Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: August 21, 2014
`
`
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`SKYHAWKE Ex. 1032, page 1
`
`

`

`Case IPR2014-00438
`Patent 5,779,566
`
`
`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 (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 have jurisdiction under 35 U.S.C.
`
`§ 314. For the reasons that follow, the Board has determined to institute an
`
`inter partes review.
`
`I. BACKGROUND
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a):
`
`THRESHOLD.— The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 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 challenges claims 1–5, 13, and 17 of the ’566 patent as
`
`obvious under 35 U.S.C. § 103(a). Pet. 7. We institute inter partes review
`
`as to claims 1–5, 13 and 17, but only on certain grounds as discussed below.
`
`A. The ’566 Patent (Ex. 1001)
`
`Petitioner states that the ’566 patent is asserted in a 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. In
`
`addition, IPR2014-00437, directed to this same patent, is instituted on the
`
`same date as this decision.
`
`
`
`
`2
`
`SKYHAWKE Ex. 1032, page 2
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`

`

`IPR2014-00438
`Patent 5,779,566
`
`
`The ’566 patent was involved in an ex-parte reexamination
`
`proceeding, number 90/008,817. A reexamination certificate, US 5,779,566
`
`C1, issued on March 31, 2009. The patentability of claims 1–37 was
`
`confirmed during that proceeding. None of the references utilized in the
`
`reexamination proceeding or initial prosecution is presently the subject of
`
`this Petition.
`
`B. Illustrative Claim
`
`Claim 1 of the ’566 patent is illustrative of the claims at issue:
`
`1. An apparatus for recording and reporting golf information to
`increase a player’s ability to improve from experience, the
`apparatus comprising:
`
`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.
`
`
`
`
`3
`
`SKYHAWKE Ex. 1032, page 3
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`

`

`IPR2014-00438
`Patent 5,779,566
`
`
`
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`US 5,426,422
`Vanden Heuvel et al.
`(hereinafter “Vanden Heuvel”)
`
`
`Palmer
`
`
`
`
`
`WO 92/04080
`
`
`
`
`
`
`
`
`June 20, 1995
`(filed Apr. 11, 1994)
`
`Mar. 19, 1992
`
`Apr. 29, 1992
`
`Osamu
`
`
`
`
`
`GB 2 249 202 A
`
`Turbotax® User Manual (Oct. 1992) (hereinafter “Turbotax®”)
`
`The Nintendo® Game Boy® Compact Video Game System Owner’s Manual
`(1989) (hereinafter “Game Boy®”)
`
`EA SPORTS® Presents PGA® Tour Golf Instruction Booklet (1991)
`(hereinafter “PGA® Tour Golf”)
`
`The Ultra Golf ®Instruction Booklet for the Nintendo®
`Game Boy® (1992) (hereinafter “Ultra Golf®”)
`
`
`D. The Asserted Grounds
`
`Petitioner challenges claims 1–5, 13, and 17 of the ’566 patent on the
`
`following grounds (Pet. 7.):
`
`Claims 1–3 under 35 U.S.C. § 103(a) as unpatentable over Palmer and
`
`Vanden Heuvel;
`
`Claims 4–5, 13, and 17 under 35 U.S.C. § 103(a) as unpatentable over
`
`Palmer, Vanden Heuvel, and Osamu;
`
`Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Palmer,
`
`Vanden Heuvel, Osamu, and Turbotax®;
`
`Claims 1–5, 13, and 17 under 35 U.S.C. § 103(a) as unpatentable over
`
`Game Boy®, Ultra Golf®, and PGA® Tour Golf.
`
`
`
`
`4
`
`SKYHAWKE Ex. 1032, page 4
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`

`

`IPR2014-00438
`Patent 5,779,566
`
`
`E. Claim Interpretation
`
`The Board interprets 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 Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). .
`
`We are cognizant of the fact that the patent, which is the subject of
`
`this proceeding, will expire July 14, 2015. For the purposes of this Decision,
`
`we need not address the issue of alternative interpretations under different
`
`claim construction standards. The final decision in this matter may be
`
`rendered prior to the expiration of the ’566 patent. In addition, claim
`
`construction is preliminary at this stage in the proceeding and may be
`
`modified later.
`
`i. Preamble Language
`
`Petitioner concludes that the preamble of each claim is nonlimiting.
`
`Pet. 26. Patent Owner disagrees. Prelim. Resp. 4–5. Patent Owner asserts
`
`that the preambles give life to the meaning of the claims in reciting an
`
`apparatus for recording and reporting data from real life events, in a hand-
`
`held apparatus and being limited to golf information. Prelim. Resp. 5.
`
`We find that the preamble is nonlimiting. A claim preamble has the
`
`import that the claim as a whole suggests for it. Where the claim preamble
`
`is used to recite structural limitations of the claimed invention, the PTO and
`
`courts give effect to that usage. Conversely, where a structurally complete
`
`invention is defined in the claim body and uses the preamble only to state a
`
`purpose or intended use for the invention, the preamble is not a claim
`
`limitation. Rowe v. Dror, 112 F.3d 473, 477 (Fed. Cir. 1997).
`
`
`
`
`5
`
`SKYHAWKE Ex. 1032, page 5
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`

`

`IPR2014-00438
`Patent 5,779,566
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`
`While the preambles in the challenged claims may give some context
`
`for the claim limitations, we find that they add no structural limitations. The
`
`claims and the specification indicate that the challenged claims may be used
`
`in the field of golf or similar sporting events, without limiting their
`
`application only to golf.1 For example, no element after the transitional
`
`phrase “comprising” in claim 1 requires the game to be golf or depends
`
`solely upon golf for understanding or context.2
`
`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.3 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
`
`1 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.”)
`2 We observe that claims 6, 9–12, 18, 28–29, and 31, on the other hand, each
`contain golf limitations in the body of the claim. Ex. 1001, 45–49. In any
`event, as Palmer describes a handheld golf device, we see no practical
`difference in whether the preamble applies to the challenged claims for
`purposes of applying the cited art.
`3 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.
`
`
`
`
`6
`
`SKYHAWKE Ex. 1032, page 6
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`

`

`IPR2014-00438
`Patent 5,779,566
`
`include a piece of structure which essentially was 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, 46. On this record, 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 that based on the current
`
`record, the final paragraph of claim 1 describes a user 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 practical difference. It adds the limitation of a “choice means” for
`
`non-sequential selection or changing of information screens. Ex. 1001, 46.
`
`In this instance, as noted by Petitioner, no structure is recited. 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. Ex. 1001,
`
`43, 11:18. Claim 3 includes the limitation that the choice means is “screen–
`
`
`
`
`7
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`SKYHAWKE Ex. 1032, page 7
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`

`IPR2014-00438
`Patent 5,779,566
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`–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. Ex. 1001,
`
`47–48.
`
`
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in its preliminary response to determine whether
`
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`
`
`A. Grounds Based on Palmer (Ex. 1005)
`
`1. Claims 1–3 under 35 U.S.C. § 103(a) as unpatentable over Palmer and
`Vanden Heuvel
`
`
`
`Claims 1-3 are 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, 45-46.
`
`
`
`
`
`Claim 1
`
`Claim 1 recites more specifically an apparatus comprising “a self-
`
`contained computer unit” displaying “information screens” and three key
`
`entry means as discussed above. Ex. 1001, 45-46. The combination of
`
`Palmer and Vanden Heuvel are said to teach the computer unit and screens,
`
`and the screen-dependent key entry means, respectively. Pet. 30-31.
`
`
`
`Palmer is a handheld golf “device for determining a golf play
`
`parameter.” Ex.1005, 1, Abstract. In general, Palmer describes a handheld
`
`
`
`
`8
`
`SKYHAWKE Ex. 1032, page 8
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`

`

`IPR2014-00438
`Patent 5,779,566
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`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. Id.; Pet. 27.
`
`Page 54 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
`
`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.
`
`
`4 Citation is to the Exhibit page, not the original pagination within the
`reference.
`
`
`
`
`9
`
`SKYHAWKE Ex. 1032, page 9
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`

`

`IPR2014-00438
`Patent 5,779,566
`
`
`According to Petitioner’s declarant Professor Carl A. 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. 2012, 47).
`
`Also according to Professor Gutwin, “the size and handheld nature of
`
`the device limits the number of input buttons that may be reasonably
`
`incorporated into the design.” Ex. 1012, 40. The Vanden Heuvel buttons
`
`allow a user to scroll sequentially or non-sequentially. Id. at 44 (citing Ex.
`
`1006, Figs. 13–15; 5:61–6:19). On the current record, we are persuaded that
`
`this position is reasonable. In more detail, we observe that 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.
`
`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
`
`
`
`
`10
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`SKYHAWKE Ex. 1032, page 10
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`IPR2014-00438
`Patent 5,779,566
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`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.
`
`Patent Owner challenges that Petitioner has not shown where the “key
`
`entry means” of claim 1 has been shown. Prelim. Resp. 8. The gravamen of
`
`this argument is that the Petitioner has not shown what structure is the key
`
`
`
`
`11
`
`SKYHAWKE Ex. 1032, page 11
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`IPR2014-00438
`Patent 5,779,566
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`entry means. However, as this position is based on an interpretation of the
`
`claims as being means-plus-function, the argument is not persuasive. We
`
`find that the key entry means is encompassed by the structure recited in the
`
`claim, specifically, keys with functions.
`
`Each recited key entry means is described in Vanden Heuvel; see
`
`especially figures 13 and 14 with the function key 40b, and the cursor
`
`movement keys 40c-f. Pet. 31-32.
`
`Accordingly, the evidence of record supports a conclusion that there is
`
`a reasonable likelihood that Petitioner would prevail on the issue of the
`
`unpatentability of claim 1 over Palmer and Vanden Heuvel.
`
`Claim 2
`
`Claim 2 recites that the first key means of claim 1 further “permits
`
`changing of the information screens in sequential fashion, and the first key
`
`means further includes choice means for non-sequential selection or
`
`changing of information screens.” Ex. 1001, 46. Petitioner has observed
`
`that Vanden Heuvel describes operation of key 40a as displaying
`
`information screens 206a–206d in a sequential fashion or non-sequential
`
`fashion. Pet. 32.
`
`Citing Ex. 1006, 5:61–6:19, Petitioner urges that “activation of the
`
`read key 40a or the down cursor key 40d as a user input 106 (FIG. 4) will
`
`cause display of the selected quick view database screen.” Pet. 32. Then in
`
`a so-called manual quick view operation, when the timer times out 112, the
`
`display reverts 104 to the quick view status display (Fig. 6) and awaits user
`
`selection 106 of a next quick view database screen. Id. In automatic quick
`
`view operation, when the timer times out 112, the quick view controller 60
`
`
`
`
`12
`
`SKYHAWKE Ex. 1032, page 12
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`

`IPR2014-00438
`Patent 5,779,566
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`(Fig. 1) automatically selects the next quick view database screen 114 by
`
`retrieving the screen from database portion 48 of memory 44 and providing
`
`it to display driver 56 (Fig. 1). This evidence supports a conclusion, on the
`
`current record, that Vanden Heuvel describes sequential screen display.
`
`Petitioner next observes that “operation of key 40b, in conjunction
`
`with the processor of device 30 and associated software programmed
`
`according to the logic shown in FIG. 5, provides for additional non-
`
`sequential selection or changing of information screens via a function menu,
`
`[citing] Ex. 1006 [,] 5:23–37.” Function key 40b, overwrites the bottom line
`
`of the four line display 42 with a function menu 70 showing a plurality of
`
`icons, each of the plurality of icons identifying a particular function. Pet. 33.
`
`“The left/right cursor keys 40e, 40f allow the user to scroll among the
`
`various functions of the function menu 70 and to select one of the icons.
`
`Upon selection of the proper icon, e.g., 70a, 70b, or 70c the user depresses
`
`the function key 40b to activate that function.” Id. On the current record,
`
`this evidence persuades us that Vanden Heuvel also describes non-sequential
`
`screen selection by a user. See Ex. 1006, 5:23–37.
`
`Accordingly, the evidence presented in the Petition demonstrates that
`
`there is a reasonable likelihood that Petitioner would prevail on the issue of
`
`the unpatentability of claim 2 over Palmer and Vanden Heuvel.
`
`Claim 3
`
`Claim 3 recites that “the choice means is screen––dependent to
`
`provide a customized set of screen changing options for a displayed
`
`information screen.” Ex.1001, 46. Petitioner points to Vanden Heuvel, Fig.
`
`7, which is reproduced below:
`
`
`
`
`13
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`SKYHAWKE Ex. 1032, page 13
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`IPR2014-00438
`Patent 5,779,566
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`
`
`Fig 7. is a plan view of an alternative embodiment of Vanden Heuvel.
`
`According to the Petitioner:
`
`[from] the previous status screen 104, user input 106 can request a
`quick view function menu 120 (Fig. 5). Menu request 120 is
`performed by activation of function key 40b (Fig. 6), which causes the
`unit to display a function menu next. A ‘quick view’ status screen
`function menu 208 is shown in FIG. 7 [above]. The function menu
`208 comprises a plurality of icons which can be utilized to select
`various quick view functions.
`
`Ex. 1006, 6:34–55; Pet. 33.
`
`
`On this record we are persuaded that the evidence illustrates Vanden
`
`Heuvel describes a screen––dependent customized set of options.
`
`Consequently, we are persuaded that Petitioner has demonstrated that there
`
`is a reasonable likelihood Petitioner would prevail on the issue of the
`
`unpatentability of claim 3 over Palmer and Vanden Heuvel.
`
`2. Claims 4–5, 13, and 17 under 35 U.S.C. § 103(a) as unpatentable
`over Palmer, Vanden Heuvel, and Osamu
`
`These claims recite particular screens — for pre-game, game-
`
`interactive, and post-game use. Ex. 1001 17:35-42; 19:3-33; and 20:50-
`
`21:9.
`
`
`
`
`14
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`SKYHAWKE Ex. 1032, page 14
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`IPR2014-00438
`Patent 5,779,566
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`
`Petitioner urges that Osamu discloses a handheld electronic golf
`
`computer that is carried by a golfer during the game of golf and used to store
`
`location, score, and club selection data. Osamu is said by Petitioner to
`
`describe “storing a plurality of game interactive (and post-game screens),
`
`defining different levels of game play detail, in the memory of the device,”
`
`which are “selectively displayed throughout the round of golf.” Pet. 37.
`
`In particular, Petitioner points to the game-interactive mode where
`
`two game-interactive recording information screens are presented to the
`
`golfer: a scorecard screen, and a separate screen allowing the golfer to input
`
`the location of each shot on a given hole and the club used for each shot
`
`(“shot tracker screen”). At this same time, the carry distances for each shot
`
`are saved and displayed to the golfer. Pet. 34 (citing Ex. 1007, 18–20;
`
`Abstract).
`
`According to Petitioner, combining the teachings of Osamu into the
`
`Palmer/Vanden Heuvel system to yield the invention of these claims is
`
`simply combining prior art elements according to known methods to yield
`
`predictable results. Pet. 34.
`
`Claim 4
`
`Claim 4 recites that the information screens stored in memory
`
`comprise “one or more pre-game parameter recording information screens,
`
`one or more game interactive recording information screens; and one or
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`more post-game statistic report information screens.” Ex. 1001, 46.
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`Petitioner asserts that Palmer (Ex. 1005) describes pre-game entry
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`screens. Palmer is said to describe that details regarding how far a user can
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`repeatedly hit the golf ball for a given club is entered into the microcomputer
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`unit 1 via keypad 3 or range finding system 7 or a combination of both,
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`15
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`while the user can update the database at any time, except while actually
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`playing a round of golf. Pet. 37. This description appears to describe the
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`use of pre-game and post-game recording information screens.
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`Petitioner also directs us to Ex. 1005 at page 17, where a “user
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`progresses around the golf course, the relevant hole data is automatically
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`selected and used [in determining, for example,] the stroke allowance
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`calculation and the performance analysis sections of the score keeping
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`function. . . . The details the device can store include, but are not limited to:
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`the par for each hole; the stroke index for each hole, and the yardage for
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`each hole.” Likewise, this reference appears to describe the use of in-game
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`recording information screens.
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`Osamu, Ex. 1007, is pointed to by the Petitioner as describing both in
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`game and post-game play displays. Pet. 37–38 (citing Ex. 1007, 18–19). It
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`is said to describe a golfer at a tee shot who begins recording data, such as
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`hole number and ball location. Carry distance is computed and displayed
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`along with number of shots. Similar activity is carried out for putting.
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`As for the postgame screens, scores are stored, and may be reviewed
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`by displaying on LCD panel 20 as desired. Pages 19–20 of Exhibit 1007 are
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`illustrative and provide more detail.
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`After play is finished, the data stored in the portable apparatus is post-
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`treated and edited. The data sent includes the hole numbers, route of shots,
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`carry distances, scores, identity of clubs used, penalty counts, and putting
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`counts. The computer prepares an image of a route map for each hole which
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`is displayed on a screen. A score table, ranking table in a competition, and
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`correlation between a club used and wind nature also may be prepared. Ex.
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`1007 at 19-20.
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`16
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`We find that the current record supports a finding that the pre-game,
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`in-game, and post-game display screens are described in this combination of
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`Palmer and Osamu. Accordingly, Petitioner has demonstrated a reasonable
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`likelihood of prevailing on the ground that claim 4 is unpatentable over
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`Palmer, Vanden Heuvel, and Osamu.
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`Claim 5
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`Claim 5 depends from claim 4, and further recites that “the
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`information screen further include one or more game interactive fact report
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`information screens.” Ex. 1001, 46.
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`In this regard, Petitioner urges that Palmer describes a device which is
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`adapted to keep full scoring details for up to four players “which, in
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`preferred embodiments of the invention include, but are not limited to: . . . a
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`detailed performance analysis of the round.” Pet. 38–39 (citing Ex. 1005,
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`18–19).
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`We find that this evidence supports a finding that game interactive
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`fact report information screens are described in Palmer.
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`Accordingly, Petitioner has demonstrated a reasonable likelihood of
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`prevailing on the ground that claim 5 is unpatentable over Palmer, Vanden
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`Heuvel, and Osamu.
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`Claim 13
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`Claim 13 is an apparatus claim which contains, inter alia, a recitation
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`of a “self-contained computer unit having a memory, a power source and a
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`display for selectively displaying a plurality of information screens and
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`associated data stored in the memory, the information screens including
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`screen-dependent data input fields for the associated data.” Pet. 39; Ex.
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`1001, 47.
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`17
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`As noted above, Palmer, Ex. 1005, describes a keypad and processor
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`to input data and actuate functions relating to the play of golf. Id. at 5.
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`Palmer further describes a random access memory and a non-volatile
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`memory. Id. at 6. Palmer also describes the device is to be hand held (id. at
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`7) and battery powered (id. at 10). The display is to present instructions and
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`information to the user, while the keyboard is to input user responses. Id. at
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`9–10; see also Fig. 1. Various data fields can be utilized by a user, including
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`past performance and course information. Id. at 6.
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`Claim 13 further recites a plurality of “pre-game, game-interactive
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`and post-game information screens stored in the memory of the computer
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`unit.” Pet. 39–40; Ex. 1001, 47. We are persuaded that these features of
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`claim 13 are taught by Palmer.
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`Claim 13 continues on with an element reciting a “means for
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`displaying a pregame information screen and prompting entry of data which
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`defines parameters of an upcoming game, and means for subsequently
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`displaying a game interactive information screen corresponding to a game-
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`interactive mode defined by the parameters selected in the pre–game
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`information screen.” Pet. 40; Ex. 1001, 47.
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`Petitioner asserts that this is an entry key which is programmed to
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`display the pre-game screen. Pet. 20. We find this to be a reasonable
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`interpretation of this element, so long as the pre-game screen also allows
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`further data to be entered in a location (Ex. 1001, 4:37–44) and provides a
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`key to input game parameter data in the screen. The subsequent screen
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`displayed should be dependent in some way on the parameters of the data
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`entered in the pregame information screen.
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`18
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`Palmer describes the handheld unit describing screens prompting the
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`entry of club selection data (club distances hit). Ex. 1005, 5. According to
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`Palmer, the user can update the database at any time, except while actually
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`playing a round of golf. Id. Likewise, a user can enter golf course data to be
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`recalled whenever the user wants to play a round of golf. Ex. 1005, 17.
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`Palmer also describes screens available during the game to obtain club
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`selection advice, when the distance from the pin is previously entered via
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`keypad. Ex. 1005, 10–11.
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`Claim 13 next requires an “entry key means for changing information
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`screens in sequential fashion, the entry key means comprising one entry
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`key.” Ex. 1001, 47; Pet. 40. As before, this element has sufficient structure
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`to be a key which allows changing of screens sequentially.
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`Vanden Heuvel describes icon 206a as an indicator of the current
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`active icon. Activation of the read key 40a or the down cursor key 40d as
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`user input 106 changes screens in a sequential fashion. Ex. 1006, 5:61–6:3.
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`Claim 13 next requires three additional keys — a “choice key means
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`for non–sequential selection or changing of information screens the choice
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`key means comprising one choice key,” a “field select key means for
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`choosing a particular data input field on a displayed information screen, the
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`field select key means comprising two bi–directional keys,” and a “value
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`select key means for displaying and selectively recording data in the chosen
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`data input field the value select key means comprising two bi-directional
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`keys.” Ex. 1001, 47; Pet. 40–41. Again, there is sufficient structure to take
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`these elements outside the purview of 35 U.S.C. § 112, sixth paragraph.
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`As discussed above, Vanden Heuvel describes operation of key 40a as
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`displaying information screens 206a–206d in both a sequential fashion and a
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`19
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`non-sequential fashion. Citing Ex. 1006, 5:23–37, Petitioner urges that upon
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`activation of function key 40b, the bottom line of four line display 42 is
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`overwritten with function menu 70 showing a plurality of icons, each of the
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`plurality of icons identifying a particular function. Pet. 40–41.
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`Also as discussed above, Vanden Heuvel’s key 40a allows the user to
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`selectively display an information screen. Figure 6 is reproduced below:
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`Figure 6 is a top plan view of Vanden Heuvel’s
`apparatus and user selectable screen.
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`Depending upon the screen selected, keys 40e and 40f allow the
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`selection of a particular data field of predefined data on a displayed screen.
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`Th