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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SkyHawke Technologies, LLC,
`
`Petitioner,
`
`v.
`
`L&H Concepts, LLC,
`
`Patent Owner.
`
`____________
`
`IPR2014-01485
`
`Patent 5,779,566
`
`____________
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 6, 15, AND 16 OF U.S. PATENT NO. 5,779,566
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`TABLE OF CONTENTS
`EXHIBIT LIST ......................................................................................................... ii
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES ............................................................................. 2
`A.
`Real Party-In-Interest ................................................................................... 3
`B.
`Related Matters ............................................................................................ 3
`1. Related Litigation ......................................................................................... 3
`2. Related Petitions ........................................................................................... 3
`C.
`Lead and Back-Up Counsel ......................................................................... 4
`D.
`Service Information ...................................................................................... 4
`III. PAYMENT OF FEES ..................................................................................... 5
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5
`A. Grounds for Standing ................................................................................... 5
`B.
`Identification of Challenge ........................................................................... 6
`1. The Specific Art and Statutory Ground(s) on Which the Challenge Is
`Based ............................................................................................................ 6
`2. How the Construed Claims Are Unpatentable under the Statutory Ground
`Identified Above, and Supporting Evidence Relied upon to Support the
`Challenge ..................................................................................................... 7
`FACTUAL BACKGROUND ......................................................................... 8
`V.
`A. Declaration Evidence ................................................................................... 8
`B.
`Summary of the ‘566 Patent ......................................................................... 8
`C.
`Prosecution History of the ‘566 Patent ...................................................... 10
`D. Ex Parte Reexamination of the ‘566 Patent ............................................... 15
`VI. BROADEST REASONABLE CONSTRUCTION ...................................... 15
`A.
`“means for selecting non-sequential option screens” ................................ 17
`B.
`Preambles ................................................................................................... 18
`VII. GROUNDS OF UNPATENTABILITY SHOWING THAT PETITIONER
`HAS A REASONABLE LIKELIHOOD OF PREVAILING ................................. 19
`A.
`Claims 6, 15, and 16 are rendered obvious by Palmer in view of Vanden
`Heuvel and further in view of Osamu .................................................................. 19
`VIII. CONCLUSION ............................................................................................. 41
`i
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`
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`

`

`
`
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`1011
`1012
`1013
`1014
`
`1015
`
`1016
`
`1017
`1018
`1019
`
`1020
`1021
`1022
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`
`
`
`
`
`EXHIBIT LIST
`
`U.S. Patent No. 5,779,566 to Wilens
`Excerpts from the prosecution history of U.S. Patent No. 5,779,566
`Excerpts from the ex parte reexamination of U.S. Patent No.
`5,779,566
`U.S. Patent No. 4,142,236 to Martz et al.
`International Publication Number WO 92/04080 to Palmer
`U.S. Patent No. 5,426,422 to Vanden Heuvel et al.
`UK Patent Application No. 2,249,202 to Osamu
`TurboTax®, The Easiest Way to do Your Taxes, User Manual
`The Nintendo® Game Boy® Compact Video Game System Owner’s
`Manual
`The Ultra Golf Instruction Booklet
`EA SPORTS Presents PGA Tour Golf Instruction Booklet
`Exhibit Number Not Used
`Exhibit Number Not Used
`Shneiderman, B., Designing the User Interface: Strategies for
`Effective Human-Computer Interaction (1992)
`Shneiderman, B., Designing the User Interface: Strategies for
`Effective Human-Computer Interaction (1987)
`Coats, R. and Vlaeminke, I., Man-Computer Interfaces: An
`Introduction to Software Design and Implementation (1987)
`Downton, A., Engineering the Human-Computer Interface (1991)
`Shneiderman, B., Designing Menu Selection Systems (1986)
`Lickteig, C., Design Guidelines and Functional Specifications for
`Simulation of the Battlefield Management System’s (BMS) User
`Interface (1988)
`U.S. Patent No. 4,879,648 to Cochran et al.
`SONY® Video Cassette Recorder Operating Instructions (1990)
`CASIO® Module No. 262 User Guide
`
`
`
`ii
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`

`

`
`
`1023
`1024
`
`1025
`
`1026
`
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`
`
`
`Brown, J., Controlling the Complexity of Menu Networks (1982)
`Opit, L.J., and Woodroofe, F.J., Computer-held Clinical Record
`System–II, Assessment (1970)
`Norman, K., The Psychology of Menu Selection: Designing Cognitive
`Control at the Human/Computer Interface (1991)
`The Software Toolworks’ Mavis Beacon Teaches Typing: User’s
`Manual (1987)
`Exhibit Number Not Used
`Exhibit Number Not Used
`Exhibit Number Not Used
`Patent Owner Preliminary Response filed in IPR2014-00438
`Patent Owner Preliminary Response filed in IPR2014-00437
`Paper 7 in Case IPR2014-00438 (decision on institution)
`Paper 7 in Case IPR2014-00437 (decision on institution)
`Declaration of Professor Carl A. Gutwin, Ph.D.
`
`
`
`
`
`
`iii
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`

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`
`
`I.
`
` INTRODUCTION
`
`SkyHawke Technologies, LLC (“SkyHawke” or “Petitioner”) respectfully
`
`requests inter partes review (“IPR”) for claims 6, 15, and 16 of U.S. Patent No.
`
`5,779,566 (“the ‘566 patent,” attached hereto as Ex. 1001) in accordance with 35
`
`U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. Submitted concurrently
`
`herewith is a motion under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) for
`
`joinder of this petition with the instituted Case IPR2014-00438 concerning the
`
`same patent.
`
`The ‘566 patent is directed to a handheld electronic device that is
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`described as being programmed by certain undisclosed “algorithms” to operate
`
`as a scorecard for the game of golf. Ex. 1001 at 7:36-39. Specifically, the ‘566
`
`patent describes replacing the alphanumeric keys on prior art electronic golf
`
`scorecards with a set of tab and scroll keys (id. at 7:8-11) and a method of
`
`presenting the scorecard’s screens to the user in a defined sequence. Id. at 3:51
`
`– 4:24.
`
`Electronic golf scorecards, however, predate the ‘566 patent by at least 15
`
`years. See, e.g., Ex. 1004 at Abstract. Further, as demonstrated by various
`
`references that were not before the examiner, the user interface described by the
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`‘566 patent – wherein the user navigates and enters data in a series of screens by
`
`utilizing entry, tab, and scroll keys – represented nothing more than a routine
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`
`
`1
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`

`

`
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`implementation of well-known and understood user interface design principles
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`and choices. See Ex. 1034 at ¶¶ 15-35.
`
`For example, U.S. Patent No. 5,426,422 to Vanden Heuvel et al.
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`(“Vanden Heuvel”) (attached hereto as Ex. 1006) discloses a handheld
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`electronic device wherein the user enters data in a series of screens by utilizing
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`entry, tab, and scroll keys. See, e.g., Ex. 1006 at 5:61 – 6:19, 8:53 – 9:38.
`
`Similarly, as illustrated by the Ultra Golf game for the Nintendo® Game Boy®
`
`Compact Video Game System and the PGA Tour Golf game for the Super
`
`Nintendo Entertainment System®, the method of navigating and entering data in
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`a series of screens by utilizing entry, tab, and scroll keys was a ubiquitously
`
`well-known and common manner of interacting with electronic devices at the
`
`time the ‘566 patent was filed. Ex. 1010 at pp. 7-11; Ex. 1011 at pp. 3, 5-7.
`
`Moreover, as described in the declaration of Prof. Carl A. Gutwin submitted
`
`herewith, designing an electronic golf scorecard as claimed represented nothing
`
`more than a routine design task to a skilled artisan in view of the prior art. See
`
`Ex. 1034 at ¶¶ 34 and 35.
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`II. MANDATORY NOTICES
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), SkyHawke provides the following
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`mandatory disclosures.
`
`
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`2
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`
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`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that SkyHawke
`
`Technologies, LLC is the real party-in-interest.
`
`B. Related Matters
`1. Related Litigation
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘566 patent is
`
`asserted in co-pending litigation captioned L&H Concepts, LLC v. SkyHawke
`
`Technologies, LLC, No. 3:14-cv-00224-HTW-LRA (S.D. Miss. ). The case was
`
`originally filed in Texas as Case No. 2:13-cv-00199-JRG (E.D. Tex.), but was
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`transferred to Mississippi in February 2014. The litigation remains pending, but
`
`is currently stayed until further action of the district court. The ‘566 patent is
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`the only patent-in-suit. Petitioner was served with the infringement complaint in
`
`the above-captioned action on March 7, 2013.
`
`2. Related Petitions
`Petitions for inter partes review against claims 1-5, 13, and 17 of the ‘566
`
`patent (Case IPR2014-00438) and for claims 8-11, 14, and 18 (Case IPR2014-
`
`00437) were filed by SkyHawke on February 14, 2014. Submitted concurrently
`
`herewith is a motion under 37 C.F.R. § 42.122(b) for joinder of the present
`
`petition with Case IPR2014-00438. The Patent Trial and Appeal Board
`
`(“PTAB”) instituted trial on all previously challenged claims of the ‘566 patent
`
`
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`3
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`

`

`
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`on August 21, 2014. See Case IPR2014-00437 Paper 7 at 20 (attached hereto as
`
`Ex. 1033) and Case IPR2014-00438 Paper 7 at 23 (attached hereto as Ex. 1032).
`
`
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
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`designation of counsel:
`
`Thomas J. Fisher (Reg. No. 44,681)
`Lead counsel:
`Back-up counsel: Scott McKeown (Reg. No. 42,866)
`Christopher Ricciuti (Reg. No. 65,549)
`Alexander Englehart (Reg. No. 62,031)
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should
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`be served on the following:
`
`Address:
`
`Thomas J. Fisher
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`CPDocketFisher@oblon.com
`Email:
`CPDocketMcKeown@oblon.com
`
`CPDocketRicciuti@oblon.com
`
`CPDocketEnglehart@oblon.com
`
`Telephone: (703) 412-6046
`Fax:
`
`(703) 413-2220
`
`
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`4
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`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge the fee required by 37
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`C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account No.
`
`15-0030, as well as any additional fees that might be due in connection with this
`
`Petition.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement
`
`for inter partes review of the ‘566 patent is satisfied.
`
`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘566
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`patent is available for inter partes review, and that Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘566
`
`patent on the grounds identified herein. Although this petition is otherwise time
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`barred under 37 C.F.R. § 42.101(b), SkyHawke has submitted herewith a request
`
`for joinder under 37 C.F.R. § 42.122(b) describing in detail why joinder with
`
`Case IPR2014-00438 is appropriate. The time period set forth in § 42.101(b)
`
`does not apply when a petition for inter partes review is accompanied by a
`
`request for joinder. See 37 C.F.R. § 42.122(b).
`
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`5
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`
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`B. Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 6, 15, and 16 of the ‘566 patent, and that the PTAB
`
`determine the same to be unpatentable.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘566
`
`patent is requested in view of the following references, each of which is prior art
`
`to the ‘566 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`a. International Publication Number WO 92/04080 to Palmer
`
`(“Palmer”) was published March 19, 1992, which is over one year prior to the
`
`earliest filing date claimed by the ‘566 patent (May 4, 1993). Palmer is
`
`therefore available as prior art under pre-AIA 35 U.S.C. § 102(b). Palmer was
`
`not considered during the original prosecution of the ‘566 patent, nor its
`
`subsequent reexamination, and is not cumulative of any prior art considered by
`
`the examiner(s).
`
`b. U.S. Patent No. 5,426,422 to Vanden Heuvel et al. (“Vanden
`
`Heuvel”) issued on June 20, 1995, based on Application Serial No. 881,007,
`
`filed May 8, 1992, which is prior to the earliest filing date claimed by the ‘566
`
`patent (May 4, 1993). Vanden Heuvel is therefore available as prior art under
`
`pre-AIA 35 U.S.C. § 102(e). Vanden Heuvel was not considered during the
`
`
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`6
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`

`
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`original prosecution of the ‘566 patent, nor its subsequent reexamination, and is
`
`not cumulative of any prior art considered by the examiner(s).
`
`c. UK Patent Application No. 2,249,202 to Osamu (“Osamu”) was
`
`published April 29, 1992, which is over one year prior to the earliest filing date
`
`claimed by the ‘566 patent (May 4, 1993). Osamu is therefore available as prior
`
`art under pre-AIA 35 U.S.C. § 102(b). Osamu was not considered during the
`
`original prosecution of the ‘566 patent, nor its subsequent reexamination, and is
`
`not cumulative of any prior art considered by the examiner(s).
`
`The grounds of unpatentability presented in this petition are as follows:
`
`i. Claims 6, 15, and 16 are rendered obvious by Palmer in view of
`
`Vanden Heuvel and further in view of Osamu under 35 U.S.C. § 103.
`
`2.
`
`How the Construed Claims Are Unpatentable under the
`Statutory Ground Identified Above, and Supporting
`Evidence Relied upon to Support the Challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 6, 15,
`
`
`
`and 16 of the ‘566 patent are unpatentable under the statutory ground identified
`
`above, including the identification of where each element of the claim is found
`
`in the prior art, is provided in Section VII, below, in the form of claim charts.
`
`Pursuant to 37 C.F.R. § 42.204(b)(5), the exhibit numbers of the supporting
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`evidence relied upon to support the challenge, and the relevance of the evidence
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`to the challenge raised, including identifying specific portions of the evidence
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`
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`7
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`

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`that support the challenge, are provided in Section VII, below, in the form of
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`claim charts.
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`V.
`
`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Prof. Carl A. Gutwin (Ex.
`
`1034), who offers his testimony with respect to the scope and content of the
`
`prior art and the combinability of the applied references.
`
`B. Summary of the ‘566 Patent
`The ‘566 patent is generally directed to an electronic scorecard for a game,
`
`
`
`such as golf, that utilizes basic and well-known user interface input controls to
`
`claim a user interface for the device. First, and as shown in FIG. 1 (below), the
`
`‘566 patent describes a basic user interface in which: (1) an entry key (key 16)
`
`is used to change the screens that are displayed to the user; (2) tab keys (keys 20
`
`and 21) are used to move between data input fields (element 26) of the screen;
`
`and (3) scroll keys (keys 22 and 23) are used to change or scroll among data
`
`input values available for a given data input field. See, e.g., Ex. 1001 at 2:41-54,
`
`3:37-44, 6:47 – 7:11. In short, the ‘566 patent describes replacing numeric or
`
`alphanumeric character keys with a set of tab and scroll keys (id. at 7:8-11) – a
`
`simple design choice widely employed by skilled artisans well before the
`
`priority date of the ‘566 patent.
`
`
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`8
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`
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`Second, the ‘566 patent describes another basic user interface design
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`principle in which the screens of the electronic device are presented to the user
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`in a predefined sequence or menu structure. For example, the ‘566 patent
`
`describes that a user may first be presented with one or more “pre-game”
`
`screens in which data pertaining to the upcoming golf game is entered into the
`
`device (e.g., number of holes, par and yardage for each hole, and/or golf clubs in
`
`the player’s bag). Id. at 7:45-60, 9:47 – 10:56, FIGS. 3-6. The user may specify
`
`the amount of data that he wishes to keep track of while playing (e.g., the
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`player’s score for each hole, or the player’s score along with information
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`regarding the location and golf club used for each shot). See, e.g., id. at 8:1-10;
`
`10:16-33. Next, the user is presented with one or more “game-interactive”
`
`screens while playing the game of golf, which allow the user to enter and record
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`data values corresponding to the parameters selected in the “pre-game” screen(s)
`
`(e.g., a scorecard for each hole only or a scorecard and screen for entering the
`
`
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`9
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`
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`location and club used for each shot). Id. at 11:40-65. Finally, once the user is
`
`finished with his round of golf, the electronic device may present the user with
`
`one or more “post-game” statistics screens summarizing the user’s performance
`
`during the game. Id. at 5:15-19, 8:55-65, 14:28-44.
`
`C. Prosecution History of the ‘566 Patent
`
`Application No. 08/392,280 (“the ‘280 application”), which matured into
`
`the ‘566 patent, was filed on February 22, 1995, as a continuation-in-part of
`
`Serial No. 08/058,074 (“the ‘074 application”), filed May 4, 1993, now
`
`abandoned.
`
`All claims of the ‘074 application were rejected as anticipated or obvious
`
`in view of U.S. Patent No. 5,245,537 to Barber (“Barber”). Ex. 1002 at pp. 1-4.
`
`Barber describes a golf distance tracking, club selection, and player performance
`
`statistics electronic device. In response to the examiner’s rejections, Applicant
`
`argued that the data selection and entry methodology taught by Barber is
`
`“largely key-dependent rather than screen-dependent as the claimed invention,”
`
`requiring the use of both an alphanumeric keypad and function-specific
`
`keyboard. Id. at pp. 13 and 14 (emphasis in original). Applicant argued that, in
`
`contrast, the ‘074 application’s “simplified data entry using the claimed tab and
`
`scroll keys, coupled with screen-dependent data selection, eliminates the prior
`
`art drawback of being limited to the type and number of keys on a handheld unit.”
`
`
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`10
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`
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`Id. Applicant amended claim 1 of the ‘074 application to specifically recite bi-
`
`directional “tab” and “scroll” keys. Id. at p. 6. Applicant also argued that
`
`Barber did not teach “pre-game screens [that] ‘prompt entry of data defining
`
`parameters of a current or future game to be played.’” Id. at p. 15.
`
`
`
`The examiner maintained all rejections in view of Barber. Id. at pp. 19-24.
`
`In particular, the examiner found that it would have been obvious to utilize
`
`Barber’s cursor as the claimed “tab” and “scroll” keys (id. at p. 20), and that the
`
`display of “pre-game” information screens would have been obvious in view of
`
`Barber as “[a]ny computer implemented game must have this feature in order to
`
`be run as an interactive program.” Id. at p. 23. Applicant again argued, inter
`
`alia, that the “[a]lteration and recordation of various pre-defined data fields is
`
`entirely screen-dependent, with the data alteration, entry, and recordation
`
`functions all being driven by directional key means only,” which is contrasted
`
`with the numeric and single-function keys of Barber. Id. at p. 28 (emphasis in
`
`original). The ‘280 application was subsequently filed, as a continuation-in-part
`
`of the ‘074 application, adding additional disclosure to the specification and new
`
`claims 21 through 38. Id. at pp. 36-45 and 49-51.
`
`
`
`The examiner maintained the rejections in view of Barber, and found that
`
`the recitation of a “generally-writable display” in claim 1, for example, lacked
`
`written description support. Id. at pp. 52-57. Claims 1, 12, 15, 19, 20, 23, and
`
`
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`11
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`
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`33 of the ‘280 application were found allowable if rewritten or amended to
`
`overcome the rejection under 35 U.S.C. § 112, and claims 3, 6-9, 11, 13, 14, 16-
`
`18, 21, 22, 24-32, and 34-38 were found allowable if rewritten in independent
`
`form. Id. at p. 58. Pertinent to the present petition for inter partes review, the
`
`examiner provided the following reasons for allowable subject matter for claims
`
`1, 12, 15, 19, and 20:
`
`Regarding claims 1, 15, and 19, the combination of three keying means
`
`where the first selects a screen of information to display, the second
`
`selects a field on the displayed screen of information through use of tab
`
`feature, while the third selects a value to enter in the selected field on the
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`displayed screen through use of scrolling through (numeric or
`
`alphanumeric, not claimed) data values with other claimed features of the
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`instant claim appears novel and nonobvious over art of record.
`
`Regarding claims 12 and 20, the combination of “screens including
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`screen-dependent data input fields ... to the golf play information ... each
`
`screen” (emphasis added) with other claimed features in claim appears
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`novel and non-obvious over art of record.
`
`Id. at p. 59 (emphasis in original).
`
`
`
`Applicant replaced the term “generally-writable display” with “general
`
`output display,” and argued that “Applicant never intended the original language
`
`
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`12
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`to mean a device that reads handwritten input pressed onto the display itself.”
`
`Id. at p. 81. Applicant also amended each of the independent claims to recite
`
`“the information screens including screen-dependent data input fields for the
`
`associated data,” as recommended by the examiner. Id. at pp. 62 and 82.
`
`
`
`In a subsequent Office Action, the examiner found certain claim language
`
`indefinite under 35 U.S.C. § 112, ¶ 2, and again, rejected claims 1, 3, 6-9, 11-15,
`
`and 17-19 as obvious in view of Barber. Id. at pp. 87 and 88. Specifically, the
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`examiner found that although Barber does not show “pre-game” information
`
`screens:
`
`[i]t would have been obvious to one of ordinary skill in the art at the time
`
`the invention was made to combine a pre-game screen such as an
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`initializing screen as is so well known in gaming and golf industry with
`
`Barber’s method in order to make it easier for record keeping or tallying
`
`purposes by recording in the device for instance the number of players,
`
`player names who will play a round of golf and type of round of golf.
`
`Id. at pp. 88 and 89. Further, the examiner found that tabbing and scrolling data
`
`input methodologies were well-known for “aiding display control and cursor
`
`movement control” and would have been obvious to incorporate with the device
`
`disclosed by Barber. Id. at p. 90. The examiner also noted that the claimed
`
`“data retrieval and input through use of three keying means does not preclude
`
`
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`13
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`
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`use of a qwerty keyboard with functional … keys” and suggested adding the
`
`word “only” prior to “bi-directional.” Id. at p. 92.
`
`
`
`Applicant amended claim 1, for example, to recite one entry key, two bi-
`
`directional tab keys, and two bi-directional scroll keys. Id. at p. 95. Similar
`
`claim amendments were made to each of the independent apparatus claims. Id.
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`at pp. 98 and 102. Applicant also noted that the examiner’s arguments regarding
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`what would have been well-known and obvious in the art, such as the use of
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`Applicants’ claimed key entry means, was unsupported in the record and,
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`therefore, improper. Id. at p. 109.
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`
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`A notice of allowance followed. Id. at pp. 114-116. As indicated in the
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`examiner’s statement of reasons for allowance, the presently challenged claims
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`of the ‘566 patent were deemed patentable over the applied prior art because the
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`same failed to disclose: (1) “three keying means where the first selects a screen
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`of information to display, the second selects a field on the displayed screen of
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`information through use of tab feature, while the third selects a value to enter in
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`the selected field on the displayed screen through use of scrolling through
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`(numeric or alphanumeric, not claimed) data values;” (2) screens including
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`screen-dependent data input fields; and (3) having different levels of data
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`recording detail or recording modes in the game-interactive screen. Id. at p.
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`115.
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`14
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` D. Ex Parte Reexamination of the ‘566 Patent
`On August 9, 2007, a request for ex parte reexamination against claims 1-
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`37 of the ‘566 patent was filed. The Office found substantial new questions of
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`patentability for each challenged claim. Ex. 1003 at pp. 1-15. In a first Office
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`Action dated September 9, 2008, claim 18 was rejected as anticipated by
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`Canadian Patent No. 1,264,494 to Bonito. Id. at pp. 16-34. Applicant argued in
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`response that Bonito failed to disclose a pre-game mode of data entry that
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`provides the user with a choice of at least one of a plurality of game interactive
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`information screens for use during a subsequent game-interactive mode of
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`operation. Id. at p. 36. A notice of intent to issue a reexamination certificate
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`followed. Id. at pp. 42-52.
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`VI. BROADEST REASONABLE CONSTRUCTION
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`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes
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`review shall receive the “broadest reasonable construction in light of the
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`specification of the patent in which [they] appear[].” See also In re Swanson,
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`No. 07-1534 (Fed. Cir. 2008); In re Trans Texas Holding Corp., 498 F.3d 1290,
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`1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
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`1984)). Because the standards of claim interpretation used by the courts in
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`patent litigation are different from the claim interpretation standards used by the
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`Office (including in inter partes review proceedings), any claim interpretations
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`15
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`submitted herein are neither binding upon litigants in any litigation, nor do such
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`claim interpretations correspond to the construction of claims under the legal
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`standards used by the courts. All claim terms not specifically addressed below
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`have been accorded their broadest reasonable interpretation in light of the patent
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`specification, including their plain and ordinary meaning to the extent such a
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`meaning could be determined by a skilled artisan.
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`Claim 6 (based upon its dependency from claim 1) recites means-plus-
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`function limitations that are governed by 35 U.S.C. § 112(f). For each of these
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`limitations, Petitioner believes that there is no structure modifying the claim
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`term “means for.” Thus, Petitioner understands the function of each such
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`limitation to be that which is explicitly recited following the operative words
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`“means for.” Because these § 112 (f) limitations are implemented by a
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`computer, the structure set forth in the ‘566 patent specification corresponding
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`to these claimed functions must include the general algorithms referred to at Ex.
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`1001 col. 7, ll. 36-69, which are not further described. See September 2, 2008
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`USPTO memorandum regarding rejections under 35 U.S.C. § 112, sixth
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`paragraph, at p. 3. As set forth in section VI of its petition for inter partes
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`review in Case IPR2014-00438, Petitioner believes that there is no specific
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`structure disclosed in the ‘566 patent specification corresponding to the claimed
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`functions.
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`16
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`For the purpose of this petition for inter partes review, however,
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`Petitioner adopts the construction set forth by the Board in Case IPR2014-00438
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`for the “means-for” language recited in claim 1 of the ‘566 patent. Specifically,
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`in its order instituting inter partes review against claims 1-5, 13, and 17 of the
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`‘566 patent, the Board determined that claims 1-3, 13, and 17 do not invoke 35
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`U.S.C. § 112, sixth paragraph, because the claims include “structure (including
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`three particular types of keys with particular functions) remov[ing] these
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`limitations … from the ambit of § 112, sixth paragraph.” Ex. 1032 at p. 7. The
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`Board then concluded that “the final paragraph of claim 1 describes a user
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`interface which requires three types of keys, each having the particular function
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`recited—an entry key for selecting a display screen, two bi-directional tab keys
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`for scrolling through entry fields in a display screen, and two bi-directional
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`scroll keys for scrolling through data to input in a display screen.” Id.
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`Petitioner has applied this construction herein.
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`A.
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` “means for selecting non-sequential option screens”
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`Claims 15 and 16 recite the operative language “means for …” to invoke
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`35 U.S.C. § 112(f). The function recited by this § 112(f) feature is “selecting
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`non-sequential option screens.” For computer implemented § 112 (f)
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`limitations, the specification structure corresponding to the claimed function
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`must include a specific algorithm to carry out the function.
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`17
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`For purposes of this petition, however, Petitioner has applied the claim
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`construction set forth by the Board in Case IPR2014-00438 for corresponding
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`limitations found in challenged claims 2 and 3. Specifically, claim 2 recites
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`“wherein … the first key means further includes choice means for non-
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`sequential selection or changing of information screens” and claim 3 recites
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`“wherein the choice means is screen-dependent to provide a customized set of
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`screen-changing options for a displayed information screen.” In analyzing these
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`limitations, the Board determined that although no structure is recited in the
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`claims, “the specification illustrates a single embodiment [for the claimed
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`functions]—a choice key accessing choices menu 18.” Ex. 1032 at p. 7 (citing
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`the ‘566 patent at 43, 11:18). “Claim 3 includes the limitation that the choice
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`means is ‘screen-dependent’ which we interpret as permitting the menu to vary
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`depending upon the screen.” Ex. 1032 at pp. 7-8.
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`Because claims 15 and 16 recite the same function of “selecting non-
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`sequential option screens,” for purposes of this petition, Petitioner has
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`interpreted this language to correspond to a choice key permitting a choices
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`menu to vary depending upon the screen, as set forth by the Board. Id.
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`B. Preambles
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`The preambles of claims 1, 15, and 16 only recite a “purpose or intended
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`use” of the invention and, thus, are not limiting. See, e.g., Marrin v. Griffin, 599
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`18
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`
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`F.3d 1290, 1294 (Fed. Cir. 2010). Contrary to Patent Owner’s contention that
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`the preambles are limiting because the ‘566 patent “invention” is directed to
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`sports like the game of golf, see Ex. 1030 at 4-6, the Board agreed with
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`Petitioner that the preambles are non-limiting, as they “add no structural
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`limitations” to the claims. Ex. 1032 at p. 6.
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`VII. GROUNDS OF UNPATENTABILITY SHOWING THAT
`PETITIONER HAS A REASONABLE LIKELIHOOD OF
`PREVAILING
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`The references addressed below provide the teachings believed by the
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`examiner to be missing from the prior art and render obvious the challenged
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`claims.
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`A. Claims 6, 15, and 16 are rendered obvious by Palmer in view of
`Vanden Heuvel and further in view of Osamu
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`Claim 6 of the ‘566 patent depends from claim 4, which in turn depends
`
`from claim 1. Petitioner provides herein detailed unpatentability arguments for
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`claims 1 and 4, as previously set forth in Case IPR2014-000438. In that Case,
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`the Board determined that there is a reasonable likelihood that Petitioner will
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`prevail on the issue of unpatentability of claim 1 over Palmer and Vanden
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`Heuvel, and claim 4 over Palmer, Vanden Heuvel, and Osamu. Ex. 1032 at pp.
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`8-12 and 15-17.
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`As to claim 1, in the combined system, the golf information screens
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`disclosed by Palmer would be controlled by the key-based, screen-dependent
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`19
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`input mechanism taught by Vanden Heuvel.1 See Ex. 1034 at ¶¶ 56-66. A
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`person of ordinary skill would have combined the teachings of Vande