Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 31
`Entered: July 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKYHAWKE TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`L&H CONCEPTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00437
`Patent 5,779,566
`____________
`
`
`
`Before JAMES T. MOORE, PATRICK R. SCANLON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35. U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`Paper 31
`Entered: July 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKYHAWKE TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`L&H CONCEPTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00437
`Patent 5,779,566
`____________
`
`
`
`Before JAMES T. MOORE, PATRICK R. SCANLON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35. U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-00437
`Patent 5,779,566
`
`
`I. INTRODUCTION
`
`SkyHawke Technologies, LLC (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 8–11, 14, and 18 of U.S.
`
`Patent No. 5,779,566 (Ex. 1001, “the ’566 patent”) pursuant to 35 U.S.C.
`
`§ 311. Patent Owner L&H Concepts, LLC (“Patent Owner”) filed a
`
`Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. We
`
`instituted inter partes review of claims 8–11, 14, and 18 in a decision dated
`
`August 21, 2014 (Paper 7, “Inst. Dec.”).
`
`Claims
`
`Ground
`
`References
`
`8–11, 14, and 18
`
`§ 103
`
`Palmer,1 Osamu,2 and Vanden Heuvel3
`
`
`
`Patent Owner responded to the Petition by arguing, inter alia, the
`
`combination of references would not have been made by one of ordinary
`
`skill in the art, the prior art does not teach every element of the claims, and
`
`the testimony of the Petitioner’s witness lacks credibility and should be
`
`given no weight (Paper 19, “PO Resp.”). We entertained oral argument in
`
`this proceeding on April 27, 2015. A transcript of the hearing is included in
`
`the record. Paper 30.
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
`
`Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73, we determine that the record adduced at trial supports a conclusion
`
`that Petitioner has demonstrated by a preponderance of the evidence that the
`
`
`1 WO 92/04080, Mar. 19, 1992 (Ex. 1005, “Palmer”).
`2 GB 2 249 202 A, Apr. 29, 1992 (Ex. 1006, “Osamu”).
`3 US 5,426,422, June 20, 1995 (Ex. 1007, “Vanden Heuvel”).
`2
`
`
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`claims for which trial was instituted, claims 8–11, 14, and 18, are
`
`unpatentable.
`
`II. THE ’566 PATENT
`
`The ’566 patent is involved in litigation. Petitioner states that the
`
`’566 patent is asserted in co-pending civil action L&H Concepts, LLC v.
`
`SkyHawke Technologies, LLC, No. 2:13-cv-00199-JRG (E.D. Tex.). Pet.
`
`2–3. We observe that the civil action has been transferred to the Southern
`
`District of Mississippi as No. 3:14-cv-00224. An amended order staying
`
`that proceeding was entered July 7, 2014. Docket Entry 76. A motion is
`
`pending to lift the stay. See L&H Concepts, LLC v. SkyHawke Techs, LLC,
`
`No. 3:14-cv-00224(S.D. Miss. Apr. 10, 2015)(Docket Entry 83)(“MOTION
`
`to Lift Stay for Purposes of Fact Discovery by L&H Concepts, LLC”).
`
`The ’566 patent was also involved in an ex-parte reexamination
`
`proceeding, number 90/008,817. A reexamination certificate, US 5,779,566
`
`C1, was issued on March 31, 2009. The patentability of claims 1–37 was
`
`confirmed during that proceeding. A final decision in IPR2014-00438,
`
`which challenges different claims of the ’566 patent, is being issued on the
`
`same day as this decision.
`
`The claims relate to a computer with a display for user interaction
`
`before, during, and after a game. The unit is said to be a “recording,
`
`reporting and advising” unit. Ex. 1001, Abstract.
`
`III. ILLUSTRATIVE CLAIM
`
`Claim 8 of the ’566 patent is a method claim and illustrative of the
`
`claims at issue in this proceeding:
`
`8. A method for recording and reporting golf information
`to increase a player’s ability to improve from experience,
`comprising the following steps:
`
`
`
`3
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`storing a plurality of pre-game, game-interactive and
`post-game information screens in a memory of a computer unit
`having a display for selectively displaying one or more of the
`information screens, the information screens including screen-
`dependent data input fields for entry of data;
`
`displaying in sequential fashion one or more pre-game
`information screens and prompting entry of data which defines
`parameters of an upcoming game;
`
`providing a choice among a plurality of game-interactive
`information screens for recording data during the game defined
`by the parameters entered in the pre-game information screens;
`
`displaying a chosen game-interactive information screen;
`
`entering data in the chosen game-interactive information
`screen corresponding to a game as the game is played and
`simultaneously recording entered data in the memory of the
`computer unit;
`
`providing post-game reports based on the data entered in
`the game-interactive information screen; and
`
`providing one or more game-interactive advice/feedback
`information screens.
`
`Ex. 1001, 18:5–30.
`
`IV. ANALYSIS OF CLAIM CHALLENGES
`
`A. The Level of Ordinary Skill in the Art in 1993
`
`We first turn to the testimony of the Petitioner’s witness, Professor
`
`Carl A. Gutwin (hereinafter “Dr. Gutwin”). We look to this Declaration to
`
`discern his viewpoint on the level of ordinary skill in the art. He testifies
`
`that he has more than 20 years of experience in the field of computer science
`
`and computer-human interaction. Ex. 1012 ¶ 3. His credentials and CV
`
`provide sufficient evidence for us to deem him to be an expert witness. Id.
`
`¶¶ 4–9, App. A.
`
`
`
`4
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`According to Dr. Gutwin, the relevant field is human-computer
`
`interaction. Id. ¶ 11. Also according to Dr. Gutwin, the prior art
`
`demonstrates that a person of ordinary skill in the field at the time the ’566
`
`patent was effectively filed, was aware of and capable of designing key-
`
`based interactive systems using known interface techniques. Id. ¶ 13.
`
`Patent Owner’s witness, Mr. Alan Ball, while not having as extensive
`
`an educational background as Dr. Gutwin, nonetheless has significant
`
`experience. Ex. 2014 ¶¶ 5–10. His experience persuades us that he too is
`
`qualified as an expert witness. According to Mr. Ball, the field is to be more
`
`narrowly circumscribed than Dr. Gutwin has indicated. Instead of human
`
`computer interaction, Mr. Ball thinks the more appropriate field is handheld
`
`sports, particularly golf, recording devices. Id. ¶ 11.
`
`We think neither witness is persuasive on this point, and the
`
`inventor’s original disclosure is closer to the actual state of the art at the time
`
`the invention was made.
`
`We thus turn to the Patent Specification, at Ex. 1001, 2:27–40, as
`
`representative of a more objective form of evidence.
`
`In its most basic form the inventive apparatus is a
`comfortably handheld, self-contained computer unit having a
`non-volatile memory, a power source, a general output display
`for selectively displaying a plurality of informational screens
`stored in the memory, and a program that determines logical
`screen and information sequence and processes the data
`entered. The unit is provided with key entry means for
`retrieving and selectively displaying various screens from the
`memory on the display and for entering game data into each
`screen to be stored in the memory. The provision of a general
`output display, the variety of specialized screens for
`organization of data, and the handheld portability of the
`invention result in a device with nearly unlimited potential.
`
`
`
`5
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`We believe this passage reflects most fairly the field of the invention.
`
`Therefore, we find the field to be that of portable computing devices for the
`
`entry, organization, and analysis of data, including, but not limited to, sports
`
`data.
`
`As to the level of skill in this field, Patent Owner asserts that the
`
`parties are in agreement that the level of ordinary skill in the art in 1992 was
`
`relatively low. Paper 19, 10. Petitioner’s expert, Dr. Gutwin, stated in his
`
`Declaration that the level of ordinary skill was a “person to whom an expert
`
`in the relevant field could assign a routine task with reasonable confidence
`
`that the task would be successfully carried out.” Ex. 1012 ¶ 13.
`
`Moreover, Patent Owner asserts that Dr. Gutwin confirmed in
`
`deposition that he did not believe that there was either a minimum
`
`educational threshold or a minimum experience requirement to qualify as a
`
`person of ordinary skill. Ex. 2015, 101–02. Patent Owner’s witness, Mr.
`
`Ball, is said to confirm the relatively immature state of the art in handheld
`
`devices in 1992. Ex. 2014 ¶¶ 19–20.
`
`Petitioner responds that “a person skilled in the art at the time the ’566
`
`patent was filed was a generalist having an understanding of the design
`
`principles applicable to handheld key-based systems, whether the device was
`
`to be used for sports or personal communication, for example.” Paper 22, 6.
`
`Petitioner points to Patent Owner’s witness testimony that he “was at least
`
`one of ordinary skill in the art in 1992” (Ex. 2014 ¶ 19), based on his
`
`experience. Paper 22, 6 (citing Ex. 2014 ¶ 10; Ex. 1033, 94:11–17).
`
`We have determined that Mr. Ball’s testimony as to the level of
`
`ordinary skill in the art is most credible and accurate — while the level of
`
`skill in the pertinent time period was somewhat low — that “an ordinary
`
`
`
`6
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`artisan would have at least some experience working in the field” either
`
`“designing or building” portable computing devices. Ex. 2014 ¶ 18. In
`
`other words, the skilled artisan would have had an understanding of what
`
`was practicable at the time of the invention.
`
`B. Claim Construction
`
`The Board interprets unexpired claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed
`
`Techs., LLC, No. 2014-1301, 2015 WL 4097949, at *6 (Fed. Cir. July 8,
`
`2015). The ’566 patent expires July 14, 2015. See Ex. 1001.
`
`We note, for completeness of the record, that our decision remains
`
`unchanged under either the “broadest reasonable interpretation” standard or
`
`the district court standard of construing each claim of the patent in
`
`accordance with the ordinary and customary meaning of such claim as
`
`understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent
`
`As Figure 1 of the instant patent provides a visual frame of reference
`
`that is useful in understanding the claim language, Figure 1 is reproduced
`
`below.
`
`
`
`7
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`Figure 1 is a plan view of an embodiment of the ’566 patent.
`
`i. Preamble Language
`
`
`
`Petitioner concludes that the preambles of the claims are non-limiting.
`
`Pet. 17. Patent Owner disagrees. Prelim. Resp. 4. Patent Owner asserts that
`
`the preambles give life to the meaning of the claims in reciting an apparatus
`
`for recording and reporting data from golf or sports events. Id. Patent
`
`Owner states that “Patent Owner accepts the claim constructions set forth by
`
`the Board in the Institution Decision.” PO Resp. 2. As Patent Owner has
`
`not pointed to any additional persuasive argument, referencing only its prior
`
`arguments, we reiterate the previous determination, and note that further
`
`arguments are waived on this point.
`
`We find that the preamble is non-limiting. A claim preamble has the
`
`import that the claim as a whole suggests for it. When the claim preamble
`
`recites structural limitations of the claimed invention, the PTO and courts
`
`give limiting effect to that usage. Conversely, when the claim body defines
`
`
`
`8
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`a structurally complete invention and the preamble only states a purpose or
`
`intended use for the invention, the preamble is not limiting. Rowe v. Dror,
`
`112 F.3d 473, 478 (Fed. Cir. 1997).
`
`While the preambles in the challenged claims may give some overall
`
`context for the claim limitations, we find that they are not necessary to give
`
`life to the claim terms or breathe meaning into the claims. The claims and
`
`the Specification indicate that the challenged claims may be used in the field
`
`of golf or similar sporting events, without necessarily limiting their
`
`application only to golf.4 We observe that claims 9–11 and 18 each contain
`
`specific references to golf in the body of the claim. Ex. 1001, 18:31–
`
`65, 21:10–34. Claims 8 and 14 do not. Id. at 18:5–30, 19:34–62. In any
`
`event, as Palmer describes a handheld golf device, for purposes of this
`
`decision we see no practical difference in whether the “golf” portion of the
`
`preamble applies to the challenged claims, as handheld golf devices were
`
`well known.
`
`ii. Pre-Game Data Entry
`
`Claims 8 and 18 use the phrases “pre-game” screen or “providing a
`
`pre-game mode of data entry in which one or more pre-game information
`
`screens are displayed to prompt the entry of data which defines parameters
`
`of an upcoming game, and providing a choice of at least one of a plurality of
`
`
`4 See, e.g., Ex. 1001, 2:20–22 (“The present invention is a greatly improved
`handheld computer unit for recording and reporting sports information, for
`example golf information . . . .”); see also id. at 16:47–53 (“The inventive
`handheld reporting unit and method of operation is of course not limited to
`the game of golf, as those skilled in the art will be able to adapt the invention
`to almost any sport or game for which it is desirable to record and report a
`large amount of data. Golf is the game for which the invention is best
`suited, but not the only game to which it can be applied.”)
`
`
`
`9
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`game-interactive information screens in a subsequent game-interactive mode
`
`of operation representing different levels of data recording detail.”
`
`Ex. 1001, 18:5–30, 21:10–34. Petitioner asserts that this requires the user to
`
`be able to select, in a pre-game mode, the amount of detail to record later in
`
`a game interactive mode. Pet. 16.
`
`Patent Owner does not provide any specific claim construction, but
`
`asserts multiple errors with the Petitioner’s construction, and that the claim
`
`language “is clear on its face and needs no additional construction.” Prelim.
`
`Resp. 9. In its Response, the Patent Owner effectively asserts that “pre-
`
`game,” to have a meaning distinct from game interactive, must not include
`
`game play or practice. PO Resp. 20.
`
`While the claims are lengthy, they are easily understood without
`
`reference to additional sources. We observe that no particular order of steps
`
`is recited or required except where expressly temporally limited in the claim
`
`(e.g., pre-game, game interactive, and post-game). We determine that pre-
`
`game means at any time prior to a game. Likewise, game-interactive means
`
`during a game, and post-game means after a game.
`
`V. ANALYSIS
`
`We turn now to the instituted ground of unpatentability. We consider
`
`the arguments made by Petitioner in the Petition and the Petitioner’s Reply
`
`(Paper 22, “Pet. Reply”), as well as the arguments in Patent Owner’s
`
`Response, in determining whether Petitioner has prevailed.
`
`Petitioner initially urged that the “references addressed below provide
`
`the teachings believed by the [E]xaminer to be missing from the prior art and
`
`render obvious the challenged claims.” Pet. 17. We observe that this is an
`
`incorrect standard. The Petitioner bears the burden to present sufficient
`
`
`
`10
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`evidence in the Petition and whatever rebuttal evidence is permitted during
`
`trial; reference to a prior examination or reexamination proceeding is not
`
`normally persuasive evidence in these trial proceedings.
`
`A. Claims 8–11, 14, and 18 under 35 U.S.C. § 103(a) as unpatentable over
`Palmer, Osamu, and Vanden Heuvel
`
`Claims 8–11, 14, and 18 were challenged as being unpatentable over
`
`
`
`the combination of Palmer, Osamu, and Vanden Heuvel. These claims are
`
`method claims reciting steps utilizing a computer having a memory and
`
`display screens. Ex. 1001, 18:5–21:34.
`
`i. Palmer (Ex. 1005)
`
`Palmer describes a handheld device for determining a golf play
`
`
`
`
`
`parameter. Ex. 1005, Abstract. In general, Palmer describes a handheld
`
`computing device with screens, utilizing an infrared beam to determine a
`
`distance to an object to determine and display a play parameter, such as club
`
`selection for a given distance. Id.; Pet. 21.
`
`Page 55 of Palmer is cited by Petitioner to illustrate a keypad
`
`connected with a processing means for the input of data related to play and
`
`the actuations of given functions. Pet. 21. In one embodiment, Palmer
`
`describes that the read only memory contains a club selection database.
`
`Program instructions and algorithms used by the processor determine the
`
`appropriate club for a given distance. This determination is said to be with
`
`or without reference to data concerning the personal performance of the user
`
`stored in the device. The device also contains instructions for interactive
`
`training exercises, player performance analysis, and/or score keeping. Id.
`
`5 Citation is to the Exhibit page, not the original pagination within the
`reference.
`
`
`
`11
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`Figure 3 is illustrative of the device of Palmer, illustrating a screen, a
`
`handheld unit, and input keys, and is reproduced below.
`
`Figure 3 is a plan view of a handheld golf device of Palmer.
`
`
`
`ii. Osamu (Ex. 1006)
`
`Osamu describes a device and method for recording and reporting golf
`
`information to increase a player’s ability to improve from experience.
`
`Pet. 21 (citing Ex. 1006, 13, Fig. 3). Osamu Figure 3 is also illustrative, and
`
`reproduced below.
`
`
`
`12
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`
`
`Figure 3 is a plan view of a portable golf device of Osamu.
`
`Osamu describes a handheld electronic golf computer carried by a
`
`golfer and used to store location, score, and club selection data. Ex. 1006,
`
`Abstract. During a game-interactive mode, two game-interactive recording
`
`information screens are presented to the golfer. First, a scorecard screen,
`
`and second, a separate screen allowing the golfer to input the location of
`
`each shot on a given hole and the club used for each shot to track them. Id.
`
`at 19. The carry distances for each shot are saved and displayed to the
`
`golfer. Id.
`
`iii. Vanden Heuvel (Ex. 1007)
`
`Vanden Heuvel describes a handheld electronic selective call
`
`receiver permitting user data input by cursor movement keys 40b,
`
`40d, 40e, or 40f, which permit an adjustment of values in particular
`
`screens. Ex. 1007, 9:5–26; Pet. 24. Figure 2 is illustrative and
`
`reproduced below.
`
`
`
`13
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`Figure 2 is a front plan view of a portable pager device of Vanden Heuvel.
`
`
`
`
`
`iv. The Combination of References
`
`According to Dr. Gutwin, a person of ordinary skill in the art at the
`
`time the invention was made would have combined the display, processor,
`
`and inputs of Palmer’s handheld device with the teachings of Vanden
`
`Heuvel (Ex. 1007) relating to a portable pager device having sequential
`
`screens and prompts, as doing so represented nothing more than the simple
`
`substitution of a screen-dependent input for a keypad to yield predictable
`
`results. Ex. 1012 ¶ 78.
`
`Also according to Professor Gutwin, the size and handheld nature of
`
`the device limits the number of input buttons that may be incorporated
`
`reasonably into the design. Id. ¶ 70. Vanden Heuvel’s buttons allow a user
`
`to scroll sequentially or non-sequentially. Id. ¶ 75 (citing Ex. 1006, 5:61–
`
`6:19, Figs. 13–15). Professor Gutwin also testifies that it would have been
`
`obvious to one of ordinary skill:
`
`tasked with designing a handheld golf computer utilizing a screen-
`based navigation structure and screen-dependent data input
`
`
`
`14
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`methodology would look to other known types of key-based systems
`utilizing these features – for example, personal computers and the
`third-party software operating thereon, pagers (i.e., Vanden Heuvel),
`remote controllers, etc. – to discern the various implementation
`options currently being employed by skilled practitioners.
`Id. ¶ 69.
`
`Finally, Professor Gutwin testifies that a person of ordinary skill in the
`
`art would have combined the teachings of Osamu with the device of Palmer
`
`because both use temporal screen sequences, and because the Palmer’s club
`
`selection screen corresponds directly to the shot tracker screen. Ex. 1012
`
`¶¶ 57–60. Professor Gutwin testifies that including the shot tracker would
`
`enable one using the Palmer device to enhance the golfer’s ability to learn
`
`from past performance. Id. ¶ 60
`
`Patent Owner asserts that Petitioner has not set forth a rationale why
`
`one of ordinary skill in the art would seek to modify the Palmer reference as
`
`Petitioner asserts. PO Resp. 2–3. Patent Owner asserts that given the level
`
`of ordinary skill in the art at the time of the invention, Petitioner has failed to
`
`establish that one of ordinary skill in the art would have had reason to
`
`believe that the technology of Vanden Heuvel could even be employed in
`
`the system of Palmer. Id. at 3 (citing Exhibit 2014 ¶¶ 26–31); see also id. at
`
`15–19 (arguing that the combination of Palmer and Vanden Heuvel is
`
`improper because the technology disclosed in Vanden Heuvel is
`
`fundamentally unsuitable for use in the device of Palmer).
`
`Patent Owner’s witness, Mr. Ball, testifies that the reasons stated by
`
`Petitioner for combining Palmer with Vanden Heuvel are lacking. Mr. Ball
`
`challenges Petitioner’s assertion that one of ordinary skill in the art would
`
`have modified Palmer in view of Vanden Heuvel to “increase the [Palmer]
`
`
`
`15
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`device’s display size, thereby rendering the device more easily usable on the
`
`golf course.” Ex. 2014 ¶ 26 (citing Pet. 20).
`
`Mr. Ball points to Palmer Figure 3 (reproduced above on page 12) and
`
`notes that there is more than enough space to enlarge the screen in Palmer.
`
`Ex. 2014 ¶ 27. Mr. Ball also challenges the practical design considerations,
`
`including removal of buttons making operation more challenging (id. ¶ 29–
`
`30) and increased power consumption (id. ¶ 31). While drawings are not
`
`necessarily to scale or indicative of what may be operationally behind the
`
`cover of a device, this argument and evidence has some merit and persuasive
`
`value.
`
`We do think this additional testimony undercuts at least one portion of
`
`the motivation rationale put forth by the Petitioner. Based on the
`
`preponderance of the evidence, we are not persuaded that one of ordinary
`
`skill in the art at the time the invention was made would have made the
`
`combination for one reason advanced by Dr. Gutwin — increasing the
`
`display size.
`
`Petitioner, however, also argues more generically that the ’566
`
`patent’s claimed replacing of numeric or alphanumeric character keys with a
`
`set of tab and scroll keys was a simple design choice widely employed by
`
`skilled artisans well before the priority date of the ’566 patent. Pet. 9. In
`
`more detail, it is urged that:
`
`A person of ordinary skill would have combined the teachings of
`Vanden Heuvel with the handheld electronic device of Palmer as
`doing so represented nothing more than a simple substitution of one
`known element (i.e., the keypad of Palmer) for another (i.e., the
`screen-dependent data input of Vanden Heuvel) to yield predictable
`results – namely, the entry of data into the scorecard or other fields
`associated with the Palmer device. Specifically, and as recognized by
`Palmer, one way of accomplishing data input in a handheld device is
`
`
`
`16
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`by the use of a keyboard with function key inputs. Ex. 1005 at p. 10
`and FIG. 3. However, as taught by Vanden Heuvel, another known
`way to input data into a handheld device is through the use of screen-
`dependent data fields and values adjusted using bidirectional tab or
`scroll keys. Ex. 1007 at 9:5-38. See also Ex. 1012 at ¶¶ 68 and 69. A
`person of ordinary skill in the art could have predictably implemented
`Vanden Heuvel’s data input method into the handheld device of
`Palmer . . . .
`
`Pet. 20.
`
`This argument is buttressed firmly by Ex. 1012 ¶ 69, in which Dr.
`
`Gutwin testifies as to the search for known data entry mechanisms. We
`
`deem this testimony to be credible.
`
`Mr. Ball challenges that testimony somewhat in his testimony at Ex.
`
`2014 ¶¶ 32–45, inter alia. In essence, he points to the difficulties in using
`
`the entry mechanism of Vanden Heuvel with the Palmer system, such that
`
`the system would largely be unusable with golf. He mentions the effects of
`
`sunlight principally and the effects of using part of the screen for entry of
`
`data, relying heavily on the description in Vanden Heuvel of an alternate
`
`alert device to alert of a message.
`
`Patent Owner in its response urges that the combination of Palmer and
`
`Vanden Heuvel is improper because the technology disclosed in Vanden
`
`Heuvel is fundamentally unsuitable for use in the device of Palmer. PO
`
`Resp. 15 (citing Ex. 2014 ¶¶ 32–36). According to the Patent Owner, one of
`
`ordinary skill at the time of the invention would have believed that replacing
`
`the keyboard of Palmer with a screen dependent input mechanism would
`
`result in a device that would be unsuitable and often unusable on a golf
`
`course for a variety of significant reasons. Id.
`
`
`
`17
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`We are not persuaded that these drawbacks would have prevented one
`
`of ordinary skill from contemplating the inclusion of an alternate data entry
`
`mechanism such as Vanden Heuvel.
`
`Indeed, one of the underpinnings of Mr. Ball’s testimony is the
`
`existence of an auxiliary alert device as indicative of a sunlight problem.
`
`However, we observe that Vanden Heuvel itself uses the alert device to
`
`inform a user a message has been received. Ex. 1007, 4:39–41. The alert
`
`could be a light or a sound. Id. at 5:18–22. We have not found any
`
`description in Vanden Heuvel concerning visibility outdoors.
`
`Yet, Mr. Ball states “[i]n fact, it appears that Vanden Heuvel was even
`
`cognizant of the fact that its screen may be difficult to read and, thus
`
`included an ‘alert device 38 to alert the user that a selective call message has
`
`been received.’ . . . The alert device is either an LED light or an audio
`
`signal – neither of which are affected by direct sunlight.” Ex. 2014 ¶ 34
`
`(citing Ex. 1007).
`
`We find that the inclusion of an alternate alert was to provide
`
`additional alerting means, as stated in Vanden Heuvel. We find the
`
`testimony of Mr. Ball that this inclusion of an alternate alert somehow
`
`indicates Vanden Heuvel was cognizant of a visibility problem to be not
`
`credible.
`
`Patent Owner is further of the position that the substitution rationale is
`
`“clearly legally deficient” because it does not address why one would make
`
`the combination. PO Resp. 3–4.
`
`We believe the Patent Owner is misinterpreting the guidance of the
`
`Supreme Court in its argument.
`
`
`
`
`
`As the Supreme Court noted:
`
`18
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`A person of ordinary skill is also a person of ordinary
`creativity, not an automaton. . . . When a work is available in
`one field of endeavor, design incentives and other market forces
`can prompt variations of it, either in the same field or a
`different one. If a person of ordinary skill can implement a
`predictable variation, § 103 likely bars its patentability. For the
`same reason, if a technique has been used to improve one
`device, and a person of ordinary skill in the art would recognize
`that it would improve similar devices in the same way, using
`the technique is obvious unless its actual application is beyond
`his or her skill. . . . [We] must ask whether the improvement is
`more than the predictable use of prior art elements according to
`their established functions.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–21 (2007).
`
`While the Petitioner’s proposed screen size motivation is no longer
`
`persuasive to this panel, we conclude that a preponderance of evidence in
`
`this trial supports a conclusion that replacing an alphanumeric keyboard with
`
`a set of tab and scroll keys was a substitution of one known data entry
`
`method with an equivalent data entry mechanism. We expressly reject the
`
`screen washout argument made, and the underlying testimony in Mr. Ball’s
`
`Declaration.
`
`Patent Owner also urges that Vanden Heuvel and Palmer are each
`
`nonanalogous art. PO Resp. 11.
`
`In order to rely properly on a prior art reference to support a rejection,
`
`“the reference must either be in the field of the applicant’s endeavor or, if
`
`not, then be reasonably pertinent to the particular problem with which the
`
`inventor was concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
`
`1992).
`
`Patent Owner asserts that the ’566 patent is directed to a “‘greatly
`
`improved handheld computer unit for recording and reporting sports
`
`
`
`19
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`information, for example golf information.’ Ex. 1001 at 2:20-26; see also
`
`id. at 1:8-13 (stating that the ‘Field of the Invention’ is ‘related to an
`
`apparatus and method for reporting and recording golf information and for
`
`providing golf advice . . . .’).” PO Resp. 11–12 (emphasis omitted). Patent
`
`Owner asserts that the field of the invention is strictly the recording and
`
`reporting of sports information. Id. at 12.
`
`As noted above, the field of “human computer interaction” suggested
`
`by the Petitioner is far too broad. As the evidence of record from the ’566
`
`patent itself supports a conclusion that the field is properly that of portable
`
`computing devices for the entry, organization, and analysis of data, we
`
`disagree with the Patent Owner that the handheld devices of Palmer and
`
`Vanden Heuvel are nonanalogous.
`
`With this background in place, we return to an analysis of the claims
`
`and their language individually.
`
`v. The Claims
`
`Claim 8
`
`Claim 8 is a method claim with various steps, which fall generally
`
`into the categories of storing information, displaying information, and
`
`entering information. Preamble omitted, our analysis element by element
`
`based on the evidence made of record in this trial, is below.
`
`“storing a plurality of pre-game, game-interactive and post-
`game information screens in a memory of a computer unit having a
`display for selectively displaying one or more of the information
`screens, the information screens including screen-dependent data
`input fields for entry of data”
`
`
`
`20
`
`
`
`Case IPR2014-00437
`Patent 5,779,566
`
`
`We observe that both Palmer and Osamu describe methods that
`
`include training exercises and recording of data to improve a player’s
`
`performance. Ex. 1005, 5; Ex. 1006, 13.
`
`Palmer, in particular, indicates that an embodiment of the invention
`
`permits “information regarding each hole on one or more golf courses may
`
`be entered by the user and stored in the non-volatile memory 5. This
`
`information can be recalled whenever the user wishes to play a golf course
`
`whose data is stored.” Ex. 1005, 16.
`
`Patent Owner is of the opinion that Palmer and Osamu do not describe
`
`“pre-game” information screens. PO Resp. 19–20. Patent Owner further
`
`asserts that each screen is at best “game interactive.” Id. at 20. The reason
`
`for this appears to be the Institution Decision’s reference to pages 10, 15,
`
`and 17 of the Palmer reference. Patent Owner asserts that none of them can
`
`be temporally pre-game screens. Id.
`
`We observe that sufficient evidence of record supports a finding that
`
`Palmer describes entering data and then recalling it whenever the user
`
`wishes to play a golf course whose data is stored. This falls within a
`
`reasonable definition of a “pre-game screen.”
`
`Likewise, Palmer has express disclosure of different
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
