Trials@uspto.gov
`571-272-7822
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` Paper 15
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` Entered: May 29 2015
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`
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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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 15
`
`
`
` Entered: May 29 2015
`
`
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`I.
`
`INTRODUCTION
`
`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.”). In response, Patent Owner, Aplix Holdings Corporation, filed a
`
`Preliminary Response. Paper 14 (“Prelim. Resp.”). We have jurisdiction
`
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`
`be instituted “unless . . . the information presented in the petition . . . shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.”
`
`For the reasons set forth below, we institute an inter partes review of
`
`claims 1–3, 5–13, and 15–20 of the ’692 patent.
`
`
`
`A. Related Matter
`
`The ’692 patent is involved in the following lawsuit: Aplix IP
`
`Holdings Corporation v. Sony Computer Entertainment, Inc. et al.,
`
`No. 1:14-cv-12745 (MLW) (D. Mass.). Pet. 59.
`
`
`
`B. 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, 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
`
`2
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`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.
`
`
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 12 are the only independent
`
`claims. Claims 2, 3, and 5–11 depend either directly or indirectly from
`
`claim 1 and claims 13, and 15–20 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
`
`3
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`
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`second input assembly in substantial opposition to each other.
`
`Ex. 1001, 15:34–52.
`
`
`
`
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Liebenow
`Armstrong
`Hedberg
`Griffin
`Rekimoto
`
`
` US 2002/0118175 A1 Aug. 29, 2002
` US 6,469,691
`
`Oct. 22, 2002
` WO 1999/18495
`Apr. 15, 1999
` US 2003/0020692 A1 Jan. 30, 2003
` US 7,088,342 B2
`Aug. 8, 2006
`
`(Ex. 1003)
`(Ex. 1004)
`(Ex. 1005)
`(Ex. 1006)
`(Ex. 1007)
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`
`Basis
`
`References
`
`1–3, 5, 7–10, 12, 13,
`15–18 and 20
`
`§ 102(b) Liebenow
`
`1–3 and 5–10
`
`§ 103(a) Liebenow and Armstrong
`
`1–3, 5, 7–13, 15–20
`
`§ 103(a) Liebenow and Hedberg
`
`1, 2, 7–10, 12, 15–18
`and 20
`
`§ 102(a) Griffin
`
`1, 2, and 6–10
`
`§ 103(a) Griffin and Armstrong
`
`1, 2, 7–12, and 15–20
`
`§ 103(a) Griffin and Hedberg
`
`1–3, 12, 13, and 17
`
`§ 102(e) Rekimoto
`
`4
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`Challenged Claims
`
`Basis
`
`References
`
`1–3, 5, 7–10, 12, 13,
`15–18, and 20
`
`§ 103(a) Rekimoto and Liebenow
`
`
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`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, 778 F.3d 1271, 1281–1282 (Fed. Cir. Feb. 4, 2015)
`
`(“Congress implicitly adopted the broadest reasonable interpretation
`
`standard in enacting the AIA,” and “the standard was properly adopted by
`
`PTO regulation.”). Under the broadest reasonable interpretation standard,
`
`claim terms are given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`Petitioner proposes constructions for the claim term “delineated active
`
`area,” (claims 3, 5, and 13). Pet. 7–8, 22. Specifically, Petitioner proposes
`
`that delineated active areas “must at least include areas that are differentiated
`
`from each other either physically or tactilely to assist the user in locating the
`
`position on the sensor pad of the active areas.” Id. at 8. Patent Owner
`
`argues that Petitioner has submitted an unduly narrow construction for
`
`“delineated active area.” Prelim. Resp. 22–27. For purposes of this
`
`5
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`IPR2015-00229
`Patent 7,667,692 B2
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`
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`decision, we need not construe “delineated active area.” Even assuming
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`Petitioner has an unduly narrow construction for “delineated active area,” we
`
`are persuaded that it has accounted for the limitation in the prior art under
`
`such construction.
`
`
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`In that regard, an obviousness analysis “need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
`
`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`
`established when the prior art itself would appear to have suggested the
`
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`
`531 F.2d 1048, 1051 (CCPA 1976).
`
`6
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`
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`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).
`
`
`
`C. Obviousness of Claims over Liebenow and Armstrong
`
`Petitioner asserts that claims 1–3 and 5–10 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over the combination of Liebenow and
`
`Armstrong. Pet. 27. To support its contentions, Petitioner provides detailed
`
`explanations as to how the prior art meets each claim limitation. Id. at 10–
`
`30. Petitioner also relies upon a Declaration of Dr. Gregory F. Welch, who
`
`has been retained as an expert witness by Petitioner for the instant
`
`proceeding. Ex. 1008.
`
`Liebenow describes an electronic hand-held information appliance
`
`having a display disposed on a first surface and an input device disposed on
`
`a second surface opposed to the first surface for inputting information. Ex.
`
`1003, Abstract. Figure 1 of Liebenow is reproduced below.
`
`7
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`
`
`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 and may be
`
`manipulated by a user’s thumb. 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.
`
`
`
`8
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`
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`
`
`
`
`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 (with the user’s fingers,
`
`for example) 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
`
`9
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`
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`configurations may be defined as desired by the user or as required by the
`
`applications executed by the digital information appliance. Id.
`
`Liebenow further describes, in connection with the hand-held device,
`
`a processing system 502 that includes a central processing unit such as a
`
`microprocessor or microcontroller for executing programs, performing data
`
`manipulations, and controlling tasks of the hand-held device. Id. ¶¶ 21, 56;
`
`Fig. 13.
`
`
`
`Armstrong teaches a handheld electronic device, such as a
`
`PDA, with a display and a number of input elements for accepting user
`
`inputs. Ex. 1004, 2:5–15, 6:4–16.
`
`The present record supports the contention that Liebenow describes a
`
`hand-held device with a processor for processing a selected application
`
`having two or more functions. Pet. 11–13; Ex. 1003 ¶¶ 25, 33, 56, 69. The
`
`present record also supports the contention that Liebenow describes the
`
`hand-held device to have a first and second surface as claimed in claim 1, for
`
`example. Pet. 10–19; Ex. 1003 (multiple paragraphs cited in petition).
`
`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 at 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
`
`10
`
`
`
`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`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.
`
`Petitioner also accounts for all of the challenged dependent claims.
`
`Pet. 10–30. Patent Owner argues that, with respect to this ground, the
`
`Petition does not map any part of Armstrong to claims 1–3, 5, and 7–10, but
`
`rather cites to Liebenow alone for challenging those claims. Prelim. Resp. 4.
`
`We are not persuaded by this argument.
`
`We have reviewed the proposed ground of obviousness over
`
`Liebenow and Armstrong against claims 1–3 and 5–10, and we are
`
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`
`1–3 and 5–10 on this ground. Lastly, we have considered Patent Owner’s
`
`argument that the Petition improperly incorporates arguments and evidence
`
`from the Declaration of Dr. Gregory F. Welch into the Petition. Id. at 20–
`
`22. We agree that, in general, arguments must not be incorporated by
`
`reference from one document into another document (37 C.F.R.
`
`§ 42.6(a)(3)). Here, however, Patent Owner’s arguments with respect to
`
`incorporation by reference are conclusory. Patent Owner’s sole example
`
`with respect to the impropriety of incorporation by reference is with respect
`
`to the combination of Liebenow and Armstrong. We find, however, that the
`
`explanation of that ground in the Petition is sufficient and, therefore, we are
`
`not persuaded by this example. We have reviewed those portions of Dr.
`
`11
`
`
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`Welch’s Declaration, to which we are directed, with respect to the grounds
`
`upon which we institute, and have determined that there is nothing unusual
`
`about his declaration or the way in which Petitioner relies on the declaration.
`
`
`
`D. Obviousness of Claims over Liebenow and Hedberg
`
`Petitioner contends that dependent claims 11–13 and 15–20 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`
`Liebenow and Hedberg. Pet. 30. To support its contentions, Petitioner
`
`provides detailed explanations as to how the prior art meets each claim
`
`limitation. Id. at 10–27, 30–32. Petitioner also relies upon the Declaration
`
`of Dr. Gregory F. Welch for support. Ex. 1008.
`
`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 11–13 and 15–20 depends ultimately from claim 1.
`
`Each of claims 11 and 19 recites 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
`
`12
`
`
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`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. Patent Owner does not make arguments, at this time, regarding the
`
`merits of this ground of unpatentability against challenged claims 11–13 and
`
`15–20.
`
`We have reviewed the proposed ground of obviousness over
`
`Liebenow and Hedberg against claims 11–13 and 15–20, and we are
`
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`
`11–13 and 15–20 on this ground.
`
`
`
`E. Remaining Grounds Challenging the Claims of the ’692 Patent
`
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`
`were promulgated to take into account the “regulation on the economy, the
`
`integrity of the patent system, the efficient administration of the Office, and
`
`the ability of the Office to timely complete proceedings.” The promulgated
`
`rules provide that they are to “be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`
`result, and in determining whether to institute an inter partes review of a
`
`patent, the Board, in its discretion, may “deny some or all grounds for
`
`unpatentability for some or all of the challenged claims.” 37 C.F.R. §
`
`42.108(b).
`
`We have considered Patent Owner’s arguments that the Petition
`
`improperly presents vertically and horizontally redundant grounds, and as
`
`13
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
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`such, the Board only should consider one challenge. Prelim. Resp. 6–20.
`
`Based on the record before us, Patent Owner’s arguments are moot, as we
`
`exercise our discretion and decline to institute review based on any of the
`
`other asserted grounds advanced by Petitioner that are not identified below
`
`as being part of the trial. See, e.g., Pet. 6; 37 C.F.R. § 42.108(a).
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in challenging claims 1–3, 5–13, and 15–20 of the
`
`’692 patent. At this juncture, we have not made a final determination with
`
`respect to the patentability of the challenged claims, nor with respect to
`
`claim construction.
`
`For the foregoing reasons, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1–3 and 5–10
`
`§ 103(a)
`
`Liebenow and Armstrong
`
`11–13 and 15–20
`
`§ 103(a)
`
`Liebenow and Hedberg
`
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`14
`
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`will commence on the entry date of this decision.
`
`
`
`
`
`15
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`IPR2015-00229
`Patent 7,667,692 B2
`
`
`
`PETITIONER:
`
`
`Eric A. Buresh
`Abran J. Kean
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`Abran.kean@eriseip.com
`
`
`
`PATENT OWNER:
`
`Michael Mauriel
`MAURIEL KAPOUYTIAN WOODS LLP
`mmauriel@mkwllp.com
`
`
`
`16
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