UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`505 GAMES, ACTIVISION, CAPCOM, DISNEY, ELECTRONIC ARTS, BANDAI
`NAMCO, RIOT GAMES, SONY, SQUARE ENIX, TAKE-TWO, AND UBISOFT
`Petitioners
`
`
`
`
`
`v.
`
`BABBAGE HOLDINGS, INC.
`Patent Owner
`
`____________
`
`Case No. TBD
`Patent 5,561,811
` ____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 5,561,811
`
`
`
`
`
`
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 5,561,811
`
`
`
`TABLE OF CONTENTS
`
`IDENTIFICATION  OF  CHALLENGE  UNDER  37  C.F.R.  §  42.104(B)  AND  RELIEF    
`REQUESTED  ...........................................................................................................................................................  2  
`
`TABLE  OF  CONTENTS  ............................................................................................................................................  1  
`I.  
`INTRODUCTION  ..............................................................................................................................................  1  
`II.   GROUNDS  FOR  STANDING  UNDER  37  C.F.R.  §  42.104(A)  ......................................................................  1  
`III.  
`IV.   SUMMARY  OF  THE  ‘811  PATENT  ..............................................................................................................  4  
`A.   DESCRIPTION  OF  THE  ALLEGED  INVENTION  OF  THE  ‘811  PATENT  ..............................................................................  4  
`B.   SUMMARY  OF  THE  PROSECUTION  HISTORY  OF  THE  ‘811  PATENT  ...............................................................................  5  
`C.   LEVEL  OF  A  PERSON  HAVING  ORDINARY  SKILL  IN  THE  ART  .................................................................................  8  
`D.   CLAIM  CONSTRUCTION  UNDER  37  C.F.R.  §  42.104(B)(3)  ...................................................................................  9  
`E.  
`“PLURALITY  OF  INPUT  DEVICES  CONNECTED  TO  A  SINGLE  COMPUTER”  .........................................................................  10  
`F.   USER  PREFERENCE  LIMITATIONS  ....................................................................................................................................  13  
`V.   THERE  IS  A  REASONABLE  LIKELIHOOD  THAT  CLAIM  7  OF  THE  ‘811  PATENT  IS    
`UNPATENTABLE  ...................................................................................................................................................  15  
`A.   YOSHINO  IN  VIEW  OF  GREANIAS  RENDERS  CLAIM  7  OBVIOUS  UNDER  35  U.S.C.  §  103(A)  ......................................  16  
`B.   LU  ET  AL.  IN  VIEW  OF  GREANIAS  RENDERS  CLAIM  7  OBVIOUS  UNDER  35  U.S.C.  §  103(A)  ........................  33  
`C.   DODGE  BALL  ANTICIPATES  CLAIM  7  UNDER  35  U.S.C.  §  102(B)  ......................................................................  44  
`VI.   MANDATORY  NOTICES  UNDER  37  C.F.R.  §  42.8(A)(1)  ........................................................................  50  
`A.   REAL  PARTY-­‐IN-­‐INTEREST  AND  RELATED  MATTERS  ...................................................................................................  50  
`B.   LEAD  AND  BACK-­‐UP  COUNSEL  UNDER  37  C.F.R.  §  42.8(B)(3)  ..................................................................................  51  
`C.   PAYMENT  OF  FEES  UNDER  37  C.F.R.  §  42.103  .............................................................................................................  52  
`VII.   CONCLUSION  ..............................................................................................................................................  52  
`
`
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`

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`
`
`I.
`
`INTRODUCTION
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, and 37 C.F.R. § 42.100,
`
`Petitioners1 request an Inter Partes Review (“IPR”) of claim 7 (the “Challenged Claim”)
`
`of U.S. Patent No. 5,561,811 (the “‘811 Patent”) issued on October 1, 1996 to Eric A.
`
`Bier (“Applicant”) and resulting from application serial number 07/974,044 that was
`
`filed on November 10, 1992. Exhibit 1001, ‘811 Patent. According to Patent Office
`
`records, the ‘811 Patent is currently assigned to Babbage Holdings, LLC (“Babbage” or
`
`“Patent Owner”).
`
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`
`Petitioners certify that the ‘811 Patent is available for IPR and that Petitioners are
`
`                                                                                                                
`
`not barred or estopped from requesting IPR challenging any claim of the ‘811 Patent.
`
`1 Petitioners include 505 Games (U.S.), Inc. (“505 Games”); Activision Blizzard, Inc. and
`
`Blizzard Entertainment, Inc. (collectively, “Activision”); Capcom U.S.A., Inc.
`
`(“Capcom”); The Walt Disney Co., Disney Interactive Studios, Inc., and LucasArts, a
`
`division of Lucasfilm Entertainment Company Ltd. LLC (collectively, “Disney”);
`
`Electronic Arts Inc. (“Electronic Arts”); BANDAI NAMCO Games America, Inc. and
`
`BANDAI NAMCO Holdings USA Inc. (collectively, “Bandai Namco”); Riot Games,
`
`Inc. (“Riot Games”); Sony Computer Entertainment America LLC (“Sony”); Square
`
`Enix, Inc. and Square Enix of America Holdings, Inc. (collectively, “Square Enix”);
`
`Take-Two Interactive Software, Inc., Rockstar Games, Inc., 2KSports, Inc., and 2K
`
`Games, Inc. (collectively, “Take-Two”); Ubisoft, Inc. (“Ubisoft”).
`
`
`
` 1
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`

`
`
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`Specifically, Petitioners state that: (1) no petitioning party owns the ‘811 Patent; (2) no
`
`petitioning party has filed a civil action challenging the validity of any claim of the ‘811
`
`Patent; and (3) this Petition is filed less than one year after each petitioning party was
`
`served with a complaint alleging infringement of the ‘811 Patent.
`
`III.
`
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B)
`AND RELIEF REQUESTED
`
`Petitioners ask that the Patent Trial and Appeal Board (“the Board”) review
`
`the accompanying prior art and analysis, find that there is a reasonable likelihood
`
`that Petitioners would prevail as to the sole claim challenged, institute inter partes
`
`review of the Challenged Claim, and ultimately cancel the Challenged Claim as
`
`unpatentable over prior art under 35 U.S.C. §§ 102/103 in view of one or more of
`
`the references and/or combinations of references identified below:  
`
`Ground
`Number
`
`1
`
`2
`
`Proposed Statutory Rejections for the ‘811 Patent
`
`Claim 7 is obvious under § 103(a) by U.S. Patent No. 5,548,304 to
`Yoshino et al. (“Yoshino”) (Exhibit 1002) in view of U.S. Patent No.
`5,157,384 to Greanias et al. (“Greanias”) (Exhibit 1003). Yoshino was
`filed on August 16, 1990, issued on August 20, 1996, and qualifies as
`prior art to the ‘811 Patent under § 102(e). Greanias was filed on April
`28, 1989, issued on October 20, 1992, and qualifies as prior art to the
`‘811 Patent under §§ 102(a) and 102(e).
`Claim 7 is obvious under §103(a) by “Idea Management In a Shared
`Drawing Tool,” Proceedings of the Second European Conference in
`Computer-Supported Cooperative Work, Iva M. Lu and Marilyn M.
`Mantei (“Lu”) (Exhibit 1004) in view of Greanias. Lu was published on
`
`
`
` 2
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`

`
`
`
`Ground
`Number
`
`3
`
`Proposed Statutory Rejections for the ‘811 Patent
`
`or about September 25-27, 1991, and qualifies as prior art to the ‘811
`Patent under § 102(b).
`Claim 7 is anticipated under § 102(a) by Battle Dodge Ball for Super
`Famicon game manual (“Dodge Ball”) (Exhibit 1005). Dodge Ball was
`published on July 20, 1991, and qualifies as prior art to the ‘811 Patent
`under § 102(b).2
`
`
`
`Section VI identifies where each element of the Challenged Claim is found in the
`
`prior art references. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the relevance of
`
`the evidence to the challenges raised are provided in Section V. 37 C.F.R. § 42.104(b)(5).
`
`Exhibits 1001–1019 are also attached. In further support of this Petition, Petitioners
`
`                                                                                                                
`
`2 Ex. 1008, Translation of Weekly Famicon Tsushin (“Weekly Famicon”), provides
`
`evidence that Dodge Ball was released on July 20, 1991. Weekly Famicon is a Japanese
`
`language weekly periodical focusing on the Super Famicon video game platform. Both
`
`on its face, and in the bottom right corner of the back cover, Weekly Famicon indicates
`
`that it was published on August, 16, 1991. On the second page, Battle Dodge Ball is
`
`listed third in the “Top 20” video games for the Super Famicom platform. Weekly
`
`Famicon further notes that Battle Dodge Ball was released on July 20, 1991 (“on sale
`
`7/20”). This release date is consistent with the Dodge Ball manual, which indicates a
`
`1991 publication. See Ex. 1005, Dodge Ball at 2 (“1991 MADE IN JAPAN”).
`
`
`
` 3
`
`

`
`
`
`include a declaration of their technical expert, Stephen C. Hayne, Ph.D., attached as
`
`Exhibit 1006. Taken together, this evidence establishes a reasonable likelihood that
`
`Petitioners will prevail as to the Challenged Claim.
`
`IV. SUMMARY OF THE ‘811 PATENT
`A. Description Of The Alleged Invention Of The ‘811 Patent
`
`The ‘811 Patent generally describes a computer software collaboration system that
`
`allows multiple users to interact with software applications simultaneously on a shared
`
`display using multiple input devices connected to a single computer. Ex. 1001, ‘811
`
`Patent at 2:20-34, Fig. 1:
`
`
`
` A key feature of the described system is customizable inputs that allow each user
`
`to establish preferences in a user profile that define what application command is
`
`generated in response to a given input device event (e.g., button press, keyboard entry,
`
`etc.). Id. at 2:28-33 (“In a system where a plurality of users may invoke the same
`
`command in the same application by taking comparable actions using comparable, but
`
`distinct, input devices, it must be possible to vary the effect of that command depending
` 4
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`

`
`
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`on the preferences of the user who generated it.”) (emphasis added). Once a user has
`
`been registered with a particular input device, the input device will generate commands in
`
`accordance with the user’s stored preferences. Id. at 2:34-36.
`
`The following flow diagram from the ‘811 Patent depicts (1) input events entered
`
`by users registered to different input devices, (2) commands created in accordance with
`
`each user’s preferences, and (3) the varied results (red object vs. blue object) of these
`
`commands displayed on a shared display:
`
`B.
`
`Summary Of The Prosecution History Of The ‘811 Patent
`
`The ‘811 Patent was filed as U.S. Ser. No. 07/974,044 (“the ‘044 Application”) on
`
`November 10, 1992, with seven proposed claims. See Ex. 1007, ‘811 Patent File History
`
`
`
`(‘044 Application) at 39-41.
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`
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` 5
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`
`
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`On February 3, 1995, the PTO rejected all seven claims as (1) anticipated by
`
`“MMM: A User Interface Architecture for Shared Editors on a Single Screen” by Bier et
`
`al. (“Bier”) and (2) obvious over US Patent No. 5,337,407 (Bates) in view of US Patent
`
`No. 5,157,384 (Greanias) in further view of US Patent No. 5,319,747 (Gerrissen). Id.
`
`(Office Action dated February 3, 1995) at 68-72.
`
`On May 30, 1995, Applicant responded to the February 3, 1995 Office Action.
`
`This response included a declaration stating that the “Bier” reference was published less
`
`than one year before the November 10, 1992 filing date and that the named inventor’s co-
`
`author did not contribute to the subject matter claimed in the ‘044 Application, and that
`
`this reference is therefore not prior art to the ‘044 Application. Id. (Declaration dated
`
`May 1, 1995) at 93-94.
`
`The Applicant also amended all proposed claims to clarify that the “multiple
`
`users” view a “single shared display,” and argued that the combination of Bates,
`
`Greanias, and Gerrissen did not teach multiple users simultaneously using an application
`
`on a single shared system:
`
`As is clear from the title and description at pgs. 1-3, the invention relates to
`computer systems in which plural users share the same display and can
`simultaneously input events from respective input devices. This has been
`further clarified by amending claims 1-7 to recite that a single shared
`display for concurrent use by multiple users is present. This is the feature
`that is plainly absent from the cited art.
`
`
`
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` 6
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`

`
`
`
`None of Bates, Greanias, or Gerrissen provide a system that allows several
`users to share a single screen while simultaneously inputting events.
`
`Thus the Bates system is a system with multiple computers. Each user has
`his or her own computer with its own screen, which he or she can log into.
`[. . .]
`
`Gerissen is, like Bates, a networked system with plural workstations, but no
`shared display. [. . .]
`
`But even if combined, the result, arguendo, would be: a network of
`computers, each with its own display, with the Greanias invention used to
`allow several users to use the same workstation but at different times. There
`still would be no teaching in this combination of plural users
`simultaneously inputting events to the same system, with the results
`displayed on a single shared display.
`
`Id. (Office Action Response dated May 30, 1995) at 99-100 (emphases in original).
`
`
`
`On June 23, 1995, the Examiner issued a Final Office Action maintaining the
`
`obviousness rejection over Bates in view of Greanias in further view of Gerrissen. Id.
`
`(Final Office Action dated June 23, 1995) at 107-09. The Examiner rejected Applicant’s
`
`argument that the prior art did not teach a “single display” on the grounds that this phrase
`
`appeared only in the preamble and therefore was entitled no patentable weight. The
`
`Examiner maintained that even if “single display” was given patentable weight, the
`
`combination of Bates, Greanias, and Gerrissen discloses a single display. Id. at 109.
`
`
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` 7
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`

`
`
`
`
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`On September 25, 1995, to overcome this Final Rejection, Applicant amended
`
`independent claims 1 and 7 to specify a “plurality of input devices connected to a single
`
`computer” and that these input devices enter “simultaneous and sequential” input events.
`
`Id. (Office Action Response dated September 25, 1995) at 113-116 (amendments
`
`underlined). Additionally, the Applicant noted that a telephonic interview had been
`
`conducted with the Examiner during which agreement was reached that the claim
`
`amendments would avoid the obviousness rejection based on Bates, Greanias, and
`
`Gerrissen. Id. Finally, the Applicant withdrew the previous claim amendment, requiring
`
`that the display be a “single shared display,” and alleging that “the novelty of the claimed
`
`invention does not necessarily rely on the use of a single shared display.” Id.
`
`(amendment underlined).
`
`In response, on February 23, 1995, the USPTO mailed a Notice of Allowance and
`
`the patent issued on October 1, 1996. In light of these final claim amendments, the
`
`apparent grounds for patentability that distinguished the ‘811 Patent claims over Greanias
`
`and the other prior art was a plurality of input devices connected to a single computer for
`
`entering simultaneous and sequential input events.
`
`C.
`
`Level Of A Person Having Ordinary Skill In The Art
`
`A person having ordinary skill in the art at the time of the ‘811 Patent would have
`
`at least a B.S. in computer science or related technical discipline and at least two years
`
`industry experience in the field of collaborative software, or equivalent experience and/or
`
`education. Ex. 1006, Hayne Declaration at ¶ 28.
`
`
`
` 8
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`

`
`
`
`D. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`The ‘811 Patent expired on October 1, 2013, and therefore it is not subject to
`
`amendment. For purposes of this Petition, the claims are construed pursuant to Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005). See Decision on Institution of Inter
`
`Partes Review at 10, Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., No.
`
`IPR2013-00064 (P.T.A.B. Apr. 30, 2013), Paper No. 11. Under Phillips, the words of
`
`a claim “are generally given their ordinary and customary meaning.” 415 F.3d at
`
`1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.
`
`1996)). The person of ordinary skill in the art is deemed to read the claim term not
`
`only in the context of the particular claim in which the disputed term appears, but
`
`in the context of the entire patent, including the specification. Id. In addition to the
`
`specification, a patent’s prosecution history, including the complete record of the
`
`proceedings before the PTO and the prior art cited during examination should be
`
`considered. Phillips, 415 F.3d at 1317.
`
`Petitioners propose, for purposes of IPR only, that the claim terms of the ‘811
`
`Patent be given the ordinary and customary meaning they would have to one of ordinary
`
`skill in the art.
`
`
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` 9
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`

`
`
`
`However, based on positions taken by the Patent Owner in co-pending litigation,3
`
`the following phrases from claim 7 present claim scope disputes that must be resolved to
`
`assess properly the validity of claim 7 vis-à-vis the prior art discussed herein.
`
`E.
`
`“plurality of input devices connected to a single computer”
`
`Petitioners contend that “a plurality of input devices connected to a single
`
`computer” should mean precisely what it says—that multiple input devices are connected
`
`to the same computer in the context of claim 7. Petitioners further contend that the
`
`ordinary and customary meaning of this claim language does not extend to a system
`
`where input devices are connected to separate networked computers. Not only does the
`
`plain claim language and ‘811 Patent specification support this meaning, but Applicants
`
`added “connected to a single computer” during prosecution to distinguish the claimed
`
`invention from prior art in which the application program runs on multiple computers.
`
`Starting with the ‘811 Patent specification, the subject invention is described as a
`
`multi-user system in which all users interact via input devices connected to a single
`
`computer:
`
`FIG. 1 is a block diagram of a basic multi-user system that includes a computer
`
`20, which may be a conventional microcomputer having RAM and program ROM, and a
`
`                                                                                                                
`
`3 Each lawsuit filed by Patent Owner is listed below in Section VII.A. With the
`
`exception of Babbage Holdings, LLC v. The Walt Disney Company et al. (13-cv-752), all
`
`cases have been consolidated and will be referred to collectively as “the Litigation.”
`
`
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` 10
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`

`
`plurality of input devices 21, 22, 23. The devices 21, 22 may be pointing devices, such as
`
`mouses with one or more mouse buttons, and the input device 23 may be a keyboard.
`
`Ex. 1001, ‘811 Patent at 4:30-36 (emphases added). FIG. 1 illustrates this point:
`
`
`
`
`
`Supporting this basic concept, the Background section of the ‘811 Patent
`
`distinguishes the invention from prior art systems in which users worked from their own
`
`individual computers:
`
`Several systems support meetings by allowing participants, working at
`individual workstations, to control a large shared screen. . . . In all of these
`systems, however, the number of active participants is limited by the
`number of machines and the participants must go to a special meeting
`room.
`Id. at 2:3-15 (emphases added). This explanation confirms the specification’s support for
`
`Petitioners’ view that “plurality of input devices connected to a single computer” means
`
`that users interact with the application program via input devices connected to the same
`
`computer, and does not extend to a system where input devices are connected to multiple
`
`individual computers.
`
`
` 11
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`

`
`
`
`Turning next to the prosecution history, to overcome rejections based on prior art,
`
`Applicants repeatedly demonstrated that claim 7 does not apply to topologies in which
`
`users do not share the same computer. On January 26, 1995, the Examiner rejected claim
`
`7 as obvious over U.S. Patent No. 5,337,407 (Bates) in view of U.S. Patent No.
`
`5,157,384 (Greanias) further in view of U.S. Patent No. 5,319,747 (Gerrissen). Ex. 1007,
`
`‘811 Patent File History (Jan. 26, 1995 Office Action) at 70-71. Although claim 7 did
`
`not yet include the “connected to a single computer” language, Applicants attempted to
`
`distinguish Bates and Gerrissen on the basis that they required multiple computers. Id.
`
`(June 2, 1995 Office Action Response) at 99-100 (“Bates is a system with multiple
`
`computers. Each user has his own computer with its own screen, which he or she can log
`
`into. . . . Gerissen [sic] is, like Bates, a networked system with plural workstations”)
`
`(emphasis in original).
`
`Finding Applicants’ arguments unpersuasive, the Examiner finally rejected claim
`
`7 as obvious over Bates, Gerrissen, and Greanias. Id. (June 21, 1995 Office Action) at
`
`107-10. Applicant then conducted a telephone interview with the Examiner in which it
`
`was agreed that the claimed invention could be distinguished from the prior art if the
`
`claims were amended to require “a plurality of input devices connected to a single
`
`computer.” Id. (Sept. 22, 1995 Office Action Response) at 114-16 (amendment
`
`underlined). This amendment demonstrates that claim 7, applying the ordinary and
`
`customary meaning, does not extend to topologies in which the claimed “multiple users”
`
`do not share the same computer. Rather, claim 7 requires that the claimed “multiple
` 12
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`

`
`
`
`users” must interact with an application program via input devices connected to the same
`
`computer. Accordingly, claim 7, given its ordinary and customary meaning, should not
`
`capture a system in which the users’ input devices are connected to a plurality of
`
`computers, and in which these multiple computers communicate over the Internet or
`
`other network. Claim 7 should be construed to require multiple input devices connected
`
`to the same computer. If Petitioners are incorrect in this regard, and the Board holds that
`
`claim 7 captures systems where input devices are connected to a plurality of computers,
`
`Petitioners have presented the combination of Lu in view of Greanias to render obvious
`
`claim 7.
`
`F.
`
`User Preference Limitations
`
`Claim 7 also includes extensive language directed to a user registration process in
`
`which (1) a user’s input device preferences are stored, (2) users can “register” with a
`
`particular input device, and (3) the user’s stored preferences are applied after the user
`
`“registers” with the input device. The following are the relevant limitations from claim 7:
`
`revokably registering different ones of said users with different ones of said
`input devices, whereby the identity of each input device that has a user
`registered therewith is linked with the identity of its registered user;
`
`linking any input events from input devices that have users registered
`therewith with prespecified, individualized preferences of the respective
`registered users of such input devices; and
`
`translating input events from input devices that have registered users into
`
`
`
` 13
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`

`
`
`
`commands that said application program executes in accordance with the
`preferences of the registered users of the respective input devices
`Ex. 1001, ‘811 Patent at Claim 7 (emphases added). In light of the ordinary and
`
`customary meaning of these limitations, Petitioners contend that claim 7 cannot extend to
`
`a system where input preferences are assigned to input devices irrespective of the identity
`
`of the user of said devices. In other words, claim 7 does not capture a user-agnostic
`
`system where input preferences are set for a particular input device irrespective of the
`
`user of that device.
`
`Beyond the express requirements of claim 7, the intrinsic record demonstrates that
`
`“preferences” must be associated with users who are then registered with an input device:
`
`The invention is directed to the solution of the following user interface
`problems:
`1. Customized simultaneous input. In a system where a plurality of users
`may invoke the same command in the same application by taking
`comparable actions using comparable, but distinct, input devices, it must be
`possible to vary the effect of that command depending on the preferences
`of the user who generated it.
`2. Registration. It must be possible to quickly register each input device
`with a user, and hence, with a set of preferences.
`Id. at 2:26-37 (emphases added).
`
`The Home Area of a user may appear, for example, as illustrated in FIG. 3,
`
`wherein the user's name is displayed at the top of the area. The user then
`
`moves the cursor to the name in the desired Home Area, as seen in FIG. 2,
`
`
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` 14
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`

`
`and clicks his or her mouse button or other input device. As a result, the
`
`system assigns the respective input device to that user, and any actions
`
`performed with the input device will take his or her preferences into
`
`
`
`account.
`
`Id. at 5:18-25 (emphases added).
`
`In each of these instances, and consistent with the plain claim language,
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`“preferences” are associated with a user, the user registers with a device, and then the
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`system can apply inputs from that device in accord with the registered user’s preferences.
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`Claim 7, given its ordinary and customary meaning, does not capture a system where
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`input preferences are assigned to input devices irrespective of the identity of the user of
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`said devices. If Petitioners are incorrect in this regard, and claim 7 captures systems
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`where preferences are assigned to an input device irrespective of the identity of the user
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`of said device, Petitioners have presented the Dodge Ball prior art to anticipate claim 7
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`under this interpretation.
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`V.
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`THERE IS A REASONABLE LIKELIHOOD THAT CLAIM 7 OF THE
`‘811 PATENT IS UNPATENTABLE
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`Shared computing systems were prevalent before November 10, 1992. See Ex.
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`1006, Hayne Declaration at ¶ 15. Under the plain and ordinary interpretation of the
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`Challenged Claim, the combination of Yoshino and Greanias (Section V.A) discloses
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`each limitation. Further, to the extent claim 7 captures a networked topology in which
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`input devices are connected to a plurality of computer stations, the combination of Lu and
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`Greanias (Section V.B) discloses each limitation. Finally, to the extent claim 7 captures
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`the association of user preferences with an input device in a user-agnostic manner, Dodge
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`Ball (Section V.C) discloses each limitation of claim 7. As such, claim 7 is unpatentable.
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`Further support for Petitioners’ contention that claim 7 is unpatentable may be found in
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`the attached declaration of Petitioners’ expert, Stephen C. Hayne. The claim charts set
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`forth below include exemplary citations to the prior art references.
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`A. Yoshino In View Of Greanias Renders Claim 7 Obvious Under 35
`U.S.C. § 103(a)
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`Yoshino was not cited or considered during the original ‘811 Patent prosecution
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`and generally discloses a system that allows multiple individuals to interact with an
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`application program simultaneously on a shared display using a plurality of input devices
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`connected to a single computer running an application program. Ex. 1002, Yoshino at
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`2:20-26 (“It is an object of the present invention to provide for screen display with a
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`plurality of cursors with simultaneous requested access”); FIG. 1. Users interact with the
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`application program via cursor control units, each of which may simultaneously control a
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`different cursor on the shared display. Id. at 2:49-52 (“With a plurality of cursors on the
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`screen that are controlled by a plurality of cursor control units, simultaneous addresses
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`can be made on the screen by the plurality of cursors”). Cursors may be distinguished on
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`the shared display by modifying their visual attributes. Id. at 18:39-45 (“[V]isual
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`attributes of the cursors may be provided such as shapes, colors or traces of motion . . . so
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`that identification of a plurality of cursors appearing in the screen simultaneously to be
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`operated by different operators and users can be extremely simple.”). Finally, Yoshino
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`teaches user profiles in which priority rankings can be stored in order to resolve conflicts
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`when multiple users seek to control the same cursor simultaneously. Id. at 10:64-11:3.
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`Greanias was cited and considered during prosecution, and generally describes an
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`advanced user interface that allows a user to establish a user profile within which input
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`device customization settings are stored. Ex. 1003, Greanias at 3:66-4:6. When users
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`log on to a stored profile, device inputs are converted into specific commands in
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`accordance with the stored settings. Id. at 4:6-25; 10:5-26 (“The user profile 107 contains
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`commands which are common to all or several of the application programs 50-53. A
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`separate user profile 107 can be written for each system user. The advanced user
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`interface can determine the active user during log-on procedures.”).
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`Like Yoshino and the ‘811 Patent, Greanias teaches a user interface system which
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`provides a means for users to interact with application programs through the use of a
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`variety of input devices. Compare Ex. 1003, Greanias at 4:60-68 (“The user inputs data
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`into the computer system via device A (keyboard) 32, device B (mouse) 34 or touch
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`sensor 36.”), with Ex. 1002, Yoshino at 5:2-4 (“Each cursory control unit 2 also includes
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`a user input, for example mouse 201, keyboard 201a, or a light pen (not shown).”); see
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`also Ex. 1006, Hayne Declaration at ¶ 32.
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`Additionally, like Yoshino and the ‘811 Patent, Greanias teaches that user-
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`controlled input devices are capable of generating numerous different commands within a
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`given application program. Compare Ex. 1002, Yoshino at 1:53-58 (“In general, cursors
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`not only indicate a location on a display, for example screen, but also symbolize the
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`power of the access on the screen and the various control modes of displaying on the
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`screen, such as entry or change of information, enlargement, reduction or exchange of
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`images on the screen.”) (emphases added), with Ex. 1003, Greanias at 9:36-40 (“For
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`example, an application may specify that the DELETE key is the same as selecting CUT
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`from the EDIT menu and that SHIFT/INSERT is the same as selecting PASTE from the
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`EDIT menu.”). To provide a straightforward means for users to link input device actions
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`(e.g., mouse button presses, keyboard entries, etc.) with specific commands, Greanias
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`teaches a user profile in which mappings between input actions and output commands
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`can be defined and stored. Id. at 9:24-41. Additionally, Greanias teaches that user profiles
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`defining these mappings are created for each user and are implemented for a particular
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`controller after a particular user logs on. Id. at 10:5-9; see also Ex. 1006, Hayne
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`Declaration at ¶¶ 33-34.
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`Upon reading the disclosure of Greanias, a skilled artisan would have recognized
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`that such input-to-command mappings would similarly benefit the system described by
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`Yoshino and result in a more robust multi-user system in which users could easily map
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`input actions to the most often used commands. Id. at ¶¶ 35-37. For example, users in
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`Yoshino could benefit from defining specific input actions that change the cursor from
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`data entry to data modification mode or from image enlargement to image reduction
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`mode. See, e.g., Ex. 1002, Yoshino at 1:53-58 (“In general, cursor