Trials@uspto.gov
`571.272.7822
`
` Paper No. 24
`
`
` Entered: December 15, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`505 GAMES, INC., ACTIVISION BLIZZARD, INC., BLIZZARD
`ENTERTAINMENT, INC., CAPCOM U.S.A. INC., THE WALT DISNEY
`CO., DISNEY INTERACTIVE STUDIOS, INC., LUCASARTS,
`ELECTRONIC ARTS INC., BANDAI NAMCO GAMES AMERICA,
`INC., BANDAI NAMCO HOLDINGS USA INC., RIOT GAMES, INC.,
`SONY COMPUTER ENTERTAINMENT AMERICA LLC, SQUARE
`ENIX, INC., SQUARE ENIX OF AMERICA HOLDINGS, INC., TAKE-
`TWO INTERACTIVE SOFTWARE, INC., ROCKSTAR GAMES, INC.,
`2KSPORTS, INC., 2K GAMES, INC., and UBISOFT, INC.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00954
`Patent 5,561,811
`____________
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571.272.7822
`
` Paper No. 24
`
`
` Entered: December 15, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`505 GAMES, INC., ACTIVISION BLIZZARD, INC., BLIZZARD
`ENTERTAINMENT, INC., CAPCOM U.S.A. INC., THE WALT DISNEY
`CO., DISNEY INTERACTIVE STUDIOS, INC., LUCASARTS,
`ELECTRONIC ARTS INC., BANDAI NAMCO GAMES AMERICA,
`INC., BANDAI NAMCO HOLDINGS USA INC., RIOT GAMES, INC.,
`SONY COMPUTER ENTERTAINMENT AMERICA LLC, SQUARE
`ENIX, INC., SQUARE ENIX OF AMERICA HOLDINGS, INC., TAKE-
`TWO INTERACTIVE SOFTWARE, INC., ROCKSTAR GAMES, INC.,
`2KSPORTS, INC., 2K GAMES, INC., and UBISOFT, INC.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00954
`Patent 5,561,811
`____________
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`I. INTRODUCTION
`A. Background
`
`
`505 Games, Inc., Activision Blizzard, Inc., Blizzard Entertainment,
`
`Inc., Capcom U.S.A. Inc., The Walt Disney Co., Disney Interactive Studios,
`Inc., LucasArts, Electronic Arts Inc., BANDAI NAMCO Games America,
`Inc., BANDAI NAMCO Holdings USA Inc., Riot Games, Inc., Sony
`Computer Entertainment America LLC, Square Enix, Inc., Square Enix of
`America Holdings, Inc., Take-Two Interactive Software, Inc., Rockstar
`Games, Inc., 2KSports, Inc., 2K Games, Inc., and Ubisoft, Inc. (collectively,
`“Petitioner”) filed a Petition to institute an inter partes review of claim 7 of
`U.S. Patent No. 5,561,811 (Ex. 1001, “the ’811 patent”) pursuant to 35
`U.S.C. § 311–319. Paper 1 (“Pet.”). Babbage Holdings, Inc. (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 23 (“Prelim.
`Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that a
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” Petitioner contends that claim 7 of the ’811
`patent is unpatentable under 35 U.S.C. § 103. We conclude that Petitioner
`has demonstrated that there is a reasonable likelihood that it would prevail
`with respect to the challenged claim. For the reasons described below, we
`institute an inter partes review of claim 7.
`
`
`B. Related Proceedings
`Both parties state that the ’811 patent is involved in numerous district
`
`court cases in the Eastern District of Texas. See Pet. 50–51; Paper 14, 2–3.
`
`2
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`
`C. The ’811 patent
`The ’811 patent is titled “Method and Apparatus for Per-User
`
`Customization of Applications Shared By a Plurality of Users On A Single
`Display.” Ex. 1001, 1. The ’811 patent describes that a disadvantage with
`prior groupware applications is that they “generally require that each of a
`number of participants have his or her own computer” but that “[t]here are
`many occasions, however, in which two or more people wish to collaborate
`in a single-computer situation.” Id. at col. 1, ll. 21–25. As a solution to this
`problem, the ’811 patent discloses “a method and apparatus for sharing
`customizable software applications on a single display that overcomes [this]
`disadvantage[] of the prior systems and that permits two or more persons to
`share the same instance of an application, [employing] a common screen.”
`Id. at col. 2, ll. 20–25.
`
`Figure 25 of the ’811 patent is reproduced below.
`
`
`Figure 25 is a diagram that illustrates how user preferences are involved in
`processing input events from two different users.
`
`3
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`Figure 25 depicts Device # 1 and Device # 2 that are registered with
`user preferences for User #1 and User #2, respectively, using device
`ownership tables (i.e., Device to User Instance table). Id. at col. 9, l. 10 –
`col. 10, l. 17. Commands are created from users’ input events according to
`the user preferences, and, then, the commands are sent to a display for
`execution. Id. at col. 11, l. 20–45. For example, if multiple users are
`creating rectangles, simultaneously, in a rectangle editor, one user’s
`rectangles may be colored blue and another’s red according to their
`preferences. Id. at col. 5, l. 53 – col. 6, l. 21.
`
`Claim 7, reproduced below, is the sole challenged claim.
`7. A method for entering simultaneous and sequential input
`events for at least one application program under the control of
`multiple users of a computer system and for displaying a visual
`response of said application program to said input events on a
`shared display, each of said users having a unique identity; said
`method comprising the steps of
`entering simultaneous and sequential input events through user
`control of a plurality of input devices connected to a single
`computer, each of said input devices having a unique identity
`that is linked with any input events that are entered thereby;
`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 commands that said application program executes in
`accordance with the preferences of the registered users of the
`input devices.
`
`
`4
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability for claim 7:
`
`Ground Prior Art
`Yoshino1 and Greanias2
`§ 103
`Lu3 and Greanias
`§ 103
`Dodge Ball4
`§ 103
`
`
`
`
`
`II. ANALYSIS
`A. Claim Construction
`
`
`The ’811 patent expired October 1, 2013. For claims of an expired patent
`our claim interpretation analysis is similar to that of a district court. See In
`re Rambus, Inc. 694 F.3d 42, 46 (Fed. Cir. 2012). Claim terms are given
`their ordinary and customary meaning, as would be understood by a person
`of ordinary skill in the art, at the time of the invention, in light of the
`language of the claims, the specification, and the prosecution history of
`record. Phillips v. AWH Corp., 415 F.3d 1303, 1313–1317 (Fed. Cir. 2005)
`(en banc).
`i. “plurality of input devices connected to a single computer”
`Petitioner proposes that claim 7’s limitation “plurality of input devices
`
`connected to a single computer” requires that the input devices are
`connected to the same computer. Pet. 10. Patent Owner argues that
`
`1 Yoshino et al., US Patent No. 5,548,304 (issued Aug. 20, 1996)(Ex. 1002).
`2 Greanias et al., US Patent No. 5,157,384 (issued Oct. 20, 1992) (Ex. 1003).
`3 Iva M. Lu and Marily M. Mantei, IDEA MANAGEMENT IN A SHARED
`DRAWING TOOL, Proceeding of the second european conference on
`computer-supported cooperative work (L. Bannon, et al. eds., 1991) (Ex.
`1004).
`4 SUPER FAMICON, BATTLE DOGE BALL MANUAL (Ex. 1005).
`
`5
`
`
`
`IPR2014-00954
`Patent 5,561,811
`Petitioner’s proposed interpretation is too narrow and the limitation should
`be given a broader interpretation that allows for the input devices to be
`connected to one or more computers, as well as, connected to the same
`computer. Prelim. Resp. 9–17. Specifically, Patent Owner argues that the
`plain meaning of the limitation is that the input devices can be connected to
`one or more computers because the article “a” means “one or more.” Id. at
`9.
`Based on the record before us, we agree with Petitioner’s
`
`interpretation that the limitation requires that the input devices are connected
`to the same computer. This interpretation is consistent with the plain
`language of the claim, which recites a single (i.e., one only (see THE POCKET
`WEBSTER SCHOOL & OFFICE DICTIONARY 670 (1990)(Ex. 3001)) computer.
`Patent Owner’s proposed interpretation renders the claim term “single”
`meaningless because it allows for the input devices to be connected to more
`than one computer. We see no reason to read this term out of the claim.
`Further, Petitioner’s interpretation is consistent with the ’811 patent, which
`describes a “single-computer situation” where multiple users are using the
`same computer. Ex. 1001, col. 1, l. 24–26: see also id. at Fig. 1 (depicting
`two input devices connected to the same computer); col. 1, l. 22–col. 2, l. 25
`(describing how the system of the ’811 patent overcomes the disadvantage
`of the prior art, which require each participant to have his or her own
`computer, because it permits participants to collaborate in a “single-
`computer situation” by sharing the same instance of an application.) Based
`on the record before us and for the purposes of this decision, the plain and
`ordinary meaning of a “plurality of input devices connected to a single
`computer” is that the plurality of input devices are connected to the same
`computer.
`
`6
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`ii. user preference limitations
`Petitioner argues that the “user preference” limitations require that the
`preferences are associated with the identity of the user of the devices. Pet.
`13–15. Patent Owner does not dispute Petitioner’s interpretation. See
`Prelim. Resp. 17–18. The “user preference” limitations are:
`revokably registering different ones of said user 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
`therewith with
`prespecified,
`individualized
`registered
`preferences of the respective registered users of such input
`devices, and
`translating input events from input devices that have registered
`users into commands that said application program executes in
`accordance with the preferences of the registered users of the
`input devices.
`Ex. 1001, col. 18, l. 16–38 (emphases added). The plain language of the
`limitations emphasized above requires: that users be registered; that the
`identity of a registered user be linked with the identity of an input device;
`and that any input events from the linked input device be linked with the
`preferences of the registered user and translated in accordance with the
`preference of the registered user. Based on the record before us and for the
`purposes of this decision, we agree with the Petitioner that the “user
`preference” limitations require that the preferences are associated with the
`identity of the user of the device.
`ii. “Linking” and “Translating” steps
`Patent Owner argues that the plain and ordinary meaning of the
`“linking” and “translating” steps, when analyzed within the context of
`
`7
`
`
`
`IPR2014-00954
`Patent 5,561,811
`the claim as a whole, require “a method (1) that allows for the
`possibility of multiple registered users, and (2) that, when such users
`are both entering input events (the ‘simultaneous’ feature), they can
`do so according to different (‘prespecified, individualized’)
`preferences.” Id. at 22, 27.
`Claim 7 recites “revokably registering different ones of said
`users with different ones of said input devices.” The “linking” step
`refers to “input devices that have users registered therewith” and the
`“translating” step refers to “input devices that have registered users.”
`It is sufficiently clear from the use of the plural “users” in these
`limitations that they do not exclude the possibility of multiple
`registered users. Additionally, Patent Owner has not provided
`persuasive argument and evidence that the preamble’s recitation of
`“simultaneous” means when such users are both entering input events,
`or that “simultaneous” should be read into the “linking” and
`“translating” steps.
`On this record, we determine that no express of the “linking”
`and “translating” steps of claim 7 is necessary.
`
`
`B. Prior Art Grounds
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`
`8
`
`
`
`IPR2014-00954
`Patent 5,561,811
`including: (1) the scope and content of the prior art, (2) any differences
`between the claimed subject matter and the prior art, and (3) the level of skill
`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
`U.S. at 407 (“While the sequence of these questions might be reordered in
`any particular case, the [Graham] factors continue to define the inquiry that
`controls.”).
`
`
`i. Obviousness over Yoshino and Greanias
`Petitioner contends that claim 7 is unpatentable under 35 U.S.C.
`
`§ 103(a) over the combination of Yoshino and Greanias. Pet. 16–33.
`Specifically, Petitioner argues that Yoshino discloses most of the elements
`of claim 7, including multiple registered users that are simultaneously and
`sequentially inputting events into a single computer. Id. at 16–17, 20–29.
`Petitioner argues that Yoshino does not disclose the claimed user
`preferences that are stored in individual user profiles (id. at 18–19), but
`contends that Greanias’s teaching of a system that maps input actions from
`an input device to output commands based on a user profile cures this
`deficiency (id. at 18 (citing Ex. 1003, col. 10, l. 5–9)). According to
`Petitioner, adding Greanias’s user profile parameters to Yoshino’s system
`results in a more robust multi-user system that easily maps input actions to
`the most often used commands. Id. at 18-19 (citing Ex. 1006 ¶¶ 35–37).
`Yoshino is titled “Method and Apparatus for Screen Displaying” and
`
`issued on August 20, 1996, from an application filed August 16, 1990. Ex.
`1002, 1Yoshino discloses a system that allows cursors, associated with
`multiple cursor control units (i.e. input devices) and operated by multiple
`users, to be displayed on the same screen. Id. at col. 4, ll. 27– 45, Figs. 1,
`19(a). Yoshino discloses that the multiple users have simultaneous access to
`
`9
`
`
`
`IPR2014-00954
`Patent 5,561,811
`the cursors. Id. at Abstract, col. 1, ll. 32–38, 50-51. Yoshino’s system has a
`cursor data storage unit that stores tables, including supervising table 21 that
`relates the cursor control units to the users; supervising table 22 that relates
`the cursor control units to the cursors; and a plurality of tables that relate
`different attributes, such as color, to the cursors. Id. at col. 4, ll. 46–65; Figs.
`3–8(e). Although Yoshino’s preferred embodiment discloses data tables
`relating attributes to cursors, Yoshino discloses that, alternatively, “the
`attributes may be for each cursor or for each cursor control unit 2, or for
`each particular user, although cursors are specifically illustrated.” Id. at col.
`8, ll. 7–9. See also col. 4, ll. 61–65 (stating that users may assign attributes
`to specific cursors); col. 8, ll. 30–40 (stating that attributes can be assigned
`to the cursors for the purpose of identifying the user
`Greanias is titled
`“Advanced User Interface” and issued on October 20, 1992. Ex. 1003, 1.
`Greanias discloses a system in which a user can customize the input signals
`from a user input device. Id. at col. 3, ll. 66 – col. 4, l. 6. Greanias discloses
`that for each application, a user profile contains a list of input messages,
`which are mapped to corresponding commands. Id. at col. 10, ll. 5–26. See
`also id. at Fig. 5 (depicting a table mapping input messages to output
`commands).
`
`Given the above and on this record, we are persuaded by Petitioner
`that one of ordinary skill in the art would have been led to add Greanias’s
`user profile to Yoshino’s system to result in a more robust multi-user system
`that easily maps input actions to the most often used commands (Id. at 18–
`19).
` Patent Owner argues that Petitioner has not shown that
`Greanias, alone, teaches the linking and translating limitations—as
`construed by Patent Owner—because, in Greanias, only a single user
`
`10
`
`
`
`IPR2014-00954
`Patent 5,561,811
`participates at any given time. Prelim. Resp. 27–31. We are not
`persuaded by Patent Owner’s argument. We declined to adopt Patent
`Owner’s proposed construction of the “linking” and “translating”
`steps for the reasons discussed above. Moreover, Patent Owner’s
`argument ignores Petitioner’s reliance upon Yoshino to teach multiple
`registered users simultaneously entering input events and ignores
`Petitioner’s proposed combination of Yoshino and Greanias. Despite
`averring otherwise (Prelim. Resp. 30–31), Patent Owner is attacking
`the references individually when the proposed ground is based upon a
`combination. Nonobviousness cannot be established by attacking
`references individually where, as here, the ground of unpatentability is
`based upon the teachings of a combination of references. In re Keller,
`642 F.2d 413,426 (CCPA 1981). Rather, the test for obviousness is
`whether the combination of references, taken as a whole, would have
`suggested the patentee’s invention to a person having ordinary skill in
`the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`
`On the record before us and taking into account Patent Owner’s
`arguments, we are persuaded by Petitioner that there is a reasonable
`likelihood that clam 7 is obvious over Yoshino and Greanias.
`
`
`ii. Obviousness over Lu and Greanias, and Anticipation by Dodge Ball
` We do not institute inter partes review of claim 7 of the ‘811 patent
`
`as unpatentable under 35 U.S.C. § 103(a) over Lu and Greanias or as
`anticipated under 35 U.S.C. § 102 by Dodge Ball. We have discretion to
`institute inter partes review as to some asserted grounds and not others. 37
`C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a) (authorizing institution of
`inter partes review under particular circumstances, but not requiring
`
`11
`
`
`
`IPR2014-00954
`Patent 5,561,811
`institution under any circumstances). This discretion is consistent with the
`requirement that the regulations for inter partes review proceedings take into
`account “the efficient administration of the Office” and “the ability of the
`Office to timely complete [instituted] proceedings,” 35 U.S.C. § 316(b), as
`well as with the requirement that the rules for inter partes review
`proceedings be “construed to secure the just, speedy, and inexpensive
`resolution of every proceeding.” 37 C.F.R. § 42.1(b). Accordingly, for
`reasons of administrative necessity, and to ensure timely completion of the
`instituted proceeding, we exercise our discretion and do not institute a
`review based on Petitioner’s other asserted grounds.
`
`III. CONCLUSION
`On this record, we determine that Petitioner has demonstrated a
`
`reasonable likelihood that it would prevail in establishing that claim 7 is
`obvious over Yoshino and Greanias. The Board has not yet made a final
`determination as to the patentability of any claim.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
`the ’811 patent is hereby instituted commencing on the entry date of this
`Order; and
`FURTHER ORDERED that the trial is limited to the ground of claim
`7 under 35 U.S.C. § 103 as obvious over Yoshino and Greanias.
`
`
`
`
`12
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`
`PETITIONER:
`
`Eric A. Buresh
`Paul R. Hart
`Patrick D. McPherson
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`pdmcpherson@duanmorris.com
`
`
`PATENT OWNER:
`
`David H. Judson
`Anthony M. Garza
`mail@davidjudson.com
`agarza@ccrglaw.com
`
`
`13
`
`
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