Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 30
`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 IPR2014-00438
`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 30
`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 IPR2014-00438
`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
`
`
`
`Case IPR2014-00438
`Patent 5,779,566
`
`
`I. INTRODUCTION
`
`SkyHawke Technologies, LLC (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 1–5, 13, and 17 of U.S.
`
`Patent No. 5,779,566 (Ex. 1001, the “’566 patent”) pursuant to 35 U.S.C.
`
`§ 311. L&H Concepts, LLC (“Patent Owner”) filed a Preliminary Response
`
`(Paper 6, “Prelim. Resp.”) to the Petition. We instituted inter partes review
`
`of claims 1–5, 13, and 17 of the ’566 patent (Paper 7, “Inst. Dec.”).
`
`Claims
`
`Ground
`
`Reference
`
`1–3
`
`4, 5, 13, and 17
`
`
`
`§ 103
`
`§ 103
`
`Palmer1 and Vanden Heuvel2
`
`Palmer, Vanden Heuvel, and Osamu3
`
`Patent Owner filed a Patent Owner’s Response (Paper 18, “PO
`
`Resp.”) urging, 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. We entertained oral
`
`argument in this proceeding on April 27, 2015. A transcript of the hearing is
`
`included in the record. Paper 29.
`
`Petitioner filed a Reply (Paper 21, “Pet. Reply”).
`
`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 US 5,426,422, June 20, 1995 (Ex. 1006, “Vanden Heuvel”).
`3 GB 2 249 202 A, Apr. 29, 1992 (Ex. 1007, “Osamu”).
`2
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`claims for which trial was instituted, claims 1–5, 13, and 17, 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 IPR2014-00437,
`
`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 1 of the ’566 patent is illustrative of the claims at issue in this
`
`proceeding:
`
`1. An apparatus for recording and reporting golf
`information to increase a player’s ability to improve from
`experience, the apparatus comprising:
`
`3
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`a self-contained computer unit having a memory, a power
`source and a display for selectively displaying a plurality of
`information screens and associated data stored in the memory,
`the information screens including screen-dependent data input
`fields for the associated data;
`
`key entry means for retrieving and selectively displaying
`the information screens from the memory on the display, and
`for retrieving, selecting, and recording the associated data with
`each information screen, wherein the key entry means includes
`first key means comprising one entry key for selectively
`displaying information screens, second screen-dependent field
`select key means for selecting a particular data input field of
`predefined data on a displayed screen, the second screen-
`dependent field select key means comprising two bi-directional
`tab keys for scrolling in opposite directions through the data
`input fields on a displayed information screen, and third screen-
`dependent value select key means for displaying and selectively
`recording or altering selected data in a selected data input field,
`the third screen-dependent value select key means comprising
`two bi-directional scroll keys for scrolling in opposite
`directions through the predefined data associated with the data
`input field on the displayed information screen.
`
`Ex. 1001, 16:65–17:25.
`
`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
`
`testimony 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
`
`
`
`
`
`IPR2014-00438
`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 of the
`
`effective filing date of the ’566 patent, 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 to be considered 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. Mr.
`
`Wilens, the inventor, thinks the field is handheld sports devices. Ex. 2016 ¶
`
`5.
`
`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
`
`5
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`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.
`
`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. For example, claim 13 is not restricted to golf.
`
`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 18, 9. Petitioner’s witness, 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 21, 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 21, 5–6 (citing Ex. 2014 ¶ 10; Ex. 1033, 94:11–17).
`
`6
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`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
`
`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 a grasp as to what was
`
`practicable to do back in the time the invention was made.
`
`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 In re Cuozzo Speed Techs., LLC,
`
`No. 2014-1301, 2015 WL 4097949, at *6 (Fed. Cir. July 8, 2015); Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`The ’566 patent expires July 14, 2015. 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
`
`7
`
`below.
`
`
`
`
`
`IPR2014-00438
`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 in the Patent Owner’s Response 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 any 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
`
`
`
`
`
`IPR2014-00438
`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 claim 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 1–5 and 17 each contain
`
`specific references to golf in the preamble of the claim. Ex. 1001, 16:65–
`
`17:41, 20:50–21:9. Claim 13 does not discuss golf in either the body or the
`
`preamble. Id. at 19:3–33. In any event, as Palmer describes a handheld golf
`
`device, for the 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.
`
`
`
`
`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.”). Note also claim
`13 is devoid of the term “golf.”
`
`9
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`ii. Means-Plus-Function Language
`
`Petitioner asserts that claims 1–3, 13, and 17 are means-plus-function
`
`claims governed by 35 U.S.C. § 112, sixth paragraph.5 Pet. 16. Patent
`
`Owner disagrees. Prelim. Resp. 10 n.7.
`
`To invoke § 112, paragraph six, the alleged means-plus-function
`
`claim element must not recite a definite structure that performs the described
`
`function. Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996).
`
`As in Cole, the drafter of the instant claims was “enamored of the word
`
`‘means,’” id., utilizing it seven times in the final paragraph of claim 1 to
`
`include a piece of structure which essentially was completely recited within
`
`the claim. Stripped of the excessive “means” verbiage, claim 1 recites:
`
`key entry . . . wherein the key entry . . . includes first key . . .
`comprising one entry key for selectively displaying information
`screens, second screen-dependent field select key . . . the
`second screen-dependent field select key . . . comprising two bi-
`directional tab keys for scrolling in opposite directions through
`the data input fields on a displayed information screen, and
`third screen-dependent value select key . . . the third screen-
`dependent value select key . . . comprising two bi-directional
`scroll keys for scrolling in opposite directions through the
`predefined data associated with the data input field on the
`displayed information screen.
`
`Ex. 1001, 17:7–26 (“means” language deleted).
`
`
`
`We are persuaded that such detailed recitation of structure (including
`
`three particular types of keys with particular functions) removes these
`
`limitations of claim 1 from the ambit of § 112, sixth paragraph. As a
`
`consequence, we conclude the final paragraph of claim 1 describes a user
`
`
`5 Because the ’566 patent has an effective filing date before September 16,
`2012, we refer to the pre–AIA version of 35 U.S.C. § 112.
`
`10
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`key interface which requires three types of keys, each having the particular
`
`function recited — an entry key for selecting a display screen, two bi-
`
`directional tab keys for scrolling through entry fields in a display screen, and
`
`two bi-directional scroll keys for scrolling through data to input in a display
`
`screen.
`
`Claim 2 differs slightly in its manner of interpretation, but again
`
`without a practical difference for purposes of this decision. Claim 2 adds the
`
`limitation of a “choice means” for non-sequential selection or changing of
`
`information screens. Ex. 1001, 17:27–31. In this instance, as noted by
`
`Petitioner, no structure is recited in the claim. Pet. 19–20. On the current
`
`record we discern that the Specification illustrates a single embodiment for
`
`this — a choice key accessing choices menu 18. Id. at 11:18. Claim 3
`
`includes the limitation that the choice means is “screen-dependent” which
`
`we interpret as permitting the menu to vary depending upon the screen.
`
`Claims 13 and 17, similar to claim 1, contain enough structure to
`
`remove these claims from interpretation pursuant to § 112, sixth paragraph.
`
`Each “means” is defined as a “key” having a particular function. Id. at
`
`19:3–33, 20:49–21:9.
`
`iii. Pre-Game, Game-Interactive, and Post-Game
`
`These terms occur in claims 4, 5, 13, and 17. 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 and the use of a sequence term such as “subsequently”). 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.
`
`11
`
`
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`V. ANALYSIS
`
`We turn now to the instituted grounds 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.
`
`
`A. Claims 1–3 under 35 U.S.C. § 103(a) as unpatentable over Palmer and
`Vanden Heuvel
`
`Claims 1–3 were challenged as being unpatentable over the
`
`
`
`combination of Palmer and Vanden Heuvel. These claims are apparatus
`
`claims reciting a computer having display screens and specific keys. Ex.
`
`1001, 16:65–17:33.
`
`
`
`
`
`i. Palmer (Ex. 1005)
`
`Palmer is a handheld golf “device for determining a golf play
`
`parameter.” Ex.1005, Abstract. In general, Palmer describes a handheld
`
`computing device with screens, in one embodiment 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, and performance
`
`recording. Id.; Pet. 27.
`
`Page 56 of Palmer is cited to illustrate a keypad connected with a
`
`processing means for the input of data related to play and the actuations of
`
`given functions. Pet. 27. In one embodiment, Palmer describes that the read
`
`only memory contains a club selection database. Id. Program instructions
`
`and algorithms used by the processor to determine the appropriate club for a
`
`given distance. Id. This is said to be with or without reference to data
`
`6 Citation is to the Exhibit page, not the original pagination within the
`reference.
`
`12
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`concerning the personal performance of the user stored in the device. Id.
`
`The device also contains instructions for interactive training exercises,
`
`player performance analysis, and/or score keeping. Id. at 27–28.
`
`Figure 3, which is illustrative of the device of Palmer, illustrates a
`
`screen, a handheld unit, and input keys, and is reproduced below.
`
`
`
`Figure 3 is a plan view of a handheld device of Palmer.
`
`Palmer describes an apparatus for recording and reporting golf
`
`information to increase a player’s ability to improve from experience. Ex.
`
`1005, 5 (describing a keypad and processor to input data and actuate
`
`functions relating to the play of golf).
`
`Palmer further describes a random access memory and a non-volatile
`
`memory. Id. at 6. Palmer also describes the device is to be hand held (id. at
`
`7) and battery powered (id. at 10). The display is to present instructions and
`
`information to the user, while the keyboard is to input user responses. Id. at
`
`9–10. Various data fields can be utilized by a user, including past
`
`performance and course information. Id. at 6.
`
`13
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`ii. Vanden Heuvel (Ex. 1006)
`
`Vanden Heuvel describes a pager-type device (“selective call
`
`receiver”) that receives, stores, and displays messages utilizing a plurality of
`
`screens. Ex. 1006, Abstract. A limited keypad having up, down, left, and
`
`right cursor movement keys allows for retrieving and selectively displaying
`
`the information screens from the memory on the display, utilizing quick
`
`view mode prompts 206a through 206d. Id. at 5:48–6:3, Pet. 29.
`
`Vanden Heuvel’s key 40a allows the user to selectively display an
`
`information screen. Figure 6 is reproduced below:
`
`Figure 6 is a top plan view of Vanden Heuvel’s
`apparatus and user selectable screen.
`
`
`
`Depending upon the screen selected, keys 40e and 40f allow the
`
`selection of a particular data field of predefined data on a displayed screen.
`
`These keys are two bi-directional tab keys, and are configured to scroll in
`
`opposite directions through the data fields on a displayed information screen.
`
`In one embodiment, activation of one of the cursor movement keys 40b, 40d,
`
`40e, or 40f permits adjustment of the active character position or values. Ex.
`
`1006, 8:44–9:38; Pet. 30–31. One set of keys appears to select the field, and
`
`the other pair of keys appears to change the value. Pet. 31–32.
`
`14
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`
`iii. 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. 1006) relating to a portable pager device, as doing so
`
`represented nothing more than the simple substitution of a screen-dependent
`
`input for a keypad to yield predictable results. Pet. 26 (citing Ex. 1012
`
`¶¶ 71–81).
`
`Also according to Dr. Gutwin, “the size and handheld nature of the
`
`device limits the number of user input buttons that may reasonably be
`
`incorporated into the design.” Ex. 1012 ¶ 70. Vanden Heuvel’s buttons
`
`allow a user to scroll sequentially or non-sequentially. Id. ¶ 75 (citing Ex.
`
`1006, Figs. 13–15, 5:61–6:19).
`
`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. 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 2–3 (citing Ex. 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. In
`
`particular, Patent Owner challenges Petitioner’s assertion that one of
`
`15
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`ordinary skill in the art would have modified Palmer in view of Vanden
`
`Heuvel to “increase the [Palmer] device’s display size, thereby rendering the
`
`device more easily usable on the golf course.” Ex. 2014 ¶ 26 (citing Pet.
`
`27).
`
`Mr. Ball points to Palmer Figure 3 (reproduced above on page 13) 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
`
`as well, including removal of buttons making operation more challenging
`
`(id. ¶ 29–30) and increased power consumption (id. ¶ 31). While drawings
`
`are not necessarily to scale nor are they 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.
`
`The Petition also did argue more generically that the ’566 patent’s
`
`claimed replacing 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. 26. 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
`
`16
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`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 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 bi-
`directional tab or scroll keys. Ex. 1006 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. 26–27.
`
`This argument is buttressed firmly by Ex. 1012 ¶ 69, where 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
`
`17
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`result in a device that would be unsuitable and often unusable on a golf
`
`course for a variety of significant reasons. Id.
`
`We are not persuaded that these purported 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.
`
`We, however, observe that Vanden Heuvel itself simply uses the alert device
`
`to inform a user a message has been received. Ex. 1006, 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 have been 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 [sic, 1006]).
`
`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, and as a consequence do not accept the arguments founded upon it.
`
`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.
`
`18
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`
`We believe the Patent Owner is misinterpreting the guidance of the
`
`Supreme Court in its argument.
`
`As the Supreme Court noted:
`
`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 (or necessary) to this panel and this decision, 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 each are
`
`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
`
`19
`
`
`
`
`
`IPR2014-00438
`Patent 5,779,566
`
`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
`
`information, for example golf information.’ Ex. 1001, 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 (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 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 Patent Owner that the handheld devices of Palmer and Vanden
`
`Heuvel are non
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
