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`IPR2015-00229 Paper No. 35
`IPR2015-00230 Paper No. 37
`IPR2015-00396 Paper No. 31
`IPR2015-00476 Paper No. 31
`IPR2015-00533 Paper No. 31
`March 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA, LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`IPR2015-00229 (Patent 7,667,692 B2)
`IPR2015-00230 (Patent 7,463,245 B2)
`IPR2015-00396 (Patent 7,218,313 B2)
`IPR2015-00476 (Patent 7,218,313 B2)
`IPR2015-00533 (Patent 7,218,313 B2)
`____________
`
`Held: January 19, 2016
`____________
`
`
`BEFORE: SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`January 19, 2016, commencing at 1:02 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`ERIC A. BURESH, ESQUIRE
`ABRAN KEAN, ESQUIRE
`Erise IP, PA
`6201 College Boulevard
`Suite 300
`Overland Park, Kansas 66211
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`ROBERT J. GILBERTSON, ESQUIRE
`Greene Espel PLLP
`222 South Ninth Street
`Suite 2200
`Minneapolis, Minnesota 55402
`
`and
`
`MICHAEL MAURIEL, ESQUIRE
`Mauriel Kapouytian Woods LLP
`15 West 26th Street
`Seventh Floor
`New York, New York 10010
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` 2
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE MOORE: All right. Please be seated.
`Sorry. I'm having a little technical difficulties here. It sounds
`like the fan on my computer is acting up, so hopefully it will calm
`down in a minute or so or I will figure out if we need to do
`something about it, but I think it's going to settle itself in a minute
`here.
`
`Good morning. This is the oral hearing in IPR's
`2015-229, -230, -396, -476, and -533. Sony Computer
`Entertainment America versus Aplix IP Holdings. And please
`excuse me if I mispronounce that.
`The parties in this hearing will have 90 minutes of
`total time to present their arguments. Petitioner will proceed first
`with its case. Afterwards the Patent Owner will proceed with its
`case, and the Petitioner may reserve time for argument after that.
`Starting with Petitioner, can you state who you
`
`have here.
`
`MR. BURESH: Your Honor, thank you. My name
`is Eric Buresh. I'm lead counsel on behalf of Sony Computer
`Entertainment America. With me is Abe Kean, my co-counsel,
`and a representative from Sony, Mike Edelman.
`JUDGE MOORE: Thank you.
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`MR. MAURIEL: Hi. My name is Mike Mauriel.
`I'm lead counsel for Aplix IP Holdings Corp, and I'm with my
`co-counsel, Robert Gilbertson.
`JUDGE MOORE: Thank you.
`All right. I also want to remind the parties as far as
`referring to demonstrative exhibits and evidence, especially if
`you're going to use the -- I'm not sure if we have the ELMO, but
`if you are going to use the ELMO, please be specific for the
`record on what page number and what part of the record you're on
`in your remarks so that the transcript will be clear and easy to
`follow.
`
`MR. BURESH: Your Honor, if you could give us
`just one moment. We're trying to find the right feed for the slide
`presentation.
`
`JUDGE MOORE: Sure.
`Off the record.
`(A discussion was held off the record.)
`JUDGE MOORE: Back on the record.
`MR. BURESH: I'm approaching with hard copies.
`JUDGE CHUNG: Thanks.
`MR. BURESH: Thank you.
`JUDGE MOORE: Okay. It looks like you're
`having a little bit of trouble here.
`Does it make sense that we start with hard copy?
`We've got everyone local.
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`MR. BURESH: I am perfectly fine with that, Your
`
`Honor.
`
`go here.
`
`the delay.
`
`the Board --
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`JUDGE MOORE: That might be the best way to
`
`MR. BURESH: Absolutely. And my apologies for
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`JUDGE MOORE: No problem.
`MR. BURESH: I'm going to cover, just to orient
`
`JUDGE MOORE: And before you start, would you
`like to reserve time?
`MR. BURESH: Yes, Your Honor.
`We are going to cover in our direct portion all of
`the proceedings. We plan to take about 60 minutes for that and
`reserve approximately 30 minutes for rebuttal.
`To orient the Board, I'm going to be discussing the
`'692 patent proceeding, which is 00229, as well as the '245 patent
`proceeding. My colleague, Mr. Kean, will cover the three
`proceedings related to the '313 patent.
`If I could refer the Board to DX-2, I'm going to
`begin by discussing at a high level the '692 patent. What I've
`provided on DX-2 is the abstract of the '692 patent which
`discusses the basic concepts of that patent. And what we'll see is
`that the patent in the '692 really recognized the simple idea that
`the human hand works in opposing function -- in other words, we
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`have opposable thumbs and fingers -- and that there is a
`biomechanical effect that can be derived from that. And what the
`'692 patent discusses in the abstract is the idea that in an
`electronic device with inputs, it would be benefited by making
`use of that opposable orientation of the thumb and fingers. And
`that is fundamentally the concept of the '692 patent in its broadest
`claims.
`
`Turning to DX-3, we see the primary figures from
`the '692 patent, which is 3a. And then I've also provided 3d on
`Slide DX-3. Figure 3a shows the front face with hard key inputs.
`Figure 3d shows the back face of the hand-held electronic device
`that has soft key or what the patent refers to as delineated active
`areas. And we will see those same concepts of opposition
`between the front face and the back face of the hand-held device
`in the claims of the '692 patent.
`If we look at Exemplary Claim 1, which is
`provided on DX-4, we see we have a first input assembly and the
`first primary limitation. We have a second input assembly. And
`then that third limitation picks up the key concept, "Selectively
`arranging the first input assembly and the second input assembly
`in substantial opposition to each other." That really, for the
`purposes of the '692 patent, was a point of novelty. The problem
`is that that point of novelty was replete in the prior art, and we
`have provided specific examples to demonstrate that.
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`Starting on DX-5, we see the primary reference in
`this proceeding Liebenow. Liebenow Figure 1, which is provided
`on DX-5, provides an example of a hand-held electronic device
`that has hard key inputs on the front face that would be actuated
`by the user's thumbs, and a soft key or emulated key input
`assembly on the back face, which would be actuated by the user's
`fingers in substantial opposition to each other.
`Another figure provided by Liebenow to further
`demonstrate that the input assemblies are in opposition to each
`other is provided in DX-6, which is Figure 3. Figure 3
`provides -- you'll see the thumb on the top surface actuating the
`input assemblies and the fingers on the bottom surface actuating
`the input assemblies. And depicted in Figure 3, the back, or the
`bottom portion in this orientation, of the device has hard key
`inputs, but Liebenow specifically at paragraph 48 provides that
`the back surface input assembly can be either a hard key or an
`emulated key touch pad input assembly.
`Slide DX-7 is provided simply to orient the Board
`to the grounds of rejection that were instituted with respect to the
`'692 patent. We have Liebenow and Armstrong and Liebenow
`and Hedberg as the combinations that will be addressed in this
`proceeding.
`
`I would note that the Patent Owner does not dispute
`on substance the independent -- that Independent Claims 1 and 12
`are satisfied by the prior art. The primary arguments are on the
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`dependent claims from a substantive perspective, and I will
`address those dependent claims next.
`JUDGE MOORE: And you base that statement on
`their lack of argument in the -- the Patent Owner response there's
`no agreement between the parties as to the independent claims; is
`that correct?
`MR. BURESH: That's correct. Under the Board's
`precedent as the briefing confines the issues of the case, since
`there is no argument in the Patent Owner's response as to the
`substance of the independent claims, those arguments are waived.
`With respect to Claim 3, however, there are
`arguments. Claim 3 is dependent from Claim 1. And I'm on
`DX-8 now. Claim 3 speaks of the second input assembly, so to
`orient the Board, we are talking about the back surface of the
`hand-held electronic device. And the back surface of the
`electronic device needs "to include a sensor pad comprising a
`selectively configurable sensing surface that provides more than
`one delineated active area based on the selected application."
`So we need a touch pad on the back surface, and
`the touch pad needs to have delineated active areas that can act as
`inputs for the user when actuated by the fingers, and it needs to
`be based on -- those delineated active areas need to be based on
`the selected application.
`Now, from the petition through all the briefing,
`Petitioner has taken the position that "based on the selected
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`application" should be given its plain and ordinary meaning. The
`Board did not construe this term in its institution decision, and we
`continue to contend that it should be given its plain and ordinary
`meaning.
`
`Patent Owner also did not offer a construction, but
`has been implicitly construing these claim terms through its
`constraining arguments applying to prior art.
`Before we get to Patent Owner's arguments,
`however, I want to refresh the Board's recollection on the
`teachings from Liebenow that satisfy this claim limitation. So
`turning to DX-9 -- and, again, we've seen the figures in Liebenow
`that show the back surface touch panel. Referring to those
`figures, the specification in Liebenow or the written disclosure
`provided on DX-9 notes that the "areas of the touch sensitive
`panel may be defined to provide a variety of key configurations
`such as, for example, configurations that are application specific
`or are defined by a user."
`So we see there the concept in Liebenow that the
`active areas on the back surface touch pad are application
`specific, so we have based on the application explicitly taught in
`Liebenow.
`
`We also see on DX-10, which is referring to
`paragraph 69 of Liebenow, that the key configurations of the
`emulated keypad may, for example, utilize keys having functions
`that are unique to the application. So again we see that the inputs
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`that can be provided by the emulated touch pad on the back of
`Liebenow can provide application specific functions.
`And we see that in visual terms on DX-11. DX-11
`provides Figure 15 and Figure 16 from Liebenow where we see
`two exemplary embodiments that provide for a word processing
`application and a calculator application. And you'll note that the
`delineated active areas in the back of Liebenow are distinct
`between the two applications and they provide for differing inputs
`based on the application.
`So whether we're looking at the inputs that are
`being mapped which are unique and targeted to the application or
`the orientation of the delineated active areas, both are designed
`and based on the specific applications that they are serving.
`Slide DX-12, I mentioned the Patent Owner
`disputes this limitation. In DX-12 we see the Patent Owner's
`response, and it focuses almost wholly on the disclosure in the
`'692 patent at Column 9 starting at lines 24 and following. In that
`section the '692 patent states that "the pressure sensor pad 354
`may be configured in software to represent one or more
`delineated active areas corresponding to different programmable
`functions depending on the application."
`Now, Patent Owner's expert has stated that -- and
`this is at the bottom of Slide DX-12 -- "one skilled in the art
`would understand that 'in software'" -- that's referring to the
`portion -- the statement in the specification that I just noted -- "'in
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`software' in the context of the rest of the '692 specification means
`that the delineations themselves are defined, i.e., drawn, at the
`application level."
`So what Patent Owner is essentially contending is
`that the claim language we just looked at, based on the
`application, requires that the application itself at a code level
`draws its own delineated active areas and that selection of a
`predefined delineated active area, such as a keypad for a word
`processing system or a calculator input for a calculator
`application, would not suffice. Those are preprogrammed
`delineated active areas and, therefore, they don't count to satisfy
`this claim limitation.
`The claim limitation nowhere has these limitations.
`There is nothing on the face of the claim to suggest that the
`delineations must be drawn at the application level. That is
`certainly an amendment that could have been added in this
`proceeding or attempted in this proceeding, but it is not an
`amendment that the Patent Owner has been willing to make and it
`does not find any anchor in the claim limitations itself.
`When we talked to Patent Owner's expert, and
`specifically Dr. MacLean, about this issue, she agreed with us.
`She understood that the claims could include the drawing of an
`application specific delineated active area by the application
`itself. She also understood that an application could select a
`delineated active area and that that would also satisfy the claim.
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`If we look at Slide DX-13, these are two sets of
`questions and answers from Dr. MacLean. First, the first box is
`directed to whether the application could select some type of
`keyboard that already existed in the operating system. And her
`answer is -- her answer is: "I think this claim language doesn't
`limit it to that, but that is within the space of what it can do." In
`other words, it would be within the claim.
`The second box on DX-13, we were asking
`questions about uniqueness. Does the input assembly on the back
`surface, the delineated active areas, need to be unique? And her
`answer: "My reading of Claim 3 is it's broad enough to cover
`both unique and non-unique delineations just reading Claim 3."
`DX-14 continues with the transcript from Dr.
`
`McLean:
`
`"Would you agree that Claim 3 does not require a
`custom layout on a key-by-key basis?"
`And her answer is: "It does not require that." It
`could cover it, but it would not require that, speaking of the
`claims.
`
`The next question --
`JUDGE MOORE: Can I ask you a question here?
`MR. BURESH: Yes.
`JUDGE MOORE: The claim language here
`"selectively configureable sensing surface," does that have
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`anything to do with whether or not software -- the software needs
`to create a delineated area for the selected application?
`MR. BURESH: The idea that the delineated active
`areas are selectively configurable doesn't specify in any way
`whether it needs to be drawn by the application or whether the
`delineated active areas can be selected from an operating system
`provided delineated active areas. That distinction is not drawn
`out in any way, shape, or form by the fact that it needs to be a
`selectively configurable delineated active area.
`If we look at Liebenow, you'll see that they are
`selectively configurable. You have one set of delineated active
`areas for a word processing application. You have another set of
`delineated active areas for a calculator application. Those are
`selectively configurable based on the application.
`And Liebenow goes further to say outside of those
`two examples that any delineated active area can be application
`specific. In other words, whatever delineated active area you
`want for your application on Liebenow, you can provide that.
`That's the very nature of a emulated keypad. And if you look at
`the benefits described in Liebenow for a delineated active area,
`it's exactly that; they're configurable.
`JUDGE MEDLEY: When is it configurable? Is it
`something that the user does? Or is it something that's static?
`Like, are those two different embodiments, the two figures you
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`showed us? Or is that something you can swap between like
`the --
`
`MR. BURESH: You would --
`JUDGE MEDLEY: -- calculator mode and the --
`MR. BURESH: Yeah, you can.
`JUDGE MEDLEY: Okay.
`MR. BURESH: And in those specific examples,
`those applications are loaded on Liebenow, so if you engage the
`word processing application on Liebenow, it will configure the
`keypad to work for that word processing embodiment. If you
`turn on the calculator embodiment in Liebenow, it would give
`you a different selectively configurable delineated active area.
`JUDGE MEDLEY: So that's selected by the user?
`MR. BURESH: The application would be selected
`by the user. The delineated active area would result from the
`selection of the application.
`JUDGE MEDLEY: Thank you.
`MR. BURESH: So turning back to DX-14, just to
`finalize that, there's this concept of the QWERTY keypad and/or
`the word processing keypad in Liebenow isn't unconventional; it's
`a standard keypad, and so is a calculator keypad. So we ask the
`question at the bottom of DX-14: "Is it your opinion that Claim 3
`does not require unconventional keyboards or unconventional
`delineated active areas?"
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
`
`
`And Dr. MacLean, Patent Owner's expert, said: "I
`believe it does not require unconventional."
`So the idea that we must have the application itself
`drawing delineated active areas has no anchor in the claims and
`when analyzed further by Patent Owner's expert, it is not
`supported even by the testimony of one skilled in the art.
`DX-15, to wrap this issue up, Patent Owner
`characterizes Liebenow as follows. And this is from their
`response at page 20. "Liebenow teaches different emulated
`keyboards provided by the system and selected by an
`application."
`If you look at the claim language, "selectively
`configurable based on a selected application," that's all the claim
`language requires -- is that the keyboards be provided by the
`system and selected by the application.
`Based upon the Patent Owner's own
`characterization of Liebenow, the prior art teaches the claim
`limitation.
`
`I'm going to move on now to Claim 11, unless there
`are further questions on that issue.
`Moving on, DX-16 provides Claim 11. This
`dependent claim also depends from Claim 1 and specifies that the
`device or system further includes at least one of the gyroscope or
`an accelerometer.
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
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`
`Now, Hedberg -- and I provided the abstract on the
`top of DX-17 -- specifically provides in the third line down "a
`gyroscope (6) is incorporated in said display device." Now,
`Patent Owner agrees with us on this particular claim limitation
`that Hedberg teaches an accelerometer, so we're not really taking
`about the gyroscope here. It's agreed that it teaches an
`accelerometer.
`With this -- excuse me. With this particular claim,
`Patent Owner is contending that Hedberg doesn't -- there is not a
`motivation to combine Hedberg and Liebenow and that Hedberg
`is not analogous art. So I'm going to focus for the next couple of
`minutes on those two issues.
`First, with respect to the motivation to combine, to
`the second box on Slide DX-17 which was taken from Column 3,
`lines 6 through 11, of Hedberg, we see Hedberg describing one of
`the benefits of having these inertial orientation devices within the
`hand-held device, which is that you can provide either a
`landscape or a portrait presentation on the display, so that's
`something we're all familiar with. You can move your hand-held
`electronic device and based upon how you're holding it, the
`screen will orient to facilitate the display of the information.
`Hedberg described that as a benefit of having these inertial
`sensors.
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`Our expert, Petitioner's expert, Dr. Welch, has
`explained that a "person of ordinary skill in the art would have
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
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`appreciated the inertial sensors taught by Hedberg could enable
`the information appliance of Liebenow to detect whether or not it
`was being held in a portrait or landscape position." Taking that
`express teaching from Hedberg and applying it to Liebenow, we
`have the motivation to combine.
`Turning next to the field of endeavor, and I'm on
`DX-18 now -- I'm sorry -- to the analogous art argument which
`is -- one of the two ways to show analogous art, as the Board is
`well familiar, is to demonstrate that the prior art and the
`challenged patent are in the same field of endeavor. We have --
`when you do the field of endeavor test, you go to the patent in
`question, here the '692 patent; you read it as a whole, the claims
`and the specification; and you derive -- and the Federal Circuit
`has instructed us to derive broadly -- the field of endeavor that is
`provided by the '692 patent here. Doing that, we provide one cite.
`We have provided others in our briefing.
`But if you look at the general description of the art
`that's provided in the '692 patent, it's cited here on DX-18. And
`we see it describes it generally as a human interface and an input
`system, so that's what we're talking about. A "human interface
`and input systems for electronic devices, particularly hand-held
`electronic devices, such as cell phones, PDAs, pocket personal
`computers, smart phones, hand-held game devices, bar-code
`readers, remote controls, and other similar input devices having a
`keypad or one or more input elements."
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
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`From that and other similar descriptions in the '692,
`we defined in the petition and throughout the briefing that the
`field of endeavor of the '692 patent is at least -- would at least
`include hand-held electronic devices with one or more input
`elements.
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`JUDGE MOORE: Does Hedberg teach anything
`about inputs? Does it teach about buttons or inputs specifically?
`MR. BURESH: It absolutely does. Now, that is
`one of the arguments that has been raised by the Patent Owner, is
`that Hedberg is predominantly a display device, focused -- the
`disclosure is focused on how to display information.
`But if you look at Hedberg and specifically page 3
`of Hedberg, it further states that the display device includes a data
`input device and speaks to that disclosure as well. It is both. It is
`a display device and it is an input device. But to satisfy the field
`of endeavor test, all we really need is that Hedberg is a hand-held
`device that provides the user the opportunity to input, and
`Hedberg satisfies that test in spades.
`JUDGE MOORE: Now, but Hedberg does not tie
`the change from landscape to portrait to any key? That's not --
`certainly the change is enabled by the gyroscope, right? But is
`there a key involved to implement that? I believe there is not. So
`it's just the movement of the device would cause the change in the
`screen, but that wouldn't necessarily involve the keys? Do you
`see where I'm going with this?
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
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`MR. BURESH: Well, I totally agree with that.
`JUDGE MOORE: Right.
`MR. BURESH: Hedberg, the orientation of the
`screen, be it portrait or landscape, is driven by an inertial sensor,
`a gyroscope or an accelerometer. But let's be very careful here
`because Claim 11 simply requires that the system include at least
`one of a gyroscope or accelerometer. That's it. Hedberg has both
`a gyroscope and an accelerometer. It satisfies the claim
`limitation.
`
`The argument that Patent Owner is raising is: Is
`Hedberg analogous art or not?
`And Patent Owner hasn't even defined the field of
`endeavor of the '692 patent. Review the briefing. There's not a
`single time where the Patent Owner says, Here is the field of
`endeavor of the '692 patent.
`We are the only ones that have done that. We are
`the only ones that have offered a definition in order to satisfy that
`the field of endeavor test is satisfied. And the field of endeavor
`being a handhold electronic device with inputs.
`We're asking a different question; not whether the
`inputs are used to function as a gyroscope. They're not. We're
`asking the question of whether one skilled in the art would look
`to Hedberg to gain some of the benefits of Hedberg when looking
`at the Liebenow system. That's the analogous/non-analogous art
`inquiry. And one of skill would because Hedberg is a hand-held
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
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`electronic device that provides for inputs. And so the idea out of
`Hedberg that you would include a gyroscope in there, which isn't
`specifically disclosed in Liebenow, comport between the two.
`That's the function of the analogous art test and it's fully satisfied
`here.
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`JUDGE MOORE: Thank you.
`JUDGE CHUNG: Counselor, it's my
`understanding, at least in the '313 patent, that Patent Owner is
`defining the field as displaying on an electronic device a
`complete or determined part of the screen image?
`MR. BURESH: That's a field of endeavor?
`JUDGE CHUNG: Or they say that that's the
`field -- or Hedberg limits the scope of its field to a rotatory
`particular scenario for displaying on an electronic device a
`complete or indeterminate part of a screen image.
`MR. BURESH: Yes. And watch what's happening
`here, okay, because here's the source of confusion there. And it's
`the confusion that is -- has been advanced by the briefing of the
`Patent Owner. There are two inquiries for analogous art.
`The first inquiry is whether the field of endeavor is
`the same. If it is, you stop; the analysis is done, analogous art
`inquiry is satisfied.
`If it is not, you then go to a second question and
`say: Is the prior art reasonably pertinent to a particular problem
`being solved by the challenged patent, here the '692 patent. And
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`IPR2015-00229, Patent 7,667,692B2; IPR2015-00230, Patent 7,463,245 B2;
`IPR2015-00396, Patent 7,218,313B2;IPR2015-00476, Patent 7,218,313B2;
`IPR2015-00533, Patent 7,218,313B2
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`that is where the arguments that Patent Owner is advancing have
`focused, but they meld the two together. Okay?
`Now, the point of what Patent Owner is trying to
`say is that Hedberg principally talks about display. How to
`display information, that's the principal thrust of Hedberg. Okay?
`And I don't disagree with that. That is the principal thrust.
`So the particular problem that Hedberg is
`attempting to solve might be different than the particular problem
`that the '692 patent was attempting to solve. It doesn't matter.
`That is a separate inquiry that does not matter, because if the field
`of endeavor is the same, the analogous art inquiry is satisfied. So
`you need to be careful to separate those two.
`And when the Patent Owner is talking about, Hey,
`the main thrust of what Hedberg was trying to get across was how
`to display, that goes to the problem that Hedberg was trying to
`solve. But that's a very different issue than whether they are
`within the same field of endeavor, and those need to be kept
`separate.
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`Have I answered your question, Your Honor?
`JUDGE CHUNG: Yes.
`MR. BURESH: That is the last issue I was going
`to talk about from the '692 proceeding in our opening. If there
`are further questions on that proceeding, I am happy to answer
`them now or will proceed with the '245 proceeding.
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