GOOGLE LLC v. DDC TECHNOLOGY, LLC

Authored by: Jeremy J. Gustrowsky

The Federal Circuit has affirmed three Patent Trial and Appeal Board decisions holding that Google failed to prove certain claims of three virtual reality viewer patents were obvious. The patents at issue, U.S. Patent Nos. 9,420,075, 10,528,199, and 11,093,001, share a common specification and describe a cardboard-style VR headset that holds a smartphone. Early VR viewers had a practical problem. Once the phone was tucked inside the housing, the user could no longer reach the touchscreen. The patented viewers solve this with an input mechanism, accessible from outside the housing, that carries an electrical shield and taps the phone’s touchscreen when pressed, creating a touch event the phone can detect.

Google challenged the claims in inter partes review, relying on the same two references in all three proceedings: Japanese Patent Publication JP 3176588 (Kondo), which describes an attachment with a remote touch circuit for operating an enclosed phone, and U.S. Patent Application Publication No. 2013/0082963 (Chu), which describes a push-button actuator for reaching a capacitive touchscreen inside a waterproof case. The Board agreed that the combination disclosed every limitation of the broadest claims and that a skilled artisan would have been motivated to combine the references. The Board nonetheless found the claims not proven unpatentable because the patent owner’s objective evidence of nonobviousness tipped the scales the other way.

Two categories of real-world evidence drove that result. On copying, the Board compared Google’s second-generation Cardboard viewer directly to the DODOcase VR 1.2 product and to the inventor’s prototype, found the input mechanisms substantially similar, and described the differences as minor, non-material modifications that did not change the mechanism’s fundamental features. Google argued the Board had improperly compared the products to the claims instead of to each other, but the Federal Circuit found that was simply not what the Board did. On industry praise, the patent owner pointed to emails from three Google engineers who had seen a prototype video, two of whom wrote “That button is genius” and “That’s an ingenious button!” The Board discounted a third, more tepid message as mere politeness and acknowledged that an ongoing business relationship made the remaining comments somewhat less probative. The court held that this careful, context-aware treatment was supported by substantial evidence.

Google’s broader legal argument was that its “strong prima facie case” of obviousness should have overwhelmed what it called marginal secondary-considerations evidence. The Federal Circuit rejected that framing on two levels. First, the characterizations were Google’s own. The Board never called Google’s obviousness showing strong or overwhelming, and it arrived at a motivation to combine only after rejecting two of Google’s three proposed rationales following a contested trial. By contrast, the Board expressly called the copying evidence strong and gave moderate weight to industry praise, findings Google did not separately challenge. Second, the court reiterated that the “prima facie case” concept belongs to patent examination, where it allocates burdens between examiner and applicant, and does not translate into a burden-shifting framework in the adjudicatory setting of an IPR. Objective indicia must be weighed in every case, and on this record the court could not say as a matter of law that Google’s evidence outweighed the patent owner’s.

The court also upheld two claim constructions. For “disposed on” in claim 18 of the ‘075 patent, Google insisted the term had to cover indirect connections between components that were “far removed” from one another. The Board had declined to go that far without requiring direct contact, and the Federal Circuit agreed, noting that the claim pairs a first surface with a first portion and a second surface with a second portion, and that the specification uses “disposed on” interchangeably with “located on.” For “lever” in claim 20, the court affirmed the Board’s construction of “a stiff body pivoted on a fulcrum,” supported by the patent figures and by a mechanical engineering dictionary the Board found more probative than general-purpose dictionaries.

The final two issues are cautionary tales about developing arguments before the Board. For claim 27 of the ‘001 patent, which requires a linkage element “made from a flexible material,” Google mapped the limitation onto two components of Chu but argued flexibility for only one of them. Google called the Board’s reading a surprise construction that violated the Administrative Procedure Act. The court disagreed, pointing out that the Board had raised the problem in its institution decision and expressly invited more argument and evidence at trial. Google never took up the invitation. Unlike earlier cases where the Board changed positions midstream, Google had fair notice that the issue remained open. Similarly, for claim 28, Google relied on the same Chu component for both the “memory material” and the “linkage element” it was supposedly “coupled to,” a circularity the Board identified at institution and Google never addressed. The court held that argument forfeited and affirmed across the board.

The decision is a useful reminder that strong objective evidence of nonobviousness can defeat a technically complete prior art combination, and that invitations from the Board to submit more briefing are best treated as instructions rather than suggestions.