Motorola Mobility LLC v. Multifold International Incorporated Pte. Ltd.

Trials@uspto.gov Paper 7 571-272-7822 Date: May 21, 2025

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MOTOROLA MOBILITY LLC and GOOGLE LLC Petitioner,

v.

MULTIFOLD INTERNATIONAL INCORPORATED PTE. LTD.,

Patent Owner.

IPR2025-00041

Patent 9,058,153 B2

Before KRISTEN L. DROESCH, HYUN J. JUNG, and BRIAN P. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION

Granting Institution of Inter Partes Review

35 U.S.C. § 314

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I. INTRODUCTION

A. Background and Summary Motorola Mobility LLC and Google LLC (collectively "Petitioner") filed a Petition pursuant to 35 U.S.C. § 311 requesting institution of inter partes review of claims 1, 3-7, 9-10, 17-18, and 20 of U.S. Patent No. 9,058,153 B2 (Ex. 1001,

"the '153 patent"). Paper 1 ("Pet."). Multifold International Incorporated Pte. Ltd. ("Patent Owner") did not file a Patent Owner Preliminary Response. We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted "unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371-372 (2018). If the Board institutes a review, it will institute "on all of the challenged claims and on all grounds of unpatentability asserted for each claim." 37 C.F.R. § 42.108(a). Upon consideration of the Petition and the evidence of record, for the reasons set forth below, we determine the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the '153 patent. Accordingly, we institute an inter partes review of claims 1, 3-7, 9-10, 17-18, and 20 of the '153 patent on all grounds raised in the Petition.

B. Real Parties in Interest and Related Matters

Motorola Mobility LLC and Google LLC identify themselves as the real parties in interest. Pet. 1. Petitioner notes that "Motorola Mobility LLC is a direct, wholly owned subsidiary of Motorola Mobility Holdings LLC, which is indirectly a wholly-owned subsidiary of Lenovo Group Ltd. Motorola Mobility Holdings LLC and Lenovo Group Ltd. are not real parties-in-interest to this proceeding." Id.

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n.1. Petitioner also notes that "Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.," and "XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding." Id. n.2. Patent Owner, Multifold International Incorporated Pte. Ltd., identifies itself as the real party in interest. Paper 4, 1.

The parties identify the following related matters:

Multifold International Incorporated Pte. Ltd. v. Motorola Mobility LLC, No. 1:23-CV-1173-UNA (D. Del.) (filed October 17, 2023); and Multifold International Incorporated Pte. Ltd. v. Google LLC, No. 1:23-CV- 01323-UNA (D. Del.) (filed November 17, 2023). Pet. 2; Paper 4, 1. Petitioner notes that "[t]he '153 patent was previously asserted in Multifold International Incorporated Pte. Ltd. v. Samsung Electronics Co., Ltd. et al, Case No. 2:21-cv-00371 (E.D. Tex.), which was dismissed on June 2, 2022, with the court's grant of a joint motion to dismiss." Pet. 2.

C. The '153 Patent

The '153 patent, titled "Minimizing Application Windows," issued on June 16, 2015 from an application filed on September 29, 2011 that claims priority to four provisional applications, the earliest of which was filed on October 1, 2010. Ex. 1001, codes (22), (54), (60), 1:6-17.

Figure 1B of the '153 patent is reproduced below.

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Figure 1B shows a view of a multi-screen user device, such as a cellular telephone. Ex. 1001, 5:60-61, 7:15-15. Device 100 "can be positioned in a number of different ways each of which provides different functionality to a user"

and includes primary screen 104 and secondary screen 108. Id. at 7:25-30.¹ Screens 104, 108 can recognize a user's gesture inputs, and a hinge connects screens 104, 108 together. Id. at 7:66-8:8, 14:53-17:36, Figs. 1C, 4A-4H. Primary screen 104 includes touch sensitive display 110 and configurable area 112, and secondary screen 108 similarly includes touch sensitive display 114 and configurable area 116. Id. at 7:32-43. Touch sensitive displays 110, 114 can display information. Id. at 7:32-36. Configurable areas 112, 116 are configured for specific inputs when touched and can include, for example, a "back" input to view previously displayed information, a "menu" input to view options from a

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menu, and a "home" input to view information associated with a "home" view. Id. at 7:39-50.

The '153 patent defines certain terms. "The term 'desktop' refers to a metaphor used to portray systems" and "is generally considered a 'surface' that typically includes pictures, called icons, widgets, folders, etc. that can activate . . . applications, windows, cabinets, files, folders, documents, and other graphical items." Id. at 3:22-26. The '153 patent defines a "screen" or "touch screen" as "a physical structure that includes one or more hardware components that provide the device with the ability to render a user interface and/or receive user input." Id. at 3:30-33. "The term 'display' refers to a portion of one or more screens used to display the output of a computer to a user" and "may be a single-screen display or a multi-screen display, referred to as a composite display" that "can encompass the touch sensitive display of one or more screens." Id. at 3:62-67. Figure 10 is a flow diagram that depicts a process for displaying a minimized window of a multi-screen application, reproduced below.

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Id. at 27:20-28:24. In Figure 10 above, a "user may provide configuration information that indicates how a device should handle gestures that indicate a request to launch/activate an application," including "how windows are minimized." Id. at 27:22-29. In step 912, the input activates a multi-screen application, and in step 916 "a window of the multi-screen application is displayed

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on at least a portion of a first screen and at least a portion of a second screen." Id. at 27:56-59. After a second application is activated and displayed on the display that received the input, in step 928 "a minimized window of the multi-screen application is displayed on the screen not displaying the window of the second application." Id. at 27:65-28:13. For example, with reference to Figure 1B (above), "because the window of the second application is displayed on display 114, then the minimized window of the multi-screen application will be displayed on display 110." Id. at 28:13-17.

D. Illustrative Claim

Petitioner challenges claims 1, 3-7, 9-10, 17-18, and 20 of the '153 patent. Claims 1 and 17 are the challenged independent claims. Claims 3-7 and 9-10 depend, directly or indirectly, from claim 1. Claims 18 and 20 depend directly from claim 17. Claim 1, reproduced below with bracketed identifiers as used in the Petition, illustrates the claimed subject matter:

1[P] A method, comprising:

1[A] providing a device having a first display and a second

display:

1[B] displaying a first window of a multi-display application on the first display and the second display;

1[C] receiving an input to launch a second application; in

response to receiving the input: displaying a second window of the second application on the second display; and

1[D] in response to opening the second window, automatically

minimizing the first window to fit the first display; and displaying the minimized first window of the multi-display application on the first display.

Ex. 1001, 31:54-67.

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E. Prior Art and Asserted Grounds Petitioner asserts claims 1, 3-7, 9-10, 17-18, and 20 of the '153 patent are unpatentable on the following grounds:

and 20 102(a)

2 Yook 3 1, 3-7, 9-10, 17-18, and 20 103(a) Yook 1, 3-7, 9-10, 17-18, 4 and 20 102(b) Lee 1, 3-7, 9-10, 17-18, and 20 103(a) Lee 1, 3-7, 9-10, 17-18, 5 and 20 102(e) Aguilar 1, 3-7, 9-10, 17-18, and 20 103(a) Aguilar 1, 3-7, 9-10, 17-18, 6 and 20 102(b) Purcell 1, 3-7, 9-10, 17-18, and 20 103(a) Purcell, Yook

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"), includes revisions to 35 U.S.C. §§ 102 and 103 that became effective after the filing of the application that led to the challenged patent. Hence, this inter partes review is governed by the pre-AIA provisions of 35 U.S.C. §§ 102 and 103.

3 US 2010/0248788 A1, filed Mar. 22, 2010, published Sept. 30, 2010 to Yook et al. ("Yook") (Ex. 1004).

4 US Patent No. 8,265,705 B2, filed Oct. 22, 2009, issued Sept. 11, 2012 to Lee et al. ("Lee") (Ex. 1006).

5 US Patent No. 8,677,284 B2, filed Nov. 4, 2009, issued Mar. 18, 2014 to Aguilar ("Aguilar") (Ex. 1006).

6 US 2007/0024645 A1, filed May 19, 2006, published Feb. 1, 2007 to Purcell et al. ("Purcell") (Ex. 1007).

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Petitioner relies on the declaration of Dr. Jeffrey J. Rodriguez, Ph.D. (Ex. 1003) in support of the Petition. Patent Owner did not file a preliminary response (or declaration) to the Petition.

II. ANALYSIS

A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art ("POSITA")

"would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of experience in the field of user interface technologies, including e.g., graphical user interface technologies, or a related field." Pet. 19-20 (citing Ex. 1003 ¶ 42). In determining the level of ordinary skill in the art, various factors may be considered, including the "type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field." In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).

"These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art." Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA.

Based on the preliminary record, we adopt Petitioner's as yet undisputed level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.

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B. Claim Construction In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc). Claim terms "are generally given their ordinary and customary meaning" as understood by a POSITA at the time of the invention. Id. When construing a disputed claim limitation, "we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17).

Petitioner contends the "specification of the '153 patent includes definitions for many of the terms that appear in the Challenged Claims." Pet. 20 (citing Ex. 1001, 2:38-5:41). Petitioner, therefore, applies "the definitions set forth in the '153 patent" with the qualification that such application is "[f]or purposes of this proceeding only." Id.

On the present record, we determine that construction of claim terms is not necessary to determine whether to institute inter partes review. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) ("[C]laim terms need only be construed 'to the extent necessary to resolve the controversy.'") (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are invited to address any claim construction issues bearing on this inter partes review following institution.

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C. Asserted Anticipation of Claims 1, 3-7, 9-10, 17-18, 20 by Yook Petitioner contends claims 1, 3-7, 9-10, 17-18, and 20 of the '153 patent are anticipated by Yook (Ground 1). Pet. 20-31 (citing Ex. 1003 ¶¶ 60-82). The Petition asserts that Yook discloses all of the limitations recited in those challenged claims, including independent claims 1 and 17. Id.

Anticipation under 35 U.S.C. § 102 requires "the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim."

Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, "a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation." American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).

"[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference." In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576-77 (Fed. Cir. 1991).

We assess Petitioner's evidence and argument according to the above- referenced anticipation standard. For the reasons given below, we determine the Petition satisfies the reasonable likelihood of prevailing standard under 35 U.S.C. § 314(a). We begin with a discussion of Yook.

1. Overview of Yook Yook, titled "Method of Dividing Screen Areas and Mobile Terminal Employing the Same," relates particularly "to a method and mobile terminal that can divide the screen into individual divided screen areas and simultaneously

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present user functions on the individual divided screen areas." Ex. 1004 ¶ 3. Yook Figure 1 is reproduced below.

Id., Fig. 1. Figure 1 "illustrates an external appearance of a mobile terminal." Id. ¶ 11. Mobile terminal 100 includes input unit 120 and touch screen 140. Id. ¶ 25. Yook Figure 2 depicts a block diagram of Figure 1, and is reproduced below.

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Id. ¶ 12. The block diagram in Figure 2 includes radio frequency unit 110, storage unit 150, input unit 120, audio processing unit 130, and touch screen 140, all operatively connected to central control unit 160. Id. ¶ 25. Touch screen 140 (depicted in Figure 1) includes a display unit and touch panel that can be arranged in front of the display unit. Id. ¶ 30.

Mobile unit 100 can activate a screen management program stored in storage unit 150 "in response to a user request, divide the screen into divided screen areas if necessary, and output functional view areas related to activated user functions on the individual divided screen areas." Id. ¶ 26. Control unit 160 executes the divided screen areas function. Id. ¶ 31; see also id. ¶ 37 ("In particular, the control unit 160 controls an operation to demarcate the display unit 141 into two areas according to properties of activated user functions, and outputs functional view areas related to the user functions to the two areas.").

Yook provides examples where a user can open two applications on two separate displays and switch between split-screen mode and full-screen mode. Id. ¶¶ 46-47. One embodiment is depicted in Yook Figure 4d, reproduced below. Id. ¶ 51, Fig. 4d. In Figure 4d, a user activates App.A displayed on screen 431. Id. Thereafter, when an "event" occurs, the mobile device "can display the functional

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view area App.A as to the function A on one divided screen area through resizing, and display a functional view area Event as to the event handling application program on the other divided screen area [433]." Id. ¶ 51.

2. Analysis of Whether Yook Anticipates Claim 1 We analyze whether Yook discloses each limitation of claim 1 based on the evidence and arguments presented in the Petition. Our analysis of independent claim 1 applies equally to independent claim 17.⁷For the reasons articulated below, on the present record at this stage of the proceeding, we determine Petitioner has established a reasonable likelihood of showing that at least independent claims 1 and 17 of the '153 patent are anticipated by Yook.

Preamble 1[P]: "method, comprising:"

Petitioner contends that, if the preamble is limiting, Yook discloses a

"method of supporting divided screen areas" on a mobile terminal, "a device that comprises two displays," and "a processor for controlling the two displays in order to divide a screen into logical portions." Pet. 20-21 (citing Ex. 1003 ¶¶ 60, 61, 67; Ex. 1004, Abstract, Figs. 1, 2, 4b). The Petition annotates Yook Figures 1 and 4b, reproduced below.

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Id. at 21. Yook Figures 1 and 4b disclose a first display (App. A, orange outline) and a second display (App. C, green outline), each of which is displayed on a portion of a screen used to display an application image or window to a user. Id.; see also Ex. 1003 ¶ 62 ("Yook has at least two displays, shown in the orange and green boxes above, which are logical divisions of a single screen."). On the present record, Yook and the Rodriguez Declaration adequately support Petitioner's contention that Yook discloses Preamble 1[P].

Limitation 1[A]: "providing a device having a first display and a second display;"

With regard to Limitation 1[A], Petitioner contends that "Yook discloses a device having a first display and a second display." Pet. 22 (citing Ex. 1003 ¶ 64). The Petition illustrates the point with reference to annotated Yook Figures 1 and 4b

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reproduced above in the discussion of Limitation 1[P]. The Petition contends that Yook's device has first and second displays "each of which is a portion of one or more screens that is used to display an application window to a user." Id. at 22-23 (citing Ex. 1004 ¶¶ 24-37, Figs. 1, 4b). The Petition further contends that "Yook discloses that its single physical screen is divided into separate logical displays through the use of a split-screen management program (purple below) that controls the two or more logical displays of the screen to divide the screen into the logical displays if requested by user input." Id. at 23-24 (citing Ex. 1003 ¶ 67; Ex. 1004 ¶ 26, Fig. 2).

The Petition illustrates the display control function in highlighted Yook Figure 2 reproduced below.

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Id. The block diagram in Figure 2 includes radio frequency unit 110, storage unit 150, input unit 120, audio processing unit 130, and touch screen 140, all operatively connected to central control unit 160. Ex. 1004 ¶ 25. Touch screen 140 (depicted in Figure 1) includes a display unit and touch panel that can be arranged in front of the display unit. Id. ¶ 30.

On the present record, Yook and the Rodriguez Declaration adequately support Petitioner's contention that Yook discloses Limitation 1[A].

Limitation 1[B]: "displaying a first window of a multi-display application on the first display and the second display;"

With regard to Limitations 1[B], Petitioner contends "Yook discloses that a first window of a multi-display application can be displayed on the first display and the second display." Pet. 24 (citing Ex. 1003 ¶ 68). The Petition illustrates the

"Home Key" function in annotated Figure 4b of Yook reproduced below. Pet. 25 (citing Ex. 1003 ¶ 70). The Home Key allows Yook's device to switch between full screen mode for a single application (413)—"a multi-display application" window displayed across both displays—and split-screen mode for two applications in which each application window is displayed on one of the displays (415). Id. (citing Ex. 1003 ¶ 70; Ex. 1004, Fig. 4b, ¶ 46-47). The Petition

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cites to additional examples in Yook of such full-screen and split-screen programming. Id. at 25-26 (citing Ex. 1003 ¶¶ 71-72; Ex. 1004 ¶ 51, Figs. 4c, 4d).

On the present record, Yook and the Rodriguez Declaration adequately support Petitioner's contention that Yook discloses Limitation 1[B].

Limitation 1[C]: "receiving an input to launch a second application; in response to receiving the input: displaying a second window of the second application on the second display; and"

Petitioner contends that Yook discloses Limitation 1[C]. Pet. 27 (citing Ex. 1003 ¶ 74). The Petition again illustrates how Yook's device can launch a second application, such as "App.C," and display it on a second display, in annotated Yook Figure 4b reproduced below.

Id. at 27 (annotated) (citing Ex. 1003 ¶ 70; Ex. 1004, Fig. 4b). In Figure 4b, above, when App.A is in split-screen mode with App.C (415), App.C is displayed on the second display (green outline). Id. The Petition cites to additional examples in Yook of such split-screen display programming. Id. at 27-28 (citing Ex. 1003 ¶¶ 71, 75, 76; Ex. 1004 ¶¶ 51, 96-97, Figs. 4d, 10).

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On the present record, Yook and the Rodriguez Declaration adequately support Petitioner's contention that Yook discloses Limitation 1[C].

Limitation 1[D]: "in response to opening the second window, automatically minimizing the first window to fit the first display; and displaying the minimized first window of the multi-display application on the first display."

Petitioner contends that Yook discloses Limitation 1[D]. Pet. 29 (citing Ex. 1003 ¶ 78). The Petition emphasizes that in Yook's display system, "when the split-screen mode is entered upon receiving an input to do so, the first window is 'resized' to fit the smaller first display of the split screen display." Id. (citing Ex. 1003 ¶ 79; Ex. 1004 ¶¶ 39, 48, 51). The Petition equates Yook's "resizing" of an open application window to the recited step of "minimizing the first window to fit the first display," as illustrated in annotated Figure 4b, discussed above, and annotated Figure 4d, reproduced below.

Id. at 29-30. The Petition explains the mapping of Yook Figure 4d to Limitation 1[D] as follows:

For example, with respect to Fig. 4d, Yook explains that when an

"event" condition input is generated, ["]the mobile terminal 100 can

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activate an application program." Then, "as illustrated in screen 433, the mobile terminal 100 can display the functional view area App.A as to the function 'A' on one divided screen area through resizing, and display a functional view area Event as to the event handling application program on the other divided screen area." [] Thus, App.A transforms to a minimized display mode "through resizing," which is identical to minimizing the application to fit a single logical display. Id. at 29 (citing Ex. 1003 ¶80; Ex. 1004 ¶ 51). The Petition presents a similar example and analysis with respect to Yook Figure 10. Id. at 30-31 (citing Ex. 1003 ¶¶ 80-82; Ex. 1004 ¶¶ 96-97).

On the present record, Yook and the Rodriguez Declaration adequately support Petitioner's contention that Yook discloses Limitation 1[D].

3. Conclusion for Ground 1 For the reasons given above, the Petition and Declaration of Dr. Rodriguez adequately support the assertion that Yook discloses Preamble 1[P] and Limitations 1[A]-1[D] and anticipates independent claims 1 and 17 of the '153 patent. Therefore, at this stage of the proceeding, the arguments and evidence in the Petition demonstrate a reasonable likelihood Petitioner would prevail in showing the unpatentability of at least independent claim 1 as anticipated by York.

35 U.S.C. § 314(d).

III. CONCLUSION

For the foregoing reasons, we determine Petitioner has established a reasonable likelihood of prevailing in its challenge to the patentability of at least one claim in the '153 patent. Therefore, we institute inter partes review of all challenged claims on all grounds. 37 C.F.R. § 42.108(a); see SAS, 584 U.S. at 365 ("a reasonable prospect of success on a single claim justifies review of all"). At this stage of the proceeding, the Board has not made a final determination as to the patentability of any challenged claims or any underlying factual or legal

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