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 No. IPR2015-00229
`
`Patent No. 7,667,692
`
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
`
`
`
`
`
`
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`
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`
`
`
`
`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00229
`
`Patent No. 7,667,692
`
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
`
`
`
`
`
`
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`
`
`TABLE OF CONTENTS
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` Page
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`
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`TABLE OF AUTHORITIES ............................................................................. iii
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`EXHIBIT LIST .................................................................................................. iv
`
`I.
`
`II.
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART ................................... 6
`
`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`
`ANALOGOUS ART ................................................................................ 6
`
`V.
`
`
`
`FACTUAL BACKGROUND .................................................................. 1
`
`THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS
`OF CLAIMS 1-3, 5, 7-10, 12, 13, 15-18, and 20 ..................................... 3
`
`PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS
`DO NOT RENDER THE ’692 PATENT’S CLAIMS OBVIOUS ........ 15
`
`LIEBENOW AND ARMSTRONG do not render claims
`3 and 5 obvious because even if combined, they do not
`disclose the claims ........................................................................ 15
`
`LIEBENOW AND HEDBERG do not render claims 11,
`13, and 19 obvious ....................................................................... 21
`
`A.
`
`
`B.
`
`
`
`1.
`
`2.
`
`Liebenow and Hedberg should not be combined .............. 21
`
`Even if wrongly combined, Liebenow and
`Hedberg do not disclose claim 13 ...................................... 24
`
`
`VI. SECONDARY CONSIDERATIONS SHOW THAT THE ’692
`
`PATENT’S CLAIMS ARE NOT OBVIOUS ........................................ 25
`
`VII. CONCLUSION ...................................................................................... 29
`
`
`
`ii
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`TABLE OF AUTHORITIES
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` Page
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`
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`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ.
`
`212 F.3d 1272 (Fed. Cir. 2000) .......................................................... 27
`
`Apple Inc. v. ITC
`
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................... 25
`
`Boehringer Ingelheim Vetmedica, Inc. v. Schering–Plough Corp.
`
`320 F.3d 1339 (Fed. Cir. 2003) .......................................................... 27
`
`Circuit Check Inc. v. QXQ Inc.
`
`No. 2015-1155, 2015 WL 4603797 (Fed. Cir. July 28, 2015) ......... 8, 9
`
`Cohesive Techs., Inc. v. Waters Corp.
`
`543 F.3d 1351 (Fed. Cir. 2008) .............................................................4
`
`Graham v. John Deere Co.
`
`383 U.S. 1 (1966) ..................................................................................7
`
`In re Bigio
`
`381 F.3d 1320 (Fed. Cir. 2004) ...................................................... 8, 13
`
`In re Clay
`
`966 F.2d 656 (Fed. Cir. 1992) .................................................. 9, 10, 14
`
`In re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig.
`
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................... 27
`
`In re Klein
`
`647 F.3d 1343 (Fed. Cir. 2011) ................................................ 7, 11, 15
`
`InTouch Techs., Inc. v. VGo Communs., Inc.
`
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................... 23
`
`KSR Int’l Co. v. Teleflex Inc.
`
`550 U.S. 398 (U.S. 2007) ......................................................... 7, 21, 22
`
`
`
`iii
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`
`
`
`
`
`K-Tec, Inc. v. Vita-Mix Corp.
`
`696 F.3d 1364 (Fed. Cir. 2012) .................................................... 11, 15
`
`Leapfrog Enter. Inc. v. Fisher-Price Inc.
`
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................... 22
`
`Leo Pharm. Prods., Ltd. v. Rea
`
`726 F.3d 1346 (Fed. Cir. 2013) .................................................... 26, 27
`
`Mintz v. Dietz & Watson, Inc.
`
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................... 25
`
`MEHL/Biophile Int'l Corp. v. Milgraum
`
`4192 F.3d 1362 (Fed. Cir. 1999) ...........................................................4
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.
`
`520 F.3d 1358 (Fed. Cir. 2008) .......................................................... 25
`
`Ruiz v. A.B. Chance Co.
`
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................... 21
`
`State Contracting & Eng’g Corp. v. Condotte America, Inc.
`
`346 F.3d 1057 (Fed. Cir. 2004) .............................................................8
`
`Transocean Offshore Deepwater, Inc. v. Maersk Drilling USA, Inc.
`
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................... 25
`
`Wang Labs., Inc. v. Toshiba Corp.
`
`993 F.2d 858 (Fed. Cir. 1993) ............................................ 8, 10, 11, 13
`
`
`
`Other References
`
`Janice M. Mueller, Patent Law (4th ed. 2013) ................................................8
`
`iv
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`EXHIBIT LIST
`
`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`Exhibit 1001 U.S. Patent 7,667,692
`
`Exhibit 1003 U.S. Patent Application Publication No. 2002/0118175 to
`Liebenow et al.
`
`Exhibit 1004 U.S. Patent No. 6,469,691 to Armstrong
`
`Exhibit 1005
`
`International Publication No. WO1999/18495 to Hedberg
`
`Exhibit 1009
`
`Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 1013 Michael McCandless, The PalmPilot and the handheld
`revolution, IEEE Expert pp. 6-8 (November/December 1997)
`
`Exhibit 1014
`
`PalmPilotTM Handbook, 3Com Corporation (1997)
`
`
`
`EXHIBITS FILED BY APLIX IP HOLDINGS CORPORATION
`
`Exhibit 2001 Amended Complaint in Aplix IP Holdings Corporation v. Sony
`Computer Entertainment Inc. and Sony Computer
`Entertainment America LLC, Case No. 1:14-cv-12745
`
`Exhibit 2002 Office Action dated October 5, 2006, from the file history of
`U.S. Ser. No. 10/699,555 (parent of the application for U.S.
`Patent 7,463,245).
`
`Exhibit 2003
`
`Expert Declaration of Dr. Karon MacLean
`
`Exhibit 2004
`
`Curriculum Vitae of Dr. Karon MacLean
`
`Exhibit 2005 Allen, J. P., Handheld Computing Predictions: What Went
`Wrong?, Proceedings of the 1st International Symposium on
`Handheld and Ubiquitous Computing, Karlsruhe, Germany:
`Springer-Verlag, 1999, pp. 117-123
`
`Exhibit 2006 Wikipedia entry on “List of Blackberry products” at
`
`
`
`v
`
`
`
`
`
`https://en.wikipedia.org/wiki/List_of_BlackBerry_products,
`accessed 8/3/2015
`
`Exhibit 2007 Keyboard image at http://www.computerhistory.org/
`collections/catalog/102642008, accessed 8/2/2015
`
`Exhibit 2008
`
`Patent US 5,305,017
`
`Exhibit 2009 Wikipedia entry on “Touchpad” at
`https://en.wikipedia.org/wiki/Touchpad, accessed 8/1/2015
`
`Exhibit 2010
`
`Buxton, W., Multi-Touch Systems that I Have Known and
`Loved, at www.billbuxton.com/multitouchOverview.html,
`accessed 8/2/2015
`
`Exhibit 2011 Walker, G., A Review of Technologies for Sensing Contact
`Location on the Surface of a Display, Journal of the Society
`for Information Display, vol. 20:8, pp. 413-440, 2012
`
`Exhibit 2012 Wikipedia entry on “IBM Simon” at
`https://en.wikipedia.org/wiki/ IBM_Simon, accessed 8/2/2015
`
`Exhibit 2013 Wikipedia entry on “Casio PB 1000” at
`https://en.wikipedia.org/wiki/Casio_PB-1000, accessed
`8/2/2015
`
`Exhibit 2014
`
`Blickenstorfer, C., NeoNode N1, Can a unique interface put
`this compelling smart phone on the map? At
`http://pencomputing.com/WinCE/neonode-n1-review.html,
`accessed 8/2/2015
`
`Exhibit 2015 Wikipedia entry on “List of iPod models” at
`https://en.wikipedia.org/wiki/List_of_iPod_models, accessed
`8/2/2015
`
`Exhibit 2016 Microsoft Teams with Interlink Electronics for Xbox
`Controllers, at www.Gamasutra.com, accessed 8/2/2015
`
`Exhibit 2017 Hinckley, K., Sensing Techniques for Mobile Interaction,
`Proceedings of the 13th Annual ACM Symposium on User
`Interface Software and Technology, San Diego, California,
`USA: ACM, 2000, pp. 91-100
`
`
`
`vi
`
`
`
`
`
`Exhibit 2018 Wikipedia entry on “Camera phone” at
`https://en.wikipedia.org/wiki/Camera_phone, accessed
`8/3/2015
`
`Exhibit 2019
`
`Partridge, K., Tilttype: Accelerometer-Supported Text Entry
`for Very Small Devices,” in Proceedings of the 15th annual
`ACM symposium on User interface software and technology.
`Paris, France: ACM, 2002, pp. 201-204
`
`Exhibit 2020 Wigdor, D., Tilttext: Using Tilt for Text Input to Mobile
`Phones” in Proceedings of the 16th annual ACM symposium
`on User interface software and technology. Vancouver,
`Canada: ACM, 2003, pp. 81-90
`
`Exhibit 2021
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00229 and IPR2015-00230, July 28-29, 2015
`
`
`
`vii
`
`
`
`
`
`I.
`
`
`FACTUAL BACKGROUND
`
`Beginning in 2003, a group of Massachusetts inventors led by Dr. Beth
`
`Marcus developed interactive-design technologies for improving control of
`
`hand-held devices and host devices.1 Among other advancements, Dr. Marcus
`
`and her team deployed configurable input systems and elements on multiple
`
`surfaces of a hand-held device, implementing unique combinations of and
`
`applications for particular types of input elements.2 The team also designed
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`hand-held accessory devices that would enable users to remotely operate (and
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`play video games on) cell phones and tablet devices.3
`
`Marcus and her team applied for patents on their inventions, and, after a
`
`thorough review, the United States Patent & Trademark Office awarded them
`
`several patents, including, on February 23, 2010, the ’692 patent, titled “Human
`
`Interface System.”4 This patent was assigned to Dr. Marcus’ company,
`
`Zeemote, Inc., a Boston-area start-up, which sought to commercialize the
`
`
`1
`Ex. 2001 at ¶ 2.
`
`2
`
`3
`
`4
`
`Ex. 2001 at ¶ 2.
`
`Ex. 2001 at ¶ 2.
`
`Ex. 1001.
`
`
`
`1
`
`
`
`
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`technology.5 Aplix, a Japanese operating company, later acquired Zeemote’s
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`assets, including the ’692 patent.6
`
`The ’692 patent claims methods for configuring a system for use with a
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`host hand-held electronic device including providing first- and second-surface
`
`input elements, at least one of each surface’s input elements being configured to
`
`map to one or more of an application’s input functions.7 The claims require
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`arranging the surfaces’ input assemblies in substantial opposition to each other
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`(claim 1) and that the application’s functions be mapped based on the finger-
`
`thumb opposition of the human hand (claim 12). Dependent claims 3 and 13
`
`add a sensor pad with a selectively configurable sensing surface that provides
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`multiple delineated active areas based on the selected application.
`
`Petitioner’s lead prior-art reference, Liebenow, was well vetted by the
`
`USPTO during related prosecution of the ’692 patent’s parent application.
`
`Although the USPTO gave a detailed analysis of Liebenow in initially rejecting
`
`many of the claims in the ’692 patent’s parent application,8 it found that
`
`Liebenow does not disclose limitations very similar to those of the ’692 patent’s
`
`
`5
`Ex. 2001 at ¶ 2.
`
`6
`
`7
`
`8
`
`Ex. 2001 at ¶ 2.
`
`Ex. 1001 at claims 1 and 12.
`
`Ex. 2002 (10-5-06 Office Action) at 2-7.
`
`
`
`2
`
`
`
`
`
`claims. Specifically, the USPTO found that Liebenow does not disclose
`
`“wherein at least one of the input elements of the second input assembly is a
`
`selectively configurable sensing surface so as to provide a plurality of
`
`delineated active areas, further wherein one or more of the delineated active
`
`areas is mapped to one or more functions associated with the selected
`
`application.”9
`
`By providing delineated active areas based on a selected application and
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`enabling selective mapping of those areas to application functions in
`
`combination with enabling yet other functions to be mapped to a first-surface
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`input element, the ’692 patent unlocked the potential of hand-held devices in
`
`facilitating user access to sophisticated operations in games and other
`
`applications. The issued claims reflect that Dr. Marcus’ and her team’s
`
`innovations were well ahead of their time in the infancy of the smartphone
`
`world.
`
`
`II.
`
`
`
`THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS OF
`CLAIMS 1-3, 5, 7-10, 12, 13, 15-18, AND 20.
`
`Petitioner based its lead argument on § 102 grounds, contending that
`
`Liebenow anticipates the ’692 patent’s claims 1-3, 5, 7-10, 12, 13, 15-18, and
`
`
`9
`Ex. 2002 (10-5-06 Office Action) at 7.
`
`
`
`3
`
`
`
`
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`20.10 Petitioner offered no argument whatsoever about how any combination of
`
`Liebenow and another reference renders claims 1-3, 5, 7-10, 12, 13, 15-18, and
`
`20 obvious. The petition’s sections on a Liebenow-Armstrong combination and
`
`a Liebenow-Hedberg combination include claim charts that contain no evidence
`
`about how those proposed combinations render claims 1-3, 5, 7-10, 12, 13, 15-
`
`18, and 20 obvious. Petitioner’s only obviousness argument as to these claims
`
`is to incorporate by reference its contentions about anticipation,11 a ground on
`
`which the Board opted not to proceed.
`
`The tests for obviousness and anticipation are different. “To anticipate a
`
`claim, a prior art reference must disclose every limitation of the claimed
`
`invention, either explicitly or inherently.” MEHL/Biophile Int'l Corp. v.
`
`Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (citations omitted). “If it is
`
`necessary to reach beyond the boundaries of a single reference to provide
`
`missing disclosure of the claimed invention, the proper ground is not § 102
`
`anticipation, but § 103 obviousness.” Cohesive Techs., Inc. v. Waters Corp.,
`
`543 F.3d 1351, 1364 (Fed. Cir. 2008) (citations omitted).
`
`Here, the Board did opt to reach beyond the boundaries of Liebenow,
`
`eschewing a review of the anticipation ground and instead deciding to evaluate
`
`
`10
`Paper No. 2 (petition) at 8-27.
`
`11
`
`Paper No. 2 (petition) at 28, 31.
`
`
`
`4
`
`
`
`
`
`obviousness. The Board’s obviousness review involves four possible
`
`combinations of Liebenow and other references. (Patent Owner Aplix
`
`addresses one of these other references in section IV below and addresses the
`
`proposed combinations in section V below.) As to Liebenow and Armstong,
`
`for example, the Board’s institution decision says that “[w]e have reviewed the
`
`proposed ground of obviousness over Liebenow and Armstrong. . . and we are
`
`persuaded, at this juncture of the proceeding, that [SCEA] has established a
`
`reasonable likelihood that Petitioner would prevail in its challenge . . . on this
`
`ground” and “[we] 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.”12
`
`Having specifically instituted review of these claims on the “proposed
`
`ground of obviousness,” and having specifically opted not to review the ground
`
`of anticipation by Liebenow alone as Petitioner had urged, the Board should not
`
`now rely on anticipation arguments to evaluate obviousness. Instead, the Board
`
`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—and should find that therefore those claims are not invalid.
`
`
`
`
`12
`Paper No. 15 (institution decision) at 11 (emphasis added), 14.
`
`
`
`5
`
`
`
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`
`Patent Owner Aplix agrees with Petitioner’s proposed description of a
`
`person of ordinary skill in the art, with two tweaks. Such a person would not
`
`need to have the particular types of undergraduate degrees listed by Petitioner’s
`
`expert but could instead have a degree in mechanical, biomechanical, or
`
`industrial engineering. And such a person who also has a master’s degree could
`
`have only one year of experience, rather than two to four years as originally
`
`suggested by Petitioner. (Ex. 2003, MacLean ¶ 52.) Petitioner’s expert agreed
`
`on cross-examination that it could be just one year.13
`
`
`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`ANALOGOUS ART.
`
`
`
`The Board has instituted review based on three alleged prior-art
`
`references submitted by Petitioner:
`
`Liebenow US 2002/0118175 A1 Aug. 29, 2002
`
`(Ex. 1003)
`
`Armstrong US 6,469,691
`
`Hedberg WO 1999/18495
`
`
`
`
`
`Oct. 22, 2002
`
`(Ex. 1004)
`
`Apr. 15, 1999
`
`(Ex. 1005)
`
`The Board has opted to institute proceedings to evaluate whether the ’692
`
`patent’s claims are obvious under § 103(a), or not, in light of two specific
`
`combinations: Liebenow-Armstrong and Liebenow-Hedberg.
`
`
`13
`Ex. 2033 (Welch depo) at 62:6-23.
`
`
`
`6
`
`
`
`
`
`
`
`A claim is obvious if the differences between the claimed subject matter
`
`and the prior art are such that the claimed subject matter would have been
`
`obvious at the time the invention was made to a person having ordinary skill in
`
`the art. Graham v. John Deere Co., 383 U.S. 1, 14 (1966). Determining
`
`obviousness requires analysis of (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the claimed invention, (3) the level of
`
`ordinary skill in the field of the invention, and (4) any relevant objective
`
`considerations of nonobviousness. Id. at 17. This framework helps “guard
`
`against slipping into use of hindsight and [ ] resist the temptation to read into
`
`the prior art the teachings of the invention in issue.” Id. at 36 (internal citation
`
`omitted). While an analysis of any teaching, suggestion, or motivation to
`
`combine elements from different prior-art references is useful, the overall
`
`inquiry must be flexible. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
`
`(U.S. 2007). “A factfinder should be aware, of course, of the distortion caused
`
`by hindsight bias. . . .” Id., at 421.
`
`
`
`Evaluating an obviousness contention requires a threshold determination
`
`on whether the proffered prior-art references are “analogous” to the ’692
`
`patent’s claimed invention. “A reference qualifies as prior art for an
`
`obviousness determination under § 103 only when it is analogous to the claimed
`
`invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
`
`
`
`7
`
`
`
`
`
`added). “To go beyond analogous art in a § 103 analysis runs the risk of
`
`hindsight reconstruction of a claimed invention by merely finding each of its
`
`constituent elements somewhere in the prior art, without concern for whether a
`
`[person having ordinary skill in the art] would have reasonably considered that
`
`art.” Janice M. Mueller, Patent Law (4th ed. 2013), at 294.
`
`
`
`Prior art qualifies as “analogous [1] if it is from the same field of
`
`endeavor or [2] if it is reasonably pertinent to the particular problem the
`
`inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., No. 2015-1155,
`
`2015 WL 4903794, at *3 (Fed. Cir. July 28, 2015).
`
`
`
`
`
`
`
`▪
`
`Field of endeavor
`
`The appropriate field of endeavor is determined by “reference to
`
`explanations of the invention's subject matter in the patent application,
`
`including the embodiments, function, and structure of the claimed invention.”
`
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Similarity in the structure
`
`and function of the invention and the prior art is indicative that the prior art is
`
`within the inventor’s field of endeavor.” State Contracting & Eng’g Corp. v.
`
`Condotte America, Inc., 346 F.3d 1057, 1069 (Fed. Cir. 2004).
`
`Courts have declined to construe “field of endeavor” broadly, particularly
`
`in the electronics context. In Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858
`
`(Fed. Cir. 1993), for example, the inventor was trying to create compact,
`
`
`
`8
`
`
`
`
`
`modular memories for personal computers. Id. at 864. Reviewing a prior-art
`
`reference, the Federal Circuit emphasized that the art “[was] not in the same
`
`field of endeavor as the claimed subject matter merely because it relate[d] to
`
`memories.” Id. Because the reference concerned SRAM or ROM memory,
`
`rather than DRAM memory as used in the patent-at-issue, the Federal Circuit
`
`concluded that a reasonable jury could have found that the prior art was outside
`
`the claimed invention’s field of endeavor. Id.
`
`
`
`Similarly, in an extensively cited 1992 decision, the Federal Circuit
`
`specifically noted that inventions that are part of a common endeavor may
`
`nonetheless not be in the same “field of endeavor” for obviousness purposes. In
`
`re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). There, an invention relating to the
`
`extraction of crude petroleum was held not to be in the same field of endeavor
`
`as an invention relating to the storage of refined petroleum, even though both
`
`“relate[d] to the petroleum industry” and both arguably sought to “maximize[e]
`
`withdrawal of petroleum stored in petroleum reservoirs.” Id.
`
`
`
`
`
`
`
`▪
`
`Reasonably pertinent
`
`A reference is “reasonably pertinent to the particular problem the
`
`inventor is trying to solve … only [ ] when it ‘logically would have
`
`commended itself to an inventor's attention in considering his problem.’”
`
`Circuit Check at *3 (citing Clay, 966 F.2d at 659 (emphasis added)). The
`
`
`
`9
`
`
`
`
`
`Federal Circuit considers whether the prior art serves the same purpose, or
`
`attempts to solve the same problem, as the claimed invention:
`
`[T]he purposes of both the invention and the prior art
`
`are important in determining whether the reference is
`
`reasonably pertinent to the problem the invention
`
`attempts to solve. If a reference disclosure has the
`
`same purpose as the claimed invention, the reference
`
`relates to the same problem, and that fact supports use
`
`of that reference in an obviousness rejection. An
`
`inventor may well have been motivated to consider
`
`the reference when making his invention. If it is
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`directed to a different purpose, the inventor would
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`accordingly have had less motivation or occasion to
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`consider it.
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`Clay, 966 F.2d at 659 (emphasis added). Applying these principles, Clay held
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`that the problem that the prior-art reference was trying to solve—extracting oil
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`from rock—was not reasonably pertinent to the inventor’s problem, which was
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`storing oil and preventing its loss. Id.
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`
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`What art is “reasonably pertinent” depends heavily on facts. In Wang,
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`for example, the Federal Circuit sustained a non-obviousness finding based in
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`significant part on expert testimony that a person of skill in the art trying to
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`solve the problem of compact, modular memories for personal computers would
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`not have considered art “developed for use in a controller of large industrial
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`10
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`machinery and [that] could not be used in a personal computer.” 993 F.2d at
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`864. The differences in the problems to be solved were dispositive. Because
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`Wang was trying to solve a compact, modular memory problem that the cited
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`prior art (dealing with large industrial machinery) did not need to address, the
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`Federal Circuit found sufficient evidence to support a finding that the art was
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`not reasonably pertinent. See id. at 865.
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`Likewise, in K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed.
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`Cir. 2012), the patent claimed a five-walled container for a blender. Its shape
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`created a vortex, blending liquid away from the central axis and toward a
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`truncated wall. This in turn created a flow pattern that reduced the container’s
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`cavitation, increasing the blending’s speed and efficiency. As part of its
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`obviousness case, the accused infringer cited container prior art from non-
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`blender applications such as food mixers. But the Federal Circuit affirmed the
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`district court’s finding that the accused infringer had not offered a sufficient
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`explanation as to why the inventor would have “consulted non-blending
`
`containers or food mixers in order to solve the problems he encountered in
`
`designing a new blending container.” Id. at 1375.
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`Finally, in Klein, the Federal Circuit held that the Board’s “conclusory
`
`finding that [several pieces of prior art] are analogous” was not supported by
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`substantial evidence. 647 F.3d at 1350. There, a patent owner challenged the
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`11
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`
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`
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`Board’s obviousness determination regarding his invention—a mixing device to
`
`prepare nectar for different types of birds and butterflies. Id. at 1345. The
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`Federal Circuit noted that the prior-art references cited by the Board were “each
`
`directed to a container designed to separate its contents, as opposed to one
`
`designed to facilitate the mixing of those contents.” Id. at 1350 (emphasis in
`
`original). Thus, reasoned the Federal Circuit, “[a]n inventor considering the
`
`problem of making a nectar feeder with a movable divider to prepare different
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`ratios of sugar and water for different animals, would not have been motivated
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`to consider any of these references when making his invention.” Id. (internal
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`citations omitted). The Federal Circuit expressly disapproved of the Board’s
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`attempt to “redefine the problem” in order to force an analogy. Id. at 1351 n.1.
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`This legal framework guides the analysis of Hedberg and reveals that
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`Hedberg is not analogous art. Hedberg (ex. 1005) is neither in the same field of
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`endeavor as the ’692 patent nor reasonably pertinent to the particular problem
`
`the ’692 inventors were trying to solve. First, as explained above, the ’692
`
`patent addresses problems related to human interfaces and input systems for
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`hand-held electronic devices (ex. 1001, 1:15-17)—specifically, to enable
`
`efficient user input of information to a hand-held device based on the
`
`ergonomics of the hand (ex. 1001, 3:53-63, 6:56-7:9). (Ex. 2003, MacLean
`
`¶ 75.) By contrast, Hedberg addresses only viewing rather than information
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`
`
`12
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`
`
`
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`entry. (Ex. 2003, MacLean ¶ 76.) In fact, Hedberg limits the scope of its field
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`to a very particular scenario for displaying on an electronic device “a complete
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`or a determined part of a screen image” (1:11-12). (Ex. 2003, MacLean ¶ 76.).
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`Again, the Board should resist any temptation to broadly construe the field of
`
`endeavor to include anything related to hand-held electronic devices. See
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`Wang, 993 F.2d at 864 (prior art “[was] not within the relevant field of
`
`endeavor as the claimed subject matter merely because it relates to memory”).
`
`A review of the inventions’ “embodiments, function, and structure”
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`confirms that Hedberg and the ’692 patent do not share the same field of
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`endeavor. See Bigio, 381 F.3d at 1325. Hedberg employs user input only as a
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`means to control the view on the hand-held graphical display rather than for
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`information input in its own right. (Ex. 2003, MacLean ¶ 76.) In all of
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`Hedberg’s embodiments, for example, the hand-held device is translated in
`
`space (moved closer-further, and left-right; but not rotated) in order to control
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`the local (hand-held’s) view location and zoom level for a subset of a different
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`view such as that shown on a larger nearby screen. (Ex. 2003, MacLean ¶ 76.)
`
`And in terms of function, Hedberg suggests a very specific application of its
`
`invention to “satisfy the needs of an engineer working with CAD-applications
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`as well as for the display of text and graphic information” (ex. 1005, 3:11-13).
`
`
`
`13
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`
`
`
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`In contrast to Hedberg, the ’692 patent does not describe its invention as
`
`a display or viewing system. (Ex. 2003, MacLean ¶ 75.) The ’692 patent
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`further states the intention of supporting applications that include text input
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`“(e.g., e-mail, word processing, or text messaging)” or game applications
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`(ex. 1001, 5:44-63). To the extent that the ’692 patent speaks of or implies a
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`graphical display, which the ’692 says embodiments “may include,” it is in
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`support of information input by the user or to display that information (7:34-
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`39). A display and its use is not at all a focus of the ’692 patent, however, and
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`the claims do not recite a display. (Ex. 2003, MacLean ¶ 75.)
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`The function and structure of the ’692 patent’s invention is ergonomic
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`and versatile data input on a hand-held device. By contrast, the function and
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`structure of Hedberg’s invention is controlling a determined view on a hand-
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`held device’s display of another screen image by moving the hand-held device.
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`These functions and structures are very different and represent different
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`designer challenges and solutions. (Ex. 2003, MacLean ¶¶ 77.) Therefore,
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`Hedberg is not in the same field of endeavor as the ’692 patent. (Ex. 2003,
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`MacLean ¶¶ 77.) See Clay, 966 F.2d at 659.
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`Hedberg is also not reasonably pertinent to the ’692 patent. As explained
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`above, the ’692 patent’s inventors were focused on improving human interface
`
`with hand-held devices and, specifically, trying to solve the problem of how to
`
`
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`14
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`
`
`
`
`support ergonomic user input on a hand-held device. In considering this
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`problem, they would have no reason or occasion to look for guidance from
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`Hedberg, which as explained above, addresses a completely different
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`problem—namely, how to view parts of other screen images. (Ex. 2003,
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`MacLean ¶ 78.) K-Tech, 696 F.3d at 1375; Klein, 647 F.3d at 1350-51. Thus
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`Hedberg is also not reasonably pertinent, and thus not analogous.
`
`
`V.
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`
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`PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS DO
`NOT RENDER THE ’692 PATENT’S CLAIMS OBVIOUS.
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`The Board has instituted review based on two specific proposed
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`combinations of references:
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` Liebenow-Armstrong (claims 1-3 and 5-10)
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` Liebenow-Hedberg (claims 11-13 and 15-20)
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`As demonstrated above, Hedberg is not analogous and thus is not prior art for
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`purposes of a § 103 analysis.
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`A.
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`LIEBENOW AND ARMSTRONG do not render claims 3 and
`5 obvious because even if combined, they do not disclose the
`claims.
`
`
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`The Board has decided to review whether the combination of Liebenow
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`(ex. 1003) and Armstrong (ex. 1004) renders claims 1–3 and 5-10 obvious
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`under 35 U.S.C. § 103(a). The Board should hold that Petitioner has failed to
`
`meet its burden, as it has not shown that Liebenow and Armstrong would
`
`
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`15
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`
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`disclose the limitations of the ’692 patent’s claims 3 and 5 even if they were
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`combined.
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`Liebenow (ex. 1003) describes a tablet-sized hand-held digital
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`information appliance with a display on the front and “an input device for entry
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`of information via keyed input” on the back (¶¶ 0005, 0030, Figs. 1, 2).
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`Liebenow purports to address “a need for a digital information appliance having
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`a keyboard positioned on the appliance’s housing so that the size of the
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`appliance is not substantially increased in comparison to a like digital
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`information appliance without such a keyboard” (¶ 0005). It addresses this
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`perceived need with a rear-side keyboard device. The primary embodiments
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`have rear-side keyboards with individual physical keys (Figs. 2, 3, 4, 8, 11).
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`Alternative embodiments have rear-side keyboards that are emulated using a
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`touch-sensitive surface having areas “defined as keys of a keyboard” (¶ 0036,
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`Figs. 5, 9). Both the physical and emulated rear-surface keyboard embodiments
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`are designed for data entry via “conventional touch-typing techniques”
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`(¶¶ 0030, 0036).
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`Armstrong (ex. 1004) discloses a device with a display and “at least one
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`analog pressure-sensitive element” that is “for output of a signal of variable
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`value utilized by the circuitry to control or manipulate one or more functions of
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`the electronic device” (2:19-23).
`
`
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`16
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`Petitioner does not attempt to map Armstrong onto any part of any claim
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`other than claim 6.
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`▪
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`Liebenow’s teaching of alternative second-surface
`emulated keyboards does not show claim 3’s limitations
`of “a selectively configurable sensing surface that
`provides more than one delineated active area based on
`the selected application.”
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`
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`The petition (pp. 8-9) misleadingly suggests that Liebenow was not
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`carefully considered by the USPTO. In fact, the ’692’s parent application’s
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`prosecution history contains extensive discu
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