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 IPR2014-00437
`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. 1033, page 1
`
`

`

`IPR2014-00437
`Patent 5,779,566
`
`
`SkyHawke Technologies, LLC (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 8–11, 14, and 18 of U.S.
`
`Patent No. 5,779,566 (“the ’566 patent”) pursuant to 35 U.S.C. § 311.
`
`Patent Owner L&H Concepts, LLC 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, we authorize institution of an inter partes
`
`review.
`
`I. BACKGROUND
`
`An inter partes review may be instituted only if “the information
`
`presented in the [Petition and Preliminary Response] 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.” 35 U.S.C. § 314(a). Petitioner
`
`challenges claims 8–11, 14, and 18 of the ’566 patent as obvious under 35
`
`U.S.C. § 103(a). Pet. 7. We authorize institution of inter partes review of
`
`claims 8–11, 14, and 18, but only on certain grounds as discussed below.
`
`A. The ’566 Patent (Ex. 1001)
`
`The ’566 patent is involved in litigation. Petitioner states that the
`
`’566 patent is asserted in co-pending civil action L&H Concepts, LLC v.
`
`SkyHawke Technologies, LLC, No. 2:13-cv-00199-JRG (E.D. Tex.). Pet.
`
`2–3. We observe that the civil action has been transferred to the Southern
`
`District of Mississippi as No. 3:14-cv-00224. An amended order staying
`
`that proceeding was entered July 7, 2014.
`
`The ’566 patent was involved in an ex-parte reexamination
`
`proceeding, number 90/008,817. A reexamination certificate, US 5,779,566
`
`C1, was issued on March 31, 2009. The patentability of claims 1–37 was
`
`confirmed during that proceeding. None of the references utilized in the
`
`
`
`
`2
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`SKYHAWKE Ex. 1033, page 2
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`Case IPR2014-00437
`Patent 5,779,566
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`reexamination proceeding or initial prosecution is presently the subject of
`
`this Petition. Trial is being instituted in IPR2014-00438, which challenges
`
`different claims of the ’566 patent, on the same day as this institution.
`
`B. Illustrative Claim
`
`Claim 8 of the ’566 patent is illustrative of the claims at issue:
`
`8. A method for recording and reporting golf information to
`increase a player’s ability to improve from experience comprising the
`following steps:
`
`storing a plurality of pre-game, game-interactive and post-game
`information screens in a memory of a computer unit having a display
`for selectively displaying one or more of the information screens, the
`information screens including screen-dependent data input fields for
`entry of data;
`
`displaying in sequential fashion one or more pre-game
`information screens and prompting entry of data which defines
`parameters of an upcoming game;
`
`providing a choice among a plurality of game-interactive
`information screens for recording data during the game defined by the
`parameters entered in the pre-game information screens;
`
`displaying a chosen game-interactive information screen;
`
`entering data in the chosen game-interactive information screen
`corresponding to a game as the game is played and simultaneously
`recording entered data in the memory of the computer unit;
`
`providing post-game reports based on the data entered in the
`game-interactive information screen; and
`
`providing one or more game-interactive advice/feedback
`information screens.
`
`Ex. 1001, 18:5-30
`
`
`
`3
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`SKYHAWKE Ex. 1033, page 3
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`Case IPR2014-00437
`Patent 5,779,566
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`
`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
`Osamu
`
`
`GB 2 249 202 A
`
`June 20, 1995
`
`(filed Apr. 11, 1994)
`
`Mar. 19, 1992
`
`Apr. 29, 1992
`
`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 8–11, 14, and 18 of the ’566 patent on the
`
`following grounds (Pet. 7):
`
`Claims 8–11, 14, and 18 as unpatentable under 35 U.S.C. § 103(a)
`
`over Palmer, Osamu, and Vanden Heuvel;
`
`Claim 18 as unpatentable under 35 U.S.C. § 103(a) over Palmer,
`
`Osamu, Vanden Heuvel, and Turbotax®; and
`
`Claims 8–11, 14, and 18 as unpatentable under 35 U.S.C. § 103(a)
`
`over Game Boy®, Ultra Golf®, and PGA® Tour Golf.
`
`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 also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). As Figure 1 of the
`
`
`
`4
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`SKYHAWKE Ex. 1033, page 4
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`Case IPR2014-00437
`Patent 5,779,566
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`instant patent provides a visual frame of reference which is useful in
`
`understanding the claim language, Figure 1 is reproduced below.
`
`
`
`Figure 1 is a plan view of an embodiment of the ’566 patent.
`
`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 preambles of the claims are nonlimiting.
`
`Pet. 17. Patent Owner disagrees. Prelim. Resp. 4. Patent Owner asserts that
`
`the preambles give life to the meaning of the claims in reciting an apparatus
`
`for recording and reporting data from golf or sports events. Prelim. Resp. 4.
`
`
`
`5
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`SKYHAWKE Ex. 1033, page 5
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`Case IPR2014-00437
`Patent 5,779,566
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`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 the preamble is used 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).
`
`While the preambles in the challenged claims may give some context
`
`for the claim limitations, we find that they are not necessary to give life to
`
`the claim terms or breathe meaning into the claims. The claims and the
`
`specification indicate that the challenged claims may be used in the field of
`
`golf or similar sporting events, without limiting their application only to
`
`golf.1 We observe that claims 8–11 each contain golf limitations in the body
`
`of the claim. Ex. 1001, 45–46. Claims 14 and 18 do not. In any event, as
`
`Palmer describes a handheld golf device, we see no practical difference in
`
`whether the preamble applies to the challenged claims.
`
`We recognize that the Patent Owner is asserting the claims are limited
`
`by virtue of arguments made during prosecution; however, such an argument
`
`is applicable principally in a litigation context in district court, not in
`
`
`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 bestsuited,
`but not the only game to which it can be applied.”)
`
`
`
`6
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`SKYHAWKE Ex. 1033, page 6
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`Case IPR2014-00437
`Patent 5,779,566
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`proceedings before the USPTO, under the broadest reasonable interpretation
`
`standard. Prelim. Resp. 6.
`
`ii. Pre-Game Data Entry
`
`Claim 18 uses the phrase “providing a pre-game mode of data entry in
`
`which one or more pre-game information screens are displayed to prompt
`
`the entry of data which defines parameters of an upcoming game, and
`
`providing a choice of at least one of a plurality of game-interactive
`
`information screens in a subsequent game-interactive mode of operation
`
`representing different levels of data recording detail.” Ex. 1001, p. 48.
`
`Petitioner asserts that this requires the user be able to select, in a pre-game
`
`mode, the amount of detail to record later in a game interactive mode.
`
`Pet. 16.
`
`Patent Owner does not provide any claim construction, but asserts
`
`multiple errors with the Petitioner’s construction, and that the claim
`
`language “is clear on its face and needs no additional construction.” Prelim.
`
`Resp. 9.
`
`We agree with Patent Owner. While the claims are lengthy, they are
`
`easily understood without reference to additional sources. We observe that,
`
`except where expressly temporally limited in the claim (e.g. pre-game, game
`
`interactive, and post-game), no particular order of steps is recited or
`
`required.
`
`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).
`
`
`
`7
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`SKYHAWKE Ex. 1033, page 7
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`Petitioner has urged that the “references addressed below provide the
`
`teachings believed by the [E]xaminer to be missing from the prior art and
`
`render obvious the challenged claims.” Pet. 17. We observe that this is an
`
`incorrect standard. The Petitioner bears the burden to present sufficient
`
`evidence in the Petition; reference to a prior examination or reexamination
`
`proceeding is not normally persuasive evidence.
`
`A. Grounds Based on Palmer (Ex. 1005)
`Claims 8–11 under 35 U.S.C. § 103(a) as unpatentable over Palmer,
`Osamu, and Vanden Heuvel
`
`
`
`
`Palmer describes a handheld device for determining a golf play
`
`parameter. Ex. 1005, 1, Abstract. In general, Palmer describes a handheld
`
`computing device with screens, utilizing an infrared beam to determine a
`
`distance to an object to determine and display a play parameter, such as club
`
`selection for a given distance. Id.; Pet. 1.
`
`Page 52 of Palmer is cited by Petitioner to illustrate a keypad
`
`connected with a processing means for the input of data related to play and
`
`the actuations of given functions. Pet. 21. In one embodiment, Palmer
`
`describes that the read only memory contains a club selection database.
`
`Program instructions and algorithms used by the processor determine the
`
`appropriate club for a given distance. This determination is said to be with
`
`or without reference to data concerning the personal performance of the user
`
`stored in the device. The device also contains instructions for interactive
`
`training exercises, player performance analysis, and/or score keeping. Id.
`
`Figure 3 is illustrative of the device of Palmer, illustrating a screen, a
`
`handheld unit, and input keys, and is reproduced below.
`
`2 Citation is to the Exhibit page, not the original pagination within the
`reference.
`
`
`
`8
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`SKYHAWKE Ex. 1033, page 8
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`Figure 3 is a plan view of a handheld device of Palmer.
`
`
`
`Osamu describes a device and method for recording and reporting golf
`
`information to increase a player’s ability to improve from experience. Pet.
`
`21 (citing Ex. 1006, 13, Fig. 3).
`
`Osamu Figure 3 is also illustrative, and reproduced below.
`
`Figure 3 is a plan view of a portable golf device of Osamu.
`
`
`
`
`
`9
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`SKYHAWKE Ex. 1033, page 9
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`Case IPR2014-00437
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`
`
`Osamu describes a handheld electronic golf computer carried by a
`
`golfer and used to store location, score, and club selection data. Ex. 1006,
`
`Abstract. During a game-interactive mode, two game-interactive recording
`
`information screens are presented to the golfer. First, a scorecard screen,
`
`and second, a separate screen allowing the golfer to input the location of
`
`each shot on a given hole and the club used for each shot to track them. Id.
`
`at 19. The carry distances for each shot are saved and displayed to the
`
`golfer. Id.
`
`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. 1007) relating to a portable
`
`pager device having sequential screens and prompts, as doing so represented
`
`nothing more than the simple substitution of a screen-dependent input for a
`
`keypad to yield predictable results. Ex. 1012, ¶ 78.
`
`Also according to Professor Gutwin, the size and handheld nature of
`
`the device limits the number of input buttons that may be incorporated
`
`reasonably into the design. Ex. 1012, ¶ 70. The Vanden Heuvel buttons
`
`allow a user to scroll sequentially or non-sequentially. Id. at ¶ 75 (citing Ex.
`
`1006, 5:61–6:19, Figs. 13–15.
`
`Finally, Professor Gutwin testifies that a person of ordinary skill in the
`
`art would have combined the teachings of Osamu with the device of Palmer
`
`because both use temporal screen sequences, and because the Palmer club
`
`selection screen corresponds directly to the shot tracker screen. Ex. 1012,
`
`¶¶ 57-60.
`
`
`
`10
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`SKYHAWKE Ex. 1033, page 10
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`Case IPR2014-00437
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`These positions both appear to have an evidentiary foundation and are
`
`reasonable.
`
`Claim 8
`
`We observe that both Palmer and Osamu describe methods that
`
`include training exercises and recording of data to improve a player’s
`
`performance. Ex. 1005, 5; Ex. 1006, 13.
`
`Palmer describes several pre-game screens — for example,
`
`entering shot distances and golf course information. Ex. 1005, 10, 15,
`
`17; Pet. 22.
`
`Palmer also describes several screens for in-game use. Shot
`
`tracking is one of them, club selection is another. Ex. 1005, 10, 11,
`
`18, 19; Pet. 23.
`
`Palmer also describes post-game screens for performing player
`
`performance analysis. Ex. 1005, 19; Pet. 23.
`
`Likewise, Osamu describes screens for inputting tee shots at
`
`each hole, ball location, and carry data. Putting data may be entered
`
`as well. Ex. 1006, 19–20. Osamu also describes post-game analysis
`
`and processing using a computer in the clubhouse. Id.
`
`Vanden Heuvel describes user data input by cursor movement
`
`keys 40b, 40d, 40e, or 40f, which permit an adjustment of values in
`
`particular screens. Ex. 1007, 9:5–26; Pet. 24.
`
`Claim 8 also requires “displaying in sequential fashion one or
`
`more pre-game information screens and prompting entry of data
`
`which defines parameters of an upcoming game.” Ex. 1004, 18:14–
`
`16. The Petitioner asserts that this claim language should be
`
`
`
`11
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`SKYHAWKE Ex. 1033, page 11
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`interpreted as requiring that the user can select, in a pre-game mode,
`
`the amount of detail to later record in a game interactive mode.
`
`Pet. 16.
`
`Petitioner urges that Palmer’s pre-game information screens
`
`describe this feature. Pet. 24. While Petitioner has not provided a
`
`very detailed analysis of this element, we do see that Palmer describes
`
`the different activities which can be tracked — training and shot
`
`recording by entering particular data. Osamu also describes the entry
`
`of data for a particular course. In general, we find that these screens
`
`for entering data would act to define the parameters of the upcoming
`
`game. The claim term “game” itself is not necessarily a formal
`
`“game” — a practice “game” or simply recording practice shots
`
`would also fulfill the claim language.
`
`Claim 8 next requires the element of “providing a choice among
`
`a plurality of game-interactive information screens for recording data
`
`during the game defined by the parameters entered in the pre-game
`
`information screens.” Ex. 1001, 18:17–29.
`
`Petitioner urges that Palmer describes various game interactive
`
`screens including one for entering shot distances with a particular
`
`club, golf course details, and player scores. Ex. 1005, 10, 17–19.
`
`Osamu is said to describe a scorecard screen and a screen for inputting
`
`shot location and club used. Ex. 1006, 18–19; Pet. 25.
`
`We find that both Osamu and Palmer describe the use of
`
`different screens during the play of the game, which screens would
`
`necessarily be selected by the user depending on the function desired.
`
`
`
`12
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`SKYHAWKE Ex. 1033, page 12
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`Case IPR2014-00437
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`
`Claim 8 next requires the step of “displaying a chosen game-
`
`interactive information screen.” Petitioner asserts that Palmer
`
`describes score keeping screens, and Osamu describes a scorecard
`
`screen including location, carry distance, and club. Ex. 1005, 18–19;
`
`Ex. 1006, 18–19; Pet. 25. Thus, Palmer and Osamu display these
`
`screens.
`
`Claim 8 next requires “entering data in the chosen game-
`
`interactive information screen corresponding to a game as the game is
`
`played, and simultaneously recording entered data in the memory of
`
`the computer unit.” Ex. 1001, 18:22–26.
`
`Palmer permits the entry of scoring details for players, and
`
`Osamu describes a scorecard screen and inputting of shot location and
`
`club type. Ex. 1005, 18; Ex. 1006, 18–19; Pet. 25–26.
`
`Claim 8 additionally requires the step of “providing post-game
`
`reports based on the data entered in the game-interactive information
`
`screen.” Ex. 1001, 18:27–28.
`
`Palmer describes a post-game performance analysis for each
`
`player. Ex. 1005, 19. Osamu describes post-game processing
`
`resulting in various data items such as scores, penalties, clubs, and the
`
`preparation of a competition list. Ex. 1006, 19, 20; Pet. 26.
`
`Lastly, the claim requires the step of “providing one or more
`
`game-interactive advice/feedback information screens.” Ex. 1001,
`
`18:29–30.
`
`
`
`13
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`SKYHAWKE Ex. 1033, page 13
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`Case IPR2014-00437
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`
`Palmer describes a game-interactive screen providing club
`
`selection tips and a performance analysis covering the round so far.
`
`Ex. 1005, 10, 19; Pet. 26.
`
`Accordingly, the evidence of record supports a conclusion that
`
`there is a reasonable likelihood that Petitioner would prevail on the
`
`issue of the patentability of claim 8.
`
`Claim 9
`
`Claim 9 is also an independent method claim. The first step is a
`
`step of “providing a computer unit with a memory, a display, and data
`
`selection entry keys.” Ex. 1001, 18:34–35.
`
`Palmer describes a computer having a display, entry keys, and a
`
`memory. Ex. 1005, 6, 9, 10; Pet. 27.
`
`Claim 9 next requires a step of “storing a plurality of
`
`information screens of golf play information in the memory of the
`
`computer unit, the information screens including screen-dependent
`
`data input fields corresponding to the golf play information in each
`
`screen.” Ex. 1001, 18:37–41.
`
`Palmer describes golf screen information including suggestions
`
`as to which club to use for a shot based on the range of personal data
`
`previously entered by the user; details regarding how far a user can
`
`repeatedly hit the golf ball for a given club, which data is entered into
`
`the microcomputer unit via, e.g., the keypad. Palmer also can store
`
`and retrieve golf course information, and track shots during a game.
`
`Ex. 1005, 10–19.
`
`
`
`14
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`SKYHAWKE Ex. 1033, page 14
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`Case IPR2014-00437
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`Claim 9 adds a step of “selectively displaying information
`
`screens on the display in a logical sequence of pre-game and game-
`
`interactive screens, the pre-game information screen prompting entry
`
`of data which defines parameters of a game to be played and a game-
`
`interactive screen on which data is recorded for the game.” Ex. 1001,
`
`18:42–47.
`
`Palmer describes a pre-game mode with data entry of
`
`information regarding distances a user can hit the golf ball for a given
`
`club repeatedly, and details about one or more golf courses. After
`
`such data entry, the device can keep scoring details for up to four
`
`players. Ex. 1005, 10, 17–19; Pet. 28.
`
`Claim 9 next requires a step of “selecting data input fields on a
`
`displayed information screen.” Ex. 1001, 18:48–49.
`
`Palmer and Osamu each describe a scorecard which includes
`
`data input fields on a displayed information screen. Ex. 1005, 18–19;
`
`Ex. 1006, 18–19. Vanden Heuvel discloses selecting data input fields
`
`on a displayed information screen. Ex. 1007, 9:5–26.
`
`Claim 9 also requires a step of “selecting from stored golf
`
`information corresponding to one or more chosen data input fields.”
`
`Ex. 1001, 18:50–51.
`
`Palmer describes the storing and retrieval of scoring details for
`
`up to four players. Ex. 1005, 18. Osamu describes a similar entry and
`
`later display. Ex. 1006, 19; Pet. 29–30.
`
`Finally, claim 9 recites the step of “storing selected golf
`
`information in the memory as statistical or factual reports for retrieval
`
`
`
`15
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`SKYHAWKE Ex. 1033, page 15
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`by the user after the game.” Ex. 1001, 18:52–54. Both Osamu and
`
`Palmer specifically describe post-game reports. Ex. 1006, 19–20; Ex.
`
`1005, 19.
`
`Accordingly, the evidence of record supports a conclusion that
`
`there is a reasonable likelihood that Petitioner would prevail on the
`
`issue of the patentability of claim 9.
`
`Claims 10 and 11
`
`Claim 10 depends from claim 9, and recites that the information
`
`entered in the pre-game information screen “comprises golf play
`
`parameters defining an upcoming game, and the golf information
`
`entered in the game-interactive information screens comprises golf
`
`play data values defining a user’s actual performance within the golf
`
`play parameters of the game.” Ex. 1001, 18:55–61. Claim 11 recites
`
`that the parameters are entered in pre-game mode and the play data is
`
`entered in game-interactive mode. Id. at 18:61–65.
`
`Palmer describes entering pre-game parameters such as
`
`distances hit with a club, and details about golf courses. When
`
`entering into the game, scoring details for up to four players including
`
`the number of shots taken are recorded. Ex. 1005, 10, 17–18; Pet. 30.
`
`Accordingly, the evidence of record supports a conclusion that
`
`there is a reasonable likelihood that Petitioner would prevail on the
`
`issue of the patentability of claims 10 and 11.
`
`Claim 14
`
`Claim 14 differs from claim 8 in that it contains the additional
`
`element that the “game-interactive information screens comprise a
`
`
`
`16
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`SKYHAWKE Ex. 1033, page 16
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`Case IPR2014-00437
`Patent 5,779,566
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`first information screen with a first detail level of recording, and a
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`second information screen with a second detail level of recording.”
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`Ex. 1001, 19:59–62.
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`Petitioner has not provided an interpretation of this claim
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`language. The specification provides that there are screens set up for
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`recording different levels of detail. Ex. 1001, 4:16–24, 4:36–45.
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`As to the first level of detail, Osamu describes the entry of hole
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`number, location, and shot. Ex. 1006, 18; Pet. 34.
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`As to the second level of detail, Petitioner states that Osamu’s
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`second game-interactive screen:
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`Ex. 1006 at p. 19 [second detail level]: Scores input are all
`stored, which may be reviewed by displaying on the LCD
`panel 20 as desired.
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`See Ex. 1012 ¶¶ 48–50, 55, and 58–66.
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`Pet. 34.
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`With reference to Professor Gutwin’s declaration, Petitioner
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`states that the “first detail level of recording” is the scorecard screen,
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`and the “second detail level of recording” is the shot tracker screen.
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`Ex. 1012, ¶ 55. While these two analyses do not line up precisely, it
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`is apparent to us that Osamu allows the retrieval and review of at least
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`a screen containing only scores. Ex. 1006, 19. Osamu also allows for
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`the “shot tracking” entry of additional levels of detail to provide a
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`route map for holes.
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`17
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`SKYHAWKE Ex. 1033, page 17
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`Patent 5,779,566
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`Accordingly, the evidence of record supports a conclusion that
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`there is a reasonable likelihood that Petitioner would prevail on the
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`issue of the patentability of claim 14.
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`Claim 18
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`Claim 18, the last challenged claim, has similar elements to
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`claims 8 and 9 discussed above. It also contains the method step
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`limitation of
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`providing a pre-game mode of data entry in which one or more
`pre-game information screens are displayed to prompt the entry
`of data which defines parameters of an upcoming game, and
`providing a choice of at least one of a plurality of game-
`interactive mode of operation representing different levels of
`data recording detail.”
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`Ex. 1001, 21:21–27.
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`As to the first part of the step, Palmer describes a database to be
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`used for club selection. Part of that data entered is the personal golfer
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`data of past performance. Ex. 1005, 10. The performance level of a
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`golfer in a game is a parameter of the game. Palmer also stores
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`customized course information which is likewise a game parameter.
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`Ex. 1005, 17.
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`As to the second part of the step, we again note the Petitioner’s
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`case relies upon Professor Gutwin’s declaration, where he states that
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`the “first detail level of recording” is the scorecard screen, and the
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`“second detail level of recording” is the shot tracker screen. Ex. 1012,
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`¶ 55. Osamu allows the retrieval and review of at least a screen
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`containing only scores. Ex. 1006, 19. Osamu also allows the “shot
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`18
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`SKYHAWKE Ex. 1033, page 18
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`tracking” screens which, as we found above on the present record,
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`include differing levels of detail. Id.
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`Claim 18 additionally requires the method step of “entering the
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`game-interactive mode during the game defined in the pre-game
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`mode, and displaying a chosen game-interactive recording
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`information screen for entry of game data as the game is played.”
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`Ex. 1001, 21:28–31.
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`Palmer describes the game interactive mode of keeping score
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`details for players, as does Osamu. Ex. 1005, 18, Ex. 1006, 19.
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`Osamu also described a more detailed recording of location and carry
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`distances as well as club identity. Ex. 1006, 18; Pet. 36.
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`Accordingly, the evidence of record supports a conclusion that
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`there is a reasonable likelihood that Petitioner would prevail on the
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`issue of the patentability of claim 18.
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`B. Grounds Based on Palmer, Osamu, Vanden Heuvel and Turbotax®
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`Petitioner states that this combination of references is provided in the
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`event the broadest reasonable interpretation requires interpretation of claim
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`18 as requiring turning on and off scoring options. As we have not
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`determined that claim 18 requires such an interpretation, we deny
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`Petitioner’s request to institute on this ground.
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`C. Grounds based on Game Boy®, Ultra Golf, and PGA® Tour Golf
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`This combination of references is provided without explanation as to
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`why it is better or different from the previous grounds. As we have
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`determined the Petition will go forward as discussed above, we exercise our
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`discretion and decline to institute on this ground. See 37 C.F.R. § 42.108(a).
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`19
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`SKYHAWKE Ex. 1033, page 19
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`D. Conclusion
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`We conclude that Petitioner has demonstrated a reasonable likelihood
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`of prevailing on the following grounds of unpatentability asserted in the
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`Petition:
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`Claims 8–11, 14, and 18 under 35 U.S.C. § 103(a) as unpatentable
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`over Palmer, Osamu, and Vanden Heuvel.
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`III. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted as to claims 8–11, 14, and 18 of the ’566 patent
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`as unpatentable over Palmer, Osamu, and Vanden Heuvel;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’566 patent is hereby instituted commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial;
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified above and no other grounds are authorized.
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`20
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`SKYHAWKE Ex. 1033, page 20
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`Case IPR2014-00437
`Patent 5,779,566
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`PETITIONER:
`
`Thomas Fisher
`cpdocketfisher@oblon.com
`
`Scott McKeown
`cpdocketmckeown@oblon.com
`
`Christopher Ricciuti
`cpdocketricciuti@oblon.com
`
`Alexander Englehart
`cpdocketenglehart@oblon.com
`
`
`PATENT OWNER:
`
`David Hoffman
`hoffman@fr.com
`
`Matthew Wernli
`wernli@fr.com
`
`
`
`
`
`
`
`21
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`SKYHAWKE Ex. 1033, page 21
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`