Not a Lexis Advance subscriber? Try it out for free.

Google LLC v. Koninklijke Philips N.V.

United States Court of Appeals for the Federal Circuit

January 6, 2020, Decided

2019-1234

Opinion

 [*841]  Taranto, Circuit Judge.

Koninklijke Philips N.V. owns U.S. Patent No. RE44,913, which concerns device keypads that provide both primary and secondary characters associated with particular keys. After Philips sued Acer Inc. and other companies, alleging infringement based on devices that use Google operating systems, Google Inc. petitioned the Patent and Trademark Office, naming Acer and others as real parties in interest, to institute an inter partes review of claims 1 and 3-16 of the '913 patent for obviousness under 35 U.S.C. § 103. The PTO's Patent Trial and Appeal Board, acting on behalf of the PTO's Director, see 37 C.F.R. §§ 42.4, 42.108, instituted the requested review. In September 2018, the Board issued a final written decision concluding that Google had failed to prove obviousness.  [**2] Acer Inc. v. Koninklijke Philips Electronics N.V., No. IPR2017-00386, 2018 U.S. Dist. LEXIS 163525, 2018 WL 4657646 (P.T.A.B. Sept. 26, 2018).

Google appeals. Philips's claimed invention differs in at most one way from the specific method (and related device) described in the principal prior-art reference featured in Google's petition. With that prior-art method, primary and secondary characters are associated with a given key; the secondary characters are presented to a user when the key is held for an extended time; and after the user chooses a secondary character for entry, that character is substituted for the primary character on the key. The last step is the only difference from Philips's claimed invention, in which the default primary character is retained on the key after secondary-character selection. That return-to-default option is what the prior-art reference itself compares its own character-substitution option to when touting its solution as enhancing efficiency. We conclude, on the record of this case, that the Philips invention would have been obvious in light of the prior art. We therefore reverse the Board's decision.

The '913 patent, titled "Text Entry Method and Device Therefor," is a reissue of U.S. Patent No. 6,885,318. The patent describes a method for entering primary and secondary characters on the keypad of a device such as a handheld [**3]  mobile device. '913 patent, col. 2, lines 20-37. According to the patent, traditional mobile device keypads used one of two methods for entering characters: multitap or predictive text. In the multitap method, each key on the mobile device keypad is associated with multiple characters. To select a character, the user repeatedly presses a key to cycle through the key's associated characters until the desired character is located. Id., col. 1, lines 46-48. The multitap method, the '913 patent explains, is "slow and prone to error" because the method "often requires more than two key taps to select a character." Id., col. 1, lines 63-67. In the predictive-text method, predictive-text software alters the layout of a dynamic, touch-sensitive display by determining the "next most likely character required by the user." Id., col. 2, lines 6-11. But predictive-text keypads present "an unfamiliar interface to the average user" and require "much practice and learning  [*842]  for proficient and quick text entry." Id., col. 2, lines 11-17.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

795 Fed. Appx. 840 *; 2020 U.S. App. LEXIS 138 **; 2019 U.S.P.Q.2D (BNA) 1949; 2020 WL 54183

GOOGLE LLC, Appellant v. KONINKLIJKE PHILIPS N.V., Appellee

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-00386, IPR2017-01766.

Koninklijke Philips N.V. v. Acer Inc., 2018 U.S. Dist. LEXIS 163525 (N.D. Cal., Sept. 24, 2018)

Disposition: REVERSED.

CORE TERMS

secondary, user, display, keypad, substitution, default, lines, artisan, patent, select, options, e-mail, return-to-default, last step, predictable, parties, input, menu, prior art, invention, returning, keyboard, desired, skilled, drag

Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Nonobviousness, Substantial Evidence, Nonobviousness, Elements & Tests, Ordinary Skill Standard, Predictability