Federal Circuit Upholds PTAB Findings That Google Failed to Prove VR Viewer Patent Claims Obvious

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in Google LLC v. DDC Technology, LLC, affirming the Patent Trial and Appeal Board’s (PTAB) determinations that Google did not prove claims in three DDC Technology patents directed to hand-held virtual reality (VR) viewers unpatentable as obvious.

Google challenged U.S. Patent Nos. 9,420,075, 10,528,199, and 11,093,001 in three inter partes review (IPR) proceedings, relying on a combination of Kondo and Chu. The patents share a specification describing a smartphone housed in a VR viewer, with an external input mechanism that contacts the phone’s touchscreen when actuated. Kondo discloses a smartphone attachment with a remote touch circuit, while Chu describes a button-actuated probe that contacts a device’s capacitive touchscreen through a waterproof housing. The Board found that Google failed to prove claims 1–12, 14 and 18–20 of the ‘075 patent, claims 1, 2, 4–6 and 17–26 of the ‘199 patent, and claims 27 and 28 of the ‘001 patent unpatentable.

For claim 1 of the ‘075 and ‘199 patents, the PTAB found that Kondo and Chu taught every limitation and that a skilled artisan would have been motivated to combine the references with a reasonable expectation of success. However, the Board concluded that DDC’s evidence of copying and industry praise outweighed Google’s evidence of obviousness. Specifically, it found that Google’s GCV2 viewer copied DDC’s DODOcase VR 1.2 viewer and a prototype developed by Patrick Buckley. The Board also gave moderate weight to emails from three Google engineers praising Buckley’s prototype.

Circuit Judge Reyna wrote for the court, joined by Circuit Judges Hughes and Stark, and rejected Google’s challenge to the copying finding. Google contended that the Board had compared the GCV2 viewer and DDC’s products against the claims rather than against each other. According to the opinion, the correct comparison is between the patented device and the alleged copy, and the Board made that comparison. The Board had also found the differences between the input mechanisms to be “minor, non-material modifications,” and the CAFC cited Medtronic, Inc. v. Teleflex Innovations S.a.r.l. for accepting a substantial-similarity finding despite differences. “For these reasons, we affirm the Board’s finding that DDC demonstrated copying,” the opinion stated.

The CAFC also found substantial evidence supporting the Board’s industry praise finding, noting that the Board accounted for the business context of the engineers’ emails. It further rejected Google’s argument that its obviousness evidence outweighed DDC’s objective indicia, finding no legal error in the Board’s balancing.

Google next argued that its evidence of obviousness outweighed DDC’s objective indicia. The CAFC observed that the Board never described Google’s evidence as strong, and it found no legal error in the Board’s balancing. The opinion explained that “we cannot say as a matter of law that Google’s evidence of obviousness is strong enough.”

Claim 18 of the ‘075 patent recites an electric shield with a first surface disposed on a first portion and a second surface disposed on a second portion. Google argued that “disposed on” must include indirect connections, including components far removed from one another, or the claim would be indefinite. The CAFC explained that the Board did not require direct contact but excluded connections that are far removed. In light of the claim’s structure and the specification’s use of “disposed” as a synonym for “located,” the CAFC stated that “we reject as erroneous a construction of this term that would encompass connections that are ‘far removed.’”

The CAFC also affirmed the Board’s construction of “lever” in claim 20 of the ‘075 patent as “a stiff body pivoted on a fulcrum,” citing the embodiment shown in Figures 7A through 7E and a technical dictionary. Since that construction resolved claim 20, the CAFC did not reach Google’s arguments on the claim’s “guide” limitation.

Claim 27 of the ‘001 patent requires that a linkage element be “made from a flexible material.” Google mapped the linkage element to two components, biasing member 40 and shaft 14, but asserted flexibility only for biasing member 40. The Board found that Google had not met its burden, and Google characterized that ruling as an implicit construction requiring the element to be made only from flexible material. Google argued that the Board violated the Administrative Procedure Act (APA) by adopting that construction for the first time in its final decision.

The CAFC distinguished SAS Institute, where the Board changed theories midstream in a way the petitioner could not anticipate. In this case, the Board’s institution decision gave no construction, invited further argument and evidence on claim 27, and Google did not respond. The opinion held that “such a construction was not an unexpectedly different construction that would constitute an APA violation.” The CAFC added that the Board did not find shaft 14 inflexible, only that Google failed to show it was flexible, and Google did not challenge that finding.

Claim 28 of the ‘001 patent requires that a memory material be coupled to the linkage element. Google had relied on biasing member 40 as the memory material and as part of the linkage element, and the Board found that Google did not reconcile those positions. The CAFC held that Google forfeited its proposed construction of “coupled to” since Google did not present it to the Board.

The CAFC affirmed the PTAB’s final written decisions finding that Google had not proven the challenged claims of all three patents unpatentable.