a horizontal
`direction;
`an enclosure having a first side and a second side
`opposite the first side, the first side configured to hold the first
`lens and the second lens, the second side configured to receive
`the mobile electronic device;
`a user input that is accessible from an exterior of the
`enclosure and has a first position and a second position;
`a touchscreen input conductively coupled to the user
`input and generally centered between the first lens and the
`second lens in the horizontal direction, wherein, upon receipt of
`the mobile electronic device, the touchscreen input is in
`physical contact with the touchscreen when the user input is in
`the[ ]second position.
`Ex. 1001, 13:46–14:16.
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`D. The Alleged Ground of Unpatentability
`The information presented in the Petition sets forth proposed ground
`of unpatentability of claims 12 and 16–18 of the ’184 patent under
`35 U.S.C. § 103 as follows (see Pet. 38–45, 74–103):1
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`12, 16–18
`103
`Kondo, 2 Chu3
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Relying on the Declaration of Mr. Keller for support, Petitioner
`contends a person of ordinary skill in the art (“POSITA”) would have
`had a minimum of an undergraduate degree (or equivalent) in
`mechanical engineering or a related field, with knowledge of
`mechanical actuation systems, basic optical design with lenses,
`head-mounted displays, a basic understanding of touchscreen
`technology, and at least two years of professional experience in
`mechanical and basic optical design or engineering.
`Pet. 26–27 (citing Ex. 1002 § V).
`
`Patent Owner does not argue the level of ordinary skill in the art.
`Patent Owner, however, criticizes Petitioner’s reliance on Mr. Keller’s
`testimony to show “how a POSITA would have approached touchscreen
`technology in 2014.” Prelim. Resp. 45–46. Specifically, Patent Owner
`argues that because Mr. Keller’s expertise is in optics, rather than
`
`
`1 Petitioner supports its challenge with the Declaration of Kurtis P. Keller.
`Ex. 1002.
`2 Japanese Published Application No. Utility Model 3176588, issued
`June 28, 2012, and certified English translation thereof (Ex. 1003, “Kondo”).
`3 U.S. Patent Application Publication No. 2013/0082963 A1, published
`April 4, 2013 (Ex. 1004, “Chu”).
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`touchscreens, and “he has no discernible experience in conductive/capacitive
`technology – he is not a POSITA, let alone an expert.” Id. at 46. As such,
`Patent Owner argues that Mr. Keller’s analysis “should be disregarded.” Id.
`
`For purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner because, based on the current record, this proposal
`appears to be consistent with the ’184 patent and prior art of record, and is
`supported by the testimony of Mr. Keller. We are persuaded, on this limited
`record, that Mr. Keller’s expertise is not limited to optics, and his experience
`in displays is pertinent to this proceeding. See Pet. 8–9. The parties will
`have an opportunity during the trial to develop arguments regarding the
`knowledge of an ordinarily skilled artisan at the time of the invention.
`B. Claim Construction
`We apply the claim construction standard used to construe the claims
`in a civil action under 35 U.S.C. § 282(b), as articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b)
`(2019). Under the Phillips standard, claim terms must be given “the
`meaning that the term would have to a person of ordinary skill in the art in
`question at the time of the invention.” 415 F.3d at 1313.
`We note that Petitioner presents a claim construction for the term
`“virtual reality viewer.” Pet. 27–29. However, after reviewing the evidence
`and argument presented by the parties, we determine that it is not necessary
`to construe any claim terms at this stage of the proceeding. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (noting that “we need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”)
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`C. Alleged Obviousness over Kondo and Chu: Claims 12 and 16–18
`Petitioner contends that claims 12 and 16–18 of the ’184 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over Kondo and Chu.
`Pet. 38–45, 74–103. For the reasons discussed below, the evidence on this
`record indicates there is a reasonable likelihood that Petitioner would prevail
`in demonstrating that claims 12 and 16–18 of the ’184 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over Kondo and Chu.
`1. Kondo (Ex. 1003)
`Kondo is titled “Remote Touch Circuit and Attachment” and seeks
`“[t]o provide an attachment that achieves remote control input to a touch
`panel mounted on an electronic device.” Ex. 1003, codes (54), (57). Kondo
`discloses “a stereoscope product attachment . . . for enjoying three-
`dimensional stereoscopic images provided with a remote touch circuit for
`enabling remote operation input to a touch panel with fingers supporting the
`attachment by equipping a smartphone having a touch panel.” Id. ¶ 21.
`Kondo discloses one embodiment including left and right eyepieces 7
`on a rear end of the attachment and smartphone 1500 mounted inside a
`holding part 4 of the attachment and facing the eyepieces. Ex. 1003 ¶¶ 22,
`27. A user interacts with the smartphone’s touchscreen by pressing
`button 77, which is conductively connected to electric wire 72 and
`conductive pads 76. Id. ¶¶ 41, 47–49. The conductive pads are in physical
`contact with virtual button positions W31–W34 on the touchscreen. Id.
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`2. Chu (Ex. 1004)
`Chu is titled “Waterproof Housing for Digital Devices Having
`Capacitive Touch Screen and its Actuator Mechanism.” Ex. 1004,
`code (54). Chu discloses waterproof housing 10 for holding therein a
`smartphone and having thereon actuator mechanism 12 including actuator
`shaft 14, press button 16, and probe head 18. Id. ¶¶ 38, 40, 41. The actuator
`mechanism is movable by a user’s finger from a rest position, in which the
`probe head does not touch the smartphone’s capacitive touch screen 20, to
`an actuation position, wherein the probe head physically contacts the touch
`screen. Id. ¶¶ 40, 41, 53–56, Figs. 3, 4.
`3. Petitioner’s Arguments
`The arguments and evidence set forth by Petitioner indicates there is a
`reasonable likelihood that Petitioner would prevail in showing that claims 12
`and 16–18 would have been obvious over the combined teachings of Kondo
`and Chu. Pet. 38–45, 74–103.
`For example, claim 12 recites “[a] virtual reality viewer for use with a
`mobile electronic device having a touchscreen, the viewer comprising.”
`Ex. 1001, 13:46–47. Petitioner argues Kondo discloses attachment 2, a
`virtual reality viewer, that encloses smartphone 1500 having touch-screen
`display 1506. Pet. 74–76 (citing Ex. 1003 ¶¶ 5, 9, 21, 23, 24, 27, Figs. 1–3;
`Ex. 1002 § X(A)(1)).
`Claim 12 further recites “a first lens and a second lens, wherein the
`first lens is facing the same direction as the second lens, and wherein the
`first lens and the second lens are spaced apart in a horizontal direction.”
`Ex. 1001, 14:1–4. Petitioner contends Kondo discloses right eyepiece 7R
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`and left eyepiece 7L that a POSITA would have understood to be lenses.
`Pet. 77–79 (citing Ex. 1003 ¶ 22, Fig. 4(2)). Petitioner further asserts that
`Kondo illustrates the eyepieces as lenses and, moreover, they perform the
`same function as those of the ’184 patent. Id. (citing Ex. 1003, Fig. 4(2),
`pg. 2; Ex. 1001, 2:1–4). Petitioner also argues Kondo’s eyepieces are
`spaced apart horizontally by partition wall 12, and that Kondo additionally
`shows and describes the eyepieces as facing the same direction. Id. at 76–83
`(citing Ex. 1003 ¶¶ 22, 27, 37, Figs. 1, 3, 4(2), 6; Ex. 1002 § X(A)(2)).
`Additionally, Petitioner alternatively contends this limitation would have
`been obvious and points to the ’184 patent as admitting that viewers
`typically have lenses whose “configuration, construction, and
`placement . . . is well-known.” Id. at 79–80 (citing Ex. 1001, 2:1–4, 4:31–
`34).
`
`Claim 12 further recites “an enclosure having a first side and a second
`side opposite the first side, the first side configured to hold the first lens and
`the second lens, the second side configured to receive the mobile electronic
`device.” Ex. 1001, 14:5–8. Petitioner argues that the housing of Kondo’s
`viewer, i.e., the claimed “enclosure,” has a first side holding the eyepieces
`and a second side having holding part 4 that receives the smartphone such
`that the smartphone is directly in a user’s field of view when viewed through
`the first side. Pet. 83–92 (citing Ex. 1003 ¶¶ 22, 27, 28, 30–34, Figs. 2–8).
`Kondo’s first side is opposite the second side. Ex. 1003, Figs. 6, 7.
`Petitioner further contends that Kondo’s viewer has hinge 10 on attachment
`main body 8 that supports the holding part in a manner that allows the
`holding part to be opened to mount and dismount the smartphone to the
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`viewer, and closed to be used as a stereoscope. Pet. 91–92 (citing
`Ex. 1003 ¶¶ 22, 30, Figs. 4–7). Petitioner additionally argues that Chu has
`an enclosure holding a mobile phone. Pet. 92–93 (citing Ex. 1004 ¶ 38,
`Fig. 1; Ex. 1002 § X(A)(3)).
`Claim 12 additionally recites “a user input that is accessible from an
`exterior of the enclosure and has a first position and a second position.”
`Ex. 1001, 14:9–10. Petitioner contends that Kondo discloses a user input in
`the form of button 77 that is on an exterior of the housing and movable
`between first and second positions via a cut out in the attachment. Pet. 93–
`95 (citing Ex. 1003 ¶¶ 42, 43, 47–49, 52, Figs. 7, 10, Abstr.). Petitioner also
`argues that Chu discloses three embodiments in which a user presses metal
`or metalized button 16, an exterior input mechanism, to move it from a first
`position to a second position. Id. at 95–97 (citing Ex. 1004 ¶¶ 11, 38, 53–
`56, 58–62, Figs. 3, 4; Ex. 1002 § X(A)(4)). Petitioner reproduces
`paragraphs 53–56 of Chu and emphasizes Chu’s description that initially,
`Chu’s probe head 18, connected to the button, does not contact touch
`screen 20; when a user presses the button downwards such that the probe
`head physically contacts the touch screen, electric charge conductivity
`between the user and the button changes an electric charge on the touch
`screen. Id. at 96–97 (citing Ex. 1004 ¶¶ 53–56).
`Claim 12 also recites “a touchscreen input conductively coupled to the
`user input and generally centered between the first lens and the second lens
`in the horizontal direction, wherein, upon receipt of the mobile electronic
`device, the touchscreen input is in physical contact with the touchscreen
`when the user input is in the[ ]second position.” Ex. 1001, 14:11–16.
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`Petitioner asserts that Kondo discloses conductive pads 76 embodying a
`touchscreen input having the claimed features. Pet. 38–45, 58–65, 76–98.
`Petitioner argues that, although Kondo discloses that the pads are in contact
`with the smartphone touchscreen upon the smartphone being received in the
`viewer, rather than when the user input is in the second position, Chu
`discloses that when Chu’s probe head is in the second, activated position, it
`is in physical contact with the touchscreen. Id. (citing Ex. 1004 ¶¶ 53–62,
`Figs. 3, 4; Ex. 1002 § X(A)(5)).
`Mr. Keller testifies that “[a] mechanical input mechanism, like Chu’s,
`can work with both [capacitive and resistive touch] screens, whereas an
`electrical input mechanism, like Kondo’s can only work with capacitive
`screens.” Ex. 1002 ¶¶ 58–59. In light of this testimony, Petitioner argues
`that a person with ordinary skill in the art would have been motivated to
`combine Kondo and Chu to increase usability and consumer appeal, and, as
`such, a designer considering Kondo would, therefore, look to Chu for the
`improved versatility of Chu’s input mechanism. Pet. 38–39. Petitioner
`further argues that a person with ordinary skill in the art would have been
`motivated to combine Kondo and Chu because (1) “Chu provides a wider
`range of input at a single location on the touchscreen rather than just binary
`input (i.e., on or off);” (2) “Chu’s ‘swipe’ embodiment provides additional
`input to Kondo’s device” that allows more functionality and increased
`desirability; (3) Chu’s input mechanism is waterproof, thereby shielding the
`device from damage and debris; and (4) the Kondo-Chu device could be
`cleaned without damage to its interior. Id. at 39–40.
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`4. Patent Owner’s Arguments
`Patent Owner argues that (a) the ordinarily skilled artisan would not
`have found it obvious to combine the teachings of Kondo and Chu in the
`manner proffered by Petitioner and its declarant; and (b) secondary
`considerations favor a conclusion of non-obviousness. Prelim. Resp. 39–55.
`We address each of these arguments in turn.
`a. Combination of Kondo and Chu
`Patent Owner contends that a POSITA would not have combined the
`teachings of Chu with those of Kondo for several reasons. See Prelim.
`Resp. 39–47. Patent Owner argues that there are several differences
`between resistive touchscreens and capacitive touchscreens, including
`market share at the time of the invention, inability of resistive touchscreens
`to be used for virtual reality devices, and uses with different types of
`electronic devices, that Patent Owner argues would have discouraged a
`POSITA from seeking to improve Kondo using a resistive touchscreen. Id.
`Patent Owner further argues that Petitioner employs impermissible hindsight
`in articulating a reason to combine the teachings of Kondo and Chu and
`provides no evidence of a POSITA actually implementing Petitioner’s
`proposed modification or explanation as to how a POSITA could have done
`so. Id.
`Patent Owner further argues that neither Kondo nor Chu recognized
`“the advantage of potentially removing the human body from the electrical
`circuit,” which, according to Patent Owner, the ’184 patent discloses and
`requires in the challenged claims. Prelim. Resp. 41–42, 46–47 (citing
`Ex. 1001, 8:20–24; Pet. 13, 33; Ex. 1004 ¶ 5, Figs. 3, 4; Ex. 1002, Fig. 10;
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`Ex. 1003 ¶ 52, Fig. 11). Patent Owner contends that “Kondo also always
`required that the phone be in contact with the capacitive input mechanism, a
`fundamentally different design than the claims that [Petitioner] challenges.”
`Id. at 47.
`We have considered Patent Owner’s arguments, but we determine the
`issues raised are best resolved at the conclusion of the trial with the benefit
`of a full record.
`As an initial matter, Patent Owner’s arguments, at this juncture,
`address only one of the rationales to combine Kondo and Chu proffered by
`Petitioner. Compare Pet. 38–40, with Prelim. Resp. 40–47. Additionally,
`Patent Owner’s arguments distinguishing the challenged claims from the
`human-provided input allegedly described in Kondo and Chu, are not
`commensurate with the scope of those claims because the claims do not
`preclude the touchscreen input from also being a user input. See Ex. 1001,
`13:46–14:16, 14:33–39.
`Regarding the alleged differences between resistive touchscreens and
`capacitive touchscreens, the only evidence Patent Owner provides to support
`its contention that resistive touchscreens would not be usable in a virtual
`reality viewer are the testimony of its declarant and inventor of the
`’184 patent (Ex. 2033, “Declaration of Patrick Buckley”), the Google
`Android specification from 2016–2017 (Ex. 2048), and sales data regarding
`the worldwide market share of mobile phone touchscreens. See Prelim.
`Resp. 40–41, 44–45. Mr. Buckley’s declaration lists the largest and highest
`resolution resistive touchscreen devices ever released, concludes they
`“would not have had the necessary hardware components . . . necessary for a
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`mobile phone to be used in a [virtual reality] headset,” and relies on the
`Google Android specification as “set[ting] forth specific hardware
`requirements for a smartphone to be [virtual reality] ready.”
`Ex. 2033 ¶¶ 19–20. However, the Google Android specification reflects the
`state of the art in 2017, rather than in 2014, the date of the invention. See
`Ex. 2048, 1. Moreover, the Google Android specification sets forth
`requirements for “compatib[ility] with Android 7.0” and best practices for
`“high performance virtual reality.” Ex. 2048, 6, 75–76. In contrast to Patent
`Owner’s arguments, this evidence does not support a finding that resistive
`touchscreens could not have been used in a virtual reality viewer, but only
`that they may not have met the same requirements as the Android 7.0 or
`resulted in high performance.
`As to whether an ordinarily skilled artisan would have modified
`Kondo’s virtual reality viewer to be usable with both capacitive and resistive
`touchscreens, Patent Owner will be given the opportunity to develop this
`argument further during the trial. On this preliminary record, we are
`persuaded for purposes of institution that Petitioner articulates a reason with
`rational underpinning as to why an ordinarily skilled artisan would have
`combined the teachings of Kondo and Chu. See Pet. 38–45. Patent Owner’s
`contention that Petitioner engages in impermissible hindsight is insufficient
`reason to deny institution. Moreover, Patent Owner’s arguments, at this
`juncture, do not persuade us that it would have been “uniquely challenging
`or difficult for one of ordinary skill in the art” to have combined their
`teachings. See Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157,
`1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
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`419 (2007)).
`Patent Owner additionally contends that Kondo and Chu “are non-
`analogous art and/or teach away from the challenged claims of the
`’184 Patent.” Prelim. Resp. 46. We are not persuaded by Patent Owner.
`“Two separate tests define the scope of analogous prior art: (1)
`whether the art is from the same field of endeavor, regardless of the problem
`addressed and, (2) if the reference is not within the field of the inventor's
`endeavor, whether the reference still is reasonably pertinent to the particular
`problem with which the inventor is involved.” In re Klein, 647 F.3d 1343,
`1348 (Fed. Cir. 2011). Here, the ’184 patent is concerned, in part, with
`solving the problem of allowing a user to interact with a concealed
`touchscreen. Ex. 1001, 2:9–38. Petitioner contends that Kondo is directed
`to the same problem as the ’184 patent—“[t]o provide an attachment that
`achieves remote control input to a touch panel mounted on an electrical
`device.” Pet. 29 (citing Ex. 1003, 2). Petitioner further asserts that Chu
`seeks to solve a similar problem—“the external activation of the touchscreen
`of the smartphone enclosed in that device.” Pet. 38–39 (citing Ex. 1003, 2;
`Ex. 1004 ¶ 9). We preliminarily agree with Petitioner’s statements
`regarding the problems to be solved by Kondo and Chu. Accordingly, on
`the record before us, we determine that Kondo and Chu are reasonably
`pertinent to the particular problem with which the inventor was involved,
`and, therefore, are analogous art. Moreover, Patent Owner identifies (and
`we perceive) nothing in either reference that criticizes, discredits, or
`otherwise discourages the claimed invention. See In re Gurley, 27 F.3d 551,
`553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person
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`of ordinary skill, upon reading the reference, would be discouraged from
`following the path set out in the reference, or would be led in a direction
`divergent from the path that was taken by the applicant.”).
`b. Secondary Considerations
`Patent Owner argues that the challenged claims are non-obvious based
`on the objective indicia of non-obviousness. Prelim. Resp. 47–55. Patent
`Owner contends that the most compelling evidence of non-obviousness
`comes from “(a) Google’s own admission of failure to develop the invented
`technologies – including its failure to combine Kondo and Chu at the time of
`[the] invention; and (b) Google’s recognition at the time of [the] invention
`that the inventions of the ’184 patent were ‘genius,’ ‘ingenious,’ and ‘really
`neat.’” Id. at 47.
`Patent Owner argues that Petitioner identified “that there was a need
`for a VR viewer with an improved input mechanism” because Petitioner
`developed a VR viewer with a magnetic input. Id. at 48 (citing Ex. 2033
`¶¶ 24–25). Patent Owner also argues that Petitioner “highlighted
`DODOcase at [a] conference as the first company to sell a VR viewer based
`on the GCV1 Viewer design (only four or five hours after [Petitioner] posted
`its GCV1 Viewer designs on its website for manufacturers to use).” Id. at
`48–49 (citing Ex. 2033 ¶27; Ex. 2004 ¶ 25). Patent Owner argues that
`“[Petitioner] acknowledged that there was a need for [a] better input
`mechanism” and the ’184 patent solves a “long-felt but unresolved need” in
`the art, based on the statements of Mr. Andrew Nartker of Petitioner’s
`Google Cardboard team. Id. at 49 (citing Ex. 2034, 3–4). Patent Owner
`further argues that the ’184 patent received industry praise. Id. at 50; see
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`“In order to accord substantial weight to secondary considerations in
`an obviousness analysis, the evidence of secondary considerations must have
`a nexus to the claims, i.e., there must be a legally and factually sufficient
`connection between the evidence and the patented invention.” Fox Factory,
`Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citations and
`internal quotation marks omitted). “The patentee bears the burden of
`showing that a nexus exists.” Id. A patentee is entitled to a rebuttable
`presumption of nexus “when the patentee shows that the asserted objective
`evidence is tied to a specific product and that product ‘embodies the claimed
`features, and is coextensive with them.’” Id. (citation omitted).
`On this record, we find that Patent Owner has not sufficiently
`established nexus between any objective indicia of nonobviousness and the
`challenged claims of the ’184 patent. First, Patent Owner does not provide
`an analysis demonstrating that its products (or prototypes) are coextensive
`(or nearly coextensive) with the challenged claims. We, therefore, find that
`a presumption of nexus is inappropriate. See Lectrosonics, Inc. v. Zaxcom,
`Inc., IPR2018-01129, Paper 33 (PTAB Jan. 24, 2020) (precedential).
`However, “[a] finding that a presumption of nexus is inappropriate
`does not end the inquiry into secondary considerations.” Fox Factory, 944
`F.3d at 1375. “To the contrary, the patent owner is still afforded an
`opportunity to prove nexus by showing that the evidence of secondary
`considerations is the ‘direct result of the unique characteristics of the
`claimed invention.’” Id. at 1373–1374 (citation omitted).
`On the preliminary record, we are not persuaded that Patent Owner
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`meets this alternative test. For example, although Patent Owner asserts that
`Petitioner highlighted DODOcase and Petitioner’s Google Cardboard team
`praised Patent Owner’s conductive touch button, Patent Owner did not set
`forth sufficient analysis and evidence demonstrating that praise was directed
`to a specific claimed feature of the ’184 patent. For instance, the present
`record does not include any specific information or detail on the conductive
`button4 that was praised or demonstrate nexus between the conductive
`button and features of the challenged claims. Similarly, although Patent
`Owner argues that there was a long-felt unresolved need in the art, Patent
`Owner does not set forth sufficient analysis identifying that the claimed
`features of the ’184 patent solved this need. Additionally, Patent Owner
`alleges the commercial success of its viewer, but does not demonstrate the
`commercial success is a direct result of the unique characteristics of the
`claimed invention.
`Additionally, at this stage, we are not persuaded by some of Patent
`Owner’s evidence of non-obviousness. For example, although Patent
`Owner’s capacitive/conductive touch button was described by a few
`individuals as “genius,” “ingenious,” and “really neat” (Ex. 2034, 1), we
`question whether these isolated statements by themselves are indicative of
`industry praise indicative of non-obviousness. Similarly, we are not
`
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`4 The July 25, 2014 email from Mr. Buckley indicates that video clips that
`were sent with the email show the operation of the conductive button, but
`Patent Own
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