Trials@uspto.gov Paper 36
`571-272-7822
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`Date Entered: May 23, 2016
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`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.
`____________
`
`Case IPR2015-00229
`Patent 7,667,692 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1–3, 5–13, and 15–20
`of U.S. Patent No. 7,667,692 B2 are unpatentable.
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`A. Procedural History
`Petitioner, Sony Computer Entertainment America LLC, filed a
`Petition requesting an inter partes review of claims 1–3, 5–13, and 15–20 of
`U.S. Patent No. 7,667,692 B2 (Ex. 1001, “the ’692 patent”). Paper 2
`(“Pet.”). Patent Owner, Aplix Holdings Corporation, filed a Preliminary
`Response. Paper 14 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, on May 29, 2015, we instituted an inter partes
`review of claims 1–3, 5–13, and 15–20, pursuant to 35 U.S.C. § 314. Paper
`15 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 18 (“PO Resp.”)) and Petitioner filed a Reply (Paper 24
`(“Pet. Reply”)).
` Patent Owner filed a Motion for Observations (Paper 29) and
`Petitioner filed a Response to the Observations (Paper 33).
`An oral hearing was held on January 19, 2016, and a transcript of the
`hearing is included in the record (Paper 35 (“Tr.”)).
`B. Related Proceedings
`The ’692 patent is involved in the following lawsuit: Aplix IP
`Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
`(MLW) (D. Mass.). Pet. 59.
`C. The ’692 Patent
`The ’692 patent relates to hand-held electronic devices, such as cell
`phones, personal digital assistants (“PDAs”), pocket personal computers,
`smart phones, hand-held game devices, bar-code readers, and remote
`controls having a keypad or one or more input elements. Ex. 1001, 1:15–21.
`The hand-held device includes, on one surface, one or more software
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`configurable input elements that can be manipulated by a user’s thumb(s) or
`stylus, and on the other surface, one or more software configurable selection
`elements that can be manipulated by a user’s finger(s). Id. at Abstract.
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 12 are the only independent
`claims. Claims 2, 3, 5–11, and 20 depend either directly or indirectly from
`claim 1 and claims 13, and 15–19 depend either directly or indirectly from
`claim 12.
`Claim 1, reproduced below, is illustrative.
`1. A method for configuring a human interface and input system
`for use with a host hand-held electronic device configured to run
`applications, wherein at least one of the applications is associated
`with multiple input functions, the method comprising:
`selectively disposing on a first surface of the system a first
`input assembly having input elements configured to receive input
`from a human user through manipulation of the input elements,
`wherein at least one of the input elements of the first input
`assembly is further configured to map to one or more of the input
`functions associated with a selected one of the applications;
`disposing on a second surface a second input assembly
`having one or more input elements configured to be manipulated
`by one or more of the human user's fingers, wherein at least one
`of the input elements of the second input assembly is further
`configured to selectively map to one or more of the input
`functions associated with the selected application; and
`selectively arranging the first input assembly and the
`second input assembly in substantial opposition to each other.
`Ex. 1001, 15:33–55.
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`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 1–3, 5–13, and 15–20
`on the following grounds:
`
`
`
`Claims
`
`Basis
`
`References
`
`1–3 and 5–10
`
`§ 103(a)
`
`Liebenow1 and Armstrong2
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`11–13 and 15–20
`
`
`§ 103(a)
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`Liebenow and Hedberg3
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`II. ANALYSIS
`A. Level of Skill of Person in the Art
`We find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`B. Claim Interpretation
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). Consistent with the broadest reasonable construction,
`claim terms are presumed to have their ordinary and customary meaning as
`understood by a person of ordinary skill in the art in the context of the entire
`
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`1 US 2002/0118175 A1 (Aug. 29, 2002) (Ex. 1003).
`2 US 6,469,691 B1 (Oct. 22, 2002) (Ex. 1004).
`3 WO 99/18495 (Apr. 15, 1999) (Ex. 1005).
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`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Also, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“limitations are not to be read into the claims from the
`specification”). However, an inventor may provide a meaning for a term
`that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes a construction for the claim term “delineated
`active area.” Pet. 7–8, 22. In our Decision to Institute, we determined that it
`was not necessary to construe “delineated active area” (claims 3, 5, and 13).
`Dec. 5. Neither party has indicated that our determination in that regard
`was improper and we do not perceive any reason or evidence that now
`compels any deviation from our initial determination. Additionally, no other
`terms need to be construed explicitly for the purpose of this Decision.
`C. Obviousness Over Liebenow and Armstrong
`Petitioner contends that claims 1–3 and 5–10 are unpatentable under
`35 U.S.C. § 103 based on Liebenow and Armstrong. Pet. 27. To support its
`contentions, Petitioner provides a detailed showing mapping limitations of
`claims 1–3 and 5–10 to structures described by Liebenow and Armstrong.
`Pet. 10–30. Petitioner also relies upon the Declaration of Dr. Gregory F.
`Welch (Ex. 1008) to support its position. Patent Owner only makes
`substantive arguments specific to claims 3 and 5.
`Liebenow describes an electronic hand-held information appliance
`having a display disposed on a first surface and an input device disposed on
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`a second surface opposed to the first surface for inputting information.
`Ex. 1003, Abstract. Figure 1 of Liebenow is reproduced below.
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`As shown in Figure 1 of Liebenow, digital information appliance 100
`is sized and shaped to be held by a user in both hands. Housing 102 includes
`front surface 104 and back surface. Id. ¶ 25. One or more function keys
`such as 150, 152, and 154 may be mounted on front surface 104. Display
`116 may be a touch-screen for touch or pen input of information and data.
`Id. ¶¶ 26, 33. Figure 5 of Liebenow is reproduced below.
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`As shown in Figure 5, back surface may be comprised of one or more
`touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
`defined as keys of a keyboard (emulated as an electromechanical keyboard
`seen in Figure 2) so that a user touching the panel within such an area would
`accomplish actuation of a key. Id. In particular, panel 140 may be divided
`into left and right key ranges 142 and 144, such that fingers of a user’s left
`and right hands may be positioned over the touch sensitive panel to be in
`position for typing. Various key configurations may be defined as desired
`by the user or as required by the applications executed by the digital
`information appliance. Id.
`
`Armstrong teaches a handheld electronic device, such as a
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`PDA, with a display and a number of input elements for accepting user
`inputs. Ex. 1004, 2:5–15, 6:4–16.
`Claim 14
`Claim 1 requires configuring a human interface and input system for
`use with a host hand-held electronic device configured to run applications,
`wherein at least one of the applications is associated with multiple input
`functions. Ex. 1001, 15:34–37. For these limitations, Petitioner contends
`that Liebenow discloses a hand-held device (Liebenow appliance 100)
`configured to process an application (Liebenow word processing
`application) having two or more functions (“Space Bar,” “Ctrl,” “Alt,” and
`“Shift” functions). Pet. 10–12 (citing Ex. 1003 ¶¶ 25, 34, 36, 44, 48, 56, 60,
`66, 69, Figs. 2, 3, 8, 9, 12, 13, 15). We are persuaded by Petitioner’s
`showing, which we adopt as our own, that Liebenow discloses configuring a
`human interface and input system for use with a host hand-held electronic
`device configured to run applications, wherein at least one of the
`applications is associated with multiple input functions.
`
`
`4 Patent Owner argues that we should not rely on Petitioner’s anticipation
`arguments to evaluate obviousness, but that we should observe that no
`evidence has been presented about how any proposed combination of prior
`art references renders obvious claims 1–3, 5, 7–10, 12, 13, 15–18, and
`20. PO Resp. 3–5. We decline to do so. Although Petitioner alleges these
`claims are unpatentable as obvious, yet appears to present a case of
`anticipation, we determine that such a presentation is not a basis for
`dismissing the petition. It is axiomatic patent law that a disclosure that
`anticipates under 35 U.S.C. § 102 also may render the claim unpatentable
`under 35 U.S.C. § 103, because anticipation is the epitome of obviousness.
`See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled
`that ‘anticipation is the epitome of obviousness.’” (quoting Connell v. Sears,
`Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983))).
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`Petitioner also contends that Liebenow describes a first surface of a
`first input assembly (front surface 104 seen above) having input elements
`(e.g., 146, 148, 150, etc.) wherein at least one of the input elements of the
`first input assembly is further configured to map to one or more of the input
`functions (“Space Bar,” “Ctrl,” “Alt,” and “Shift” functions) associated with
`a selected one of the applications (word processing application) as recited
`per claim 1. Pet. 12–14. We are persuaded by Petitioner’s showing, which
`we adopt as our own, that Liebenow describes selectively disposing on a
`first surface of the system a first input assembly having input elements
`configured to receive input from a human user through manipulation of the
`input elements, wherein at least one of the input elements of the first input
`assembly is further configured to map to one or more of the input functions
`associated with a selected one of the applications.
`Petitioner further contends with respect to claim 1 that Liebenow
`discloses a second surface of a second input assembly (Liebenow back
`surface 106) having one or more input elements configured to be
`manipulated by one or more of the human user’s fingers (back-surface input
`device 130) wherein at least one of the input elements of the second input
`assembly (touch sensitive panels 140) is further configured to map
`selectively to one or more of the input functions (Fig. 3 input of keys 132
`and 134) associated with the selected application (word processing
`application). Pet. 14–18. We are persuaded by Petitioner’s showing, which
`we adopt as our own, that Liebenow describes disposing on a second surface
`a second input assembly having one or more input elements configured to be
`manipulated by one or more of the human user’s fingers, wherein at least
`one of the input elements of the second input assembly is further configured
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`to map selectively to one or more of the input functions associated with the
`selected application.
`Petitioner further contends with respect to claim 1 that Liebenow
`discloses arranging selectively the first input assembly and the second input
`assembly in substantial opposition to each other (front surface 104 opposed
`to Liebenow back surface 106). Pet. 18–19. Based on the record before us,
`Petitioner has shown by a preponderance of the evidence that Liebenow
`describes arranging selectively the first input assembly and the second input
`assembly in substantial opposition to each other.
`Claims 2 and 7–10
`For claims 2, and 7–10 each of which depends directly from claim 1,
`Petitioner relies on Liebenow to meet the additional limitations of those
`claims. Pet. 28–29, 30. We agree with Petitioner’s showing, which we
`adopt as our own, that Liebenow discloses the additional limitations of
`claims 2, and 7–10. Patent Owner does not argue these claims separately.
`PO Resp. 15–25.
`Claims 3 and 5
`Claim 3 depends directly from claim 1 and includes “selectively
`disposing the second input assembly to include at least one sensor pad
`comprising a selectively configurable sensing surface that provides more
`than one delineated active area based on the selected application.” Ex. 1001,
`15:61–66. Claim 5, which depends from dependent claim 3 further includes
`“selectively arranging the first delineated active area and the second
`delineated active area based on the user’s hand.” Id. at 16:3–5. Petitioner
`contends with respect to claims 3 and 5 that Liebenow discloses disposing
`selectively the second input assembly to include at least one sensor pad
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`(touch sensor 140) comprising a selectively configurable sensing surface
`(variety of key configurations, Ex. 1003 ¶ 48) that provides more than one
`delineated active area (a box, circle, etc. displayed over the key
`representation, Ex. 1003, ¶ 66) based on the selected application. Pet. 20–
`23.
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`Patent Owner disagrees that Liebenow discloses selectively
`configurable sensing surface that provides more than one delineated active
`area based on the selected application as required by claim 3. PO Resp. 16–
`20. In particular, Patent Owner argues that one skilled in the art would not
`have considered Liebenow to provide more than one delineated active area
`based on a selected application because the function of such keys are defined
`at the device or operating system level, and not at the application level. PO
`Resp. 18. We have considered the testimony to which we are directed in
`that regard. PO Resp. 18; Ex. 2003 ¶¶ 59–61. Dr. MacLean’s testimony,
`however, is based on her “view” that the claim language indicates that
`mapping is specified at the level of the application and not at the device or
`operating system level, resulting in different applications having different
`mappings, because, in part, of the use of the word “provides” rather than the
`word “selects.” Ex. 2003 ¶¶ 57–58. However, neither Patent Owner nor Dr.
`MacLean explains sufficiently why we should construe claim 3 or claim 5
`that way. In particular, there is nothing in claim 3 or claim 5 that suggests
`how the mapping is specified, much less that the mapping is specified at the
`level of the application and not at the device or operating system level
`resulting in different applications having different mappings as asserted.
`The argument, and Dr. MacLean’s testimony in support of the argument, are
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`not commensurate in scope with the language of claims 3 and 5, and in any
`event are conclusory, not supported by record evidence.
`For example, Patent Owner has not directed us to where in the ’692
`patent the language of claim 3 or claim 5 requires us to read into either claim
`that mapping is specified at the level of the application and not at the device
`or operating system level. The portion of the Specification of the ’692
`patent to which the parties direct our attention (PO Resp. 19; Pet. Reply 14)
`describes that the mapping of input elements to particular input functions for
`a given software application of “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.” Ex. 1001, 9:24–27 (emphasis added). We disagree with Patent
`Owner that this passage would have indicated to a person of ordinary skill in
`the art that the selected application must be customized at the application
`level. The language “may” recited in the Specification of the ’692 patent
`(id.) is not a special definition; rather, it is permissive such that the pressure
`sensor pad “may be configured” in software. A person of ordinary skill in
`the art would have understood that the functionality of the selected
`application may be programmed at the application level or when the hand-
`held device is manufactured, for example, at the device or operating system
`level. In any event, as noted above, the claim language does not include any
`specificity with respect to when or how the device is customized. Based on
`the record before us, Petitioner has shown by a preponderance of the
`evidence that Liebenow describes a first input element mapped to at least a
`first function of the selected application.
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`Claim 6
`Petitioner relies on Armstrong for its description of positioning an
`input element with a “resilient dome cap(s) for providing tactile feedback to
`the finger depressing the depressible surface” on a hand-held electronic
`device. Pet. 28; Ex. 1004, 6:10–14, 9:11–15. Specifically, Petitioner relies
`on Armstrong’s input elements that provide tactile feedback to meet the
`limitation of claim 6 to “a palpable detent with at least one input element . . .
`so as to provide tactile feedback when manipulated by the human user.” Pet.
`28–29. Petitioner concludes that one of ordinary skill in the art would have
`recognized that the hand-held device of Liebenow’s input elements could be
`replaced with input elements that provide tactile feedback, like Armstrong’s
`input elements, as a simple substitution of one known element for another
`known element. Pet. 28–29; Ex. 1008 ¶¶ 39–42. Based on the record before
`us, Petitioner has shown by a preponderance of the evidence that the
`combination of Liebenow and Armstrong describe a palpable detent with at
`least one input element of the first input assembly or the second input
`assembly so as to provide tactile feedback when manipulated by the human
`use.
`
`D. Obviousness Over Liebenow and Hedberg
`Petitioner contends that claims 11–13, and 15–20 are unpatentable
`under 35 U.S.C. § 103 based on Liebenow and Hedberg. Pet. 30. To
`support its contentions, Petitioner provides a detailed showing mapping
`limitations of claims 11–13, and 15–20 to structures described by Liebenow
`and Hedberg. Id. at 26–27, 30–32. Petitioner also relies upon the
`Declaration of Dr. Welch (Ex. 1008) to support its position.
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`Hedberg describes a hand-held display device that includes control
`buttons 3 on the display connected to control circuits and a gyroscope 6
`incorporated in the display device and connected to the control circuits.
`Ex. 1005, Abstract. The display device is responsive to movements in the
`space for displaying an image in different magnification and/or in different
`parts. Id. Hedberg describes that an equilibrium of force accelerometer may
`be used in place of the gyroscope. Id. at 3:26–32.
`Each of claims 11 and 20 depends directly from claim 1. Each of
`claims 13 and 15–19 depends directly from independent claim 12.
`Analogous Art
`We first address whether Hedberg is analogous art. Patent Owner
`argues that Hedberg is not analogous art because it is neither in the same
`field of endeavor as the ’692 patent nor reasonably pertinent to the particular
`problem addressed by the ’692 inventors. PO Resp. 6–12. We have
`considered Patent Owner’s arguments, but do not find them persuasive.
`The test for determining whether a prior art reference constitutes
`analogous art to the claimed invention is: (1) whether the prior art is from
`the same field of endeavor, regardless of the problem addressed, or (2) if the
`reference is not within the field of the inventor’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which
`the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004).
`Patent Owner conflates the two prong analogous art test. In defining
`the field of invention of the ’692 patent, Patent Owner looks to the problems
`solved by the inventors and argues that the field of endeavor of the ’692
`patent is ergonomic and versatile data input on a hand-held device. PO
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`Resp. 12–15. Such a showing is insufficient to establish the field of
`endeavor.
`In determining the field of endeavor, we look to the ’692 patent’s
`written description and claims, including the structure and function of the
`invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
`defining the field of invention, and in determining the relevance of Hedberg
`to the obviousness inquiry, here a broad approach should be taken. Pet.
`Reply 6–7. Indeed, the Supreme Court provided guidance in determining
`the applicability of a reference’s teachings in an obviousness inquiry. In
`KSR Int’l Co. v. Teleflex Inc., the Court explained that if a feature has been
`used to improve one device, and a person of ordinary skill in the art would
`have recognized that it would improve a similar device in that field or
`another, implementing that feature on the similar device is likely obvious.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
`Here, the appropriate scope of the field of endeavor is hand-held
`devices with one or more input elements. Ex. 1001, 1:13–19, claim 12.
`Patent Owner characterizes Hedberg as being in the field of viewing or
`displaying systems. PO Resp. 12–14. But in arriving at that description,
`Patent Owner too narrowly characterizes the Hedberg invention. Hedberg is
`within the field of endeavor because it describes hand-held electronic
`devices, with one or more input elements. Ex. 1005, Title, 6:34–7:7, 7:15–
`20, Fig. 5.
`Because we find that Hedberg is within the same field of endeavor as
`the claimed invention, we need not consider Patent Owner’s arguments
`regarding whether Hedberg is reasonably pertinent to the particular problem
`with which the inventors are involved. PO Resp. 14–15.
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`Claim 11 and 19
`Claims 11 and 19 recite that the hand-held device includes an
`accelerometer or gyroscope. Petitioner relies on Hedberg for its description
`of a gyroscope or accelerometer included in a hand-held device. Pet. 30–32.
`Petitioner concludes that one of ordinary skill in the art would have
`recognized that the addition of a gyroscope and/or an accelerometer would
`have increased the ability to control the Liebenow hand-held device. Pet.
`31; Ex. 1008 ¶¶ 43–44. Thus, based on the record before us, Petitioner has
`shown by a preponderance of the evidence that Liebenow describes the
`limitations of claims 11 and 19.
`As to claims 11 and 195, Patent Owner argues that Liebenow and
`Hedberg should not be combined. PO Resp. 21–24. We have considered
`Patent Owner’s arguments regarding why Liebenow and Hedberg should not
`be combined. The arguments are not persuasive. In particular, Patent
`Owner argues that Hedberg focuses on displaying and viewing on an
`electronic device and is not concerned with data entry on an electronic
`device; whereas Patent Owner argues that Liebenow focuses on keyed data
`entry via a rear keyboard. PO Resp. 21–24. As such, Patent Owner argues,
`one would not want to incorporate Hedberg’s displaying and viewing that
`involve panning and zooming into the Liebenow data entry device with
`indicia displayed on a front-surface display screen. Id. Patent Owner, and
`Patent Owner’s expert Dr. McLean, focus too narrowly on the strict
`disclosures of the references and why the physical embodiments of the
`references could not be combined. See, e.g., Ex. 2003 ¶ 76. Patent Owner’s
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`5 Patent Owner makes reference to claim 13 in this section of its Response
`but makes no arguments directed to claim 13.
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`arguments are not persuasive. The obviousness inquiry does not ask
`“whether the references could be physically combined but whether the
`claimed inventions are rendered obvious by the teachings of the prior art as a
`whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
`In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
`not whether the features of a secondary reference may be bodily
`incorporated into the structure of the primary reference; . . . . Rather, the test
`is what the combined teachings of the references would have suggested to
`those of ordinary skill in the art.”)
`Based on the record before us, and weighing the evidence, we give
`substantial weight to Dr. Welch’s testimony that use of inertial sensors such
`as gyroscopes and accelerometers in handheld devices to enable device
`motion as input was known at the time of the invention and that using such
`sensors to control the display of a hand held device would increase the
`usability of the device. Ex. 1008 ¶¶ 43–44; Ex. 1041. We agree with
`Petitioner’s showing, which we adopt as our own, that Liebenow in
`combination with Hedberg discloses a gyroscope or accelerometer as recited
`in claims 11 and 19 and that adding a gyroscope or accelerometer to the
`Liebenow device would have been desirable for the reasons provided by
`Petitioner.
`Claim 12
`Independent claim 12 is similar in scope to independent claim 1.
`Petitioner argues these claims collectively, choosing claim 1 as
`representative and Patent Owner does not present separate arguments
`regarding claim 12. See, e.g., Pet. 22; PO Resp. 15–25. Petitioner relies on
`Liebenow to meet the limitations of claim 12. Accordingly, the discussion
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`above with respect to claim 1 equally applies to claim 12. Thus, based on
`the record before us, Petitioner has shown by a preponderance of the
`evidence that Liebenow describes the limitations of claim 12.
`Claim 13
`Patent Owner’s arguments regarding claim 13 are the same as those
`regarding claim 3 discussed above. PO Resp. 24–25. Thus, for the reasons
`stated above we are not persuaded by Patent Owner’s arguments regarding
`claim 13.
`Claims 15–18 and 20
`For claims 15–18, and 20 each of which depends directly from either
`claim 1 or independent claim 12, Petitioner relies on Liebenow to meet the
`additional limitations of those claims. Pet. 28–29, 30. We agree with
`Petitioner’s showing, which we adopt as our own, that Liebenow discloses
`the additional limitations of claims 15–18, and 20. Patent Owner does not
`argue these claims separately. PO Resp. 15–25.
`E. Objective Evidence of Nonobviousness
`Factual inquiries for an obviousness determination include secondary
`considerations based on evaluation and crediting of objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
`Notwithstanding what the teachings of the prior art would have suggested to
`a person of ordinary skill in the art at the time of the claimed invention, the
`totality of evidence submitted, including objective evidence of
`nonobviousness, may lead to a conclusion that the claimed invention would
`not have been obvious to one with ordinary skill in the art. In re Piasecki,
`745 F.2d 1468, 1471–1472 (Fed. Cir. 1984). Secondary considerations may
`include any of the following: long-felt but unresolved needs, failure of
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`others, unexpected results, commercial success, copying, licensing, and
`praise.
`There must be a demonstrated “nexus” between the merits of the
`claimed invention and the evidence of secondary considerations before that
`evidence is accorded substantial weight in an obviousness determination.
`Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
`(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
`(Fed. Cir. 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996);
`In re Fielder, 471 F.2d 640, 642 (CCPA 1973). “Nexus” is a legally and
`factually sufficient connection between the objective evidence and the
`claimed invention, such that the objective evidence should be considered in
`determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
`Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the absence of an established
`nexus with the claimed invention, secondary consideration factors such as
`commercial success, satisfaction of a long-felt but unresolved need,
`licensing and copying by others are not entitled to much, if any, weight and
`generally have no bearing on the legal issue of obviousness. See In re
`Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
`The burden of showing that there is a nexus lies with the Patent
`Owner. Id.; see In re Paulsen, 30 F.3d at 1482.
`Patent Owner argues that secondary considerations show that the ’692
`patent claims are not obvious. PO Resp. 25–28. In particular, Patent Owner
`argues that Petitioner has not pointed to a prior art reference meeting the
`limitations of the challenged claims. Id. at 26. Patent Owner’s argument is
`misplaced insofar as an inquiry into secondary considerations is concerned,
`and in any event, has been addressed. As explained above, Liebenow in
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`combination with Armstrong or Hedberg meet the limitations of the
`challenged claims.
`Patent Owner also cites cases regarding “failed attempts by others.”
`PO Resp. 27–28. Patent Owner does not present any substantive argument
`regarding this issue.
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`Conclusion
`We have considered the entirety of the evidence before us submitted
`by Patent Owner as indicia of nonobviousness. On balance, the evidence of
`obviousness outweighs the evidence of nonobviousness, with respect to the
`challenged claims. The evidence of obviousness is strong and the evidence
`of nonobviousness is weak, for the reasons discussed above. All of Patent
`Owner’s arguments have been considered. Petitioner has proved, by a
`preponderance of the evidence that claims 1–3 and 5–10 are unpatentable
`over the combination of Liebenow and Armstrong and claims 11–13 and 15–
`20 are unpatentable over the combination of Liebenow and Hedberg.
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`III. CONCLUSION
`Based on the evidence and arguments, Petitioner has demonstrated by
`
`a preponderance of the evidence that claims 1–3 and 5–10 of the ’692 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Liebenow and
`Armstrong and claims 11–13 and 15–20 are unpatentable under 35 U.S.C