UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00229
`Patent 7,667,692
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
`
`Case No. IPR2015-00229
`Patent 7,667,692
` ____________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2015-00229
`U.S. Patent No. 7,667,692
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`Table of Contents
`I. INTRODUCTION ............................................................................................... 1
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`II. ARGUMENT ...................................................................................................... 3
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`A. THE INSTITUTED GROUNDS ARE PROPERLY SUPPORTED ............................... 3
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`B. HEDBERG IS ANALOGOUS ART ...................................................................... 6
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`C. ALL CHALLENGED CLAIMS ARE OBVIOUS .................................................. 13
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`1. Liebenow Discloses the Concept of Claim 3 ....................................... 13
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`2. Liebenow and Hedberg Are Properly Combinable .............................. 21
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`3. Liebenow and Hedberg Disclose the Concept of Claim 13 ................. 22
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`D. SECONDARY CONSIDERATIONS FAIL TO SHOW NONOBVIOUSNESS .............. 22
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`III. CONCLUSION ................................................................................................. 25
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`INTRODUCTION
`The specification of the ‘692 Patent claims that there was a purported novelty
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`I.
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`in providing input controls, such as a touchpad, on the back of a handheld device so
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`that the device could be operated with either the thumbs or the fingers. It has now
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`been established that this concept was never novel. Confronted with prior art that
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`shows exactly the same concept, and an overwhelming record of obviousness, Patent
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`Owner (“PO”) is forced to resort to arcane distinctions that are totally absent from the
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`claims. Even PO’s own expert does not agree that the claims should be interpreted so
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`narrowly.
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`There are two substantive arguments in PO’s Response, and both should be
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`rejected. First, PO argues that claim 3 should be interpreted narrowly, and limited to
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`PO’s interpretation of an embodiment in the specification. See generally Paper 18,
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`Response at 17-20. In PO’s view, the claim term “providing” means that an
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`application must draw keyboard delineations rather than selecting a keyboard from
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`one or more defaults. This distinction does not exist anywhere in the claim language.
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`For support, PO relies heavily on the opinion of its expert witness Dr. Karon
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`MacLean. But Dr. MacLean testified that she is unfamiliar with claim construction
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`requirements or the principle that it is improper to read limitations from the
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`specification into the claims. Moreover, Dr. MacLean testified that the claims are not
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`limited to the narrow scope that PO proposes in its Response. The Board should reject
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`1
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`PO’s improperly narrow claim interpretation, and find that under the broadest
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`reasonable interpretation Liebenow and Armstrong disclose the limitations of claim 3.
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`Second, PO argues that it would not have been obvious for a person having
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`ordinary skill in the art (“PHOSITA”) in October 2003 to add the gyroscope described
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`in Hedberg to the device described in Liebenow. See generally Paper 18, Response at
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`6-15 and 21-25. There are two layers to this argument. PO first argues that Hedberg is
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`not analogous art. But PO has not offered a proposed boundary for the field of
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`endeavor, and the field explicitly identified by the ‘692 specification encompasses
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`Hedberg. PO’s purported evidence for its conclusion, the opinion of Dr. MacLean, is
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`flawed because she admitted that in considering the field of endeavor she relied on the
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`problems that the ‘692 Patent and Hedberg were allegedly trying to solve. There is no
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`credible evidence to support PO’s narrow view of the field of endeavor, and the
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`devices used to implement Hedberg are exactly the same type of devices described in
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`the ‘692 Patent. PO further argues that there is no motivation to combine Liebenow
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`and Hedberg. But both references explicitly discuss orientation, and Dr. MacLean
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`agrees that landscape and portrait views could be useful in a data entry context.
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`Including a gyroscope would provide this functionality. The Board should reject PO’s
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`improperly narrow view of analogous art, and find that it would have been obvious to
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`a PHOSITA to combine the gyroscope from Hedberg with the device described in
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`Liebenow.
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`2
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`Ultimately, the flaw in PO’s reasoning throughout its Response is faulty
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`generalization. That is, PO focuses on a specific portion of a document and then
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`infers, incorrectly, that the document only teaches X, or completely fails to teach Y.
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`As applied to prior art, this reasoning leads PO to focus exclusively on one teaching of
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`a reference and then conclude that the references fail to teach anything else. That is
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`how PO overlooks explicit teachings elsewhere in the references. As applied to claim
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`interpretation, this reasoning leads PO to focus on specific embodiments and to then
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`conclude that examples from the specification should be read in as limitations
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`required by the claims. This flawed reasoning also explains PO’s procedural
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`criticisms. PO focuses on particular headings, ignoring context and evidence in the
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`Petition, to conclude that there is no evidence of obviousness. The Board should rely
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`on the entire record, rather than the limited and oversimplified view that PO promotes,
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`and find that all of the Challenged Claims are unpatentable.
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`II. ARGUMENT
`A. The Instituted Grounds Are Properly Supported
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`In its Response, PO renews an argument presented in its Preliminary Response
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`that the Petition does not map Armstrong to claims 1-3, 5, and 7-10, and that the
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`Petition does not map Hedberg to claims 12-13, 15-18, and 20. See Paper 18,
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`Response at 3-5. According to PO, the Board’s decision to proceed on obviousness
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`grounds instead of anticipation created a fatal flaw in this proceeding, and PO would
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`now have the Board find that patentability of these claims must be confirmed
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`regardless of their substantive merit. See id. The Board should reject PO’s position for
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`two reasons.
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`First, PO’s argument has already been rejected, and PO has not identified any
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`reason for the Board to reach a different outcome. In its Preliminary Response, PO
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`already presented this argument, contending that the Petition “does not map any part
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`of Armstrong” to claims 1-3, 5, and 7-10, but rather cites to Liebenow alone to
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`challenge these claims. See Paper 14, POPR at 3-5. PO presented a parallel argument
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`as to Hedberg. See id. The Board explicitly rejected PO’s reasoning in the Institution
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`Decision, and found that Petitioner had established a reasonable likelihood of
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`prevailing on claims 1-3 and 5-10 over Liebenow and Armstrong, and on claims 11-
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`13 and 15-20 over Liebenow and Hedberg. See Paper 15, Decision at 11, 13. There is
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`no new reasoning or authority in PO’s Response that would support a different
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`conclusion in the Final Decision. See Paper 18, Response at 3-6. PO still has not
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`identified any authority to support its conclusion that a rejection based on a prior art
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`combination must cite to underlying evidence from every reference that comprises the
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`combination. See id. There is no support for this rigid rule, and there is nothing to
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`prevent the Board from rejecting claims as obvious in view of a prior art combination
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`even where the relevant teachings for a particular claim come from a single reference.
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`Second, PO’s argument is legally flawed because, based on the record in this
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`proceeding, the evidence of anticipation also shows obviousness. A claim may be
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`rendered obvious if all of its limitations are disclosed in a single prior art reference
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`because “anticipation is the epitome of obviousness.” In re McDaniel, 293 F.3d 1379,
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`1385 (Fed. Cir. 2002) (affirming BPAI obviousness rejection); see also Invensense,
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`Inc. v. STMicroelectronics, Inc., IPR2013-00241, Paper 20 (Nov. 26, 2013) (“[A]
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`disclosure that anticipates under 35 U.S.C. § 102 also may render the claim
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`unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of obviousness.”).
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`Once it is established that a single prior art reference discloses each limitation of a
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`claim, there is no need to further apply the remaining references to the claim for a
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`finding of obviousness. See, e.g., ADC Technology, Inc. v. Nintendo of North Am.,
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`Inc. et al., Reexam Nos. 95/001,234 and 90/009,521 (PTAB May 28, 2015)
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`(“Because we are sustaining the rejection of claims 1 and 5 for anticipation by
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`Matsuda, we also sustain the rejection of these claims for obviousness over Matsuda
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`in view of Tsumura.”); see also Vibrant Media, Inc. v. General Electric Co.,
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`IPR2013-00170, Paper No. 56 at 37 and Paper No. 55 at 13 (PTAB Jun. 26, 2014 and
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`Apr. 8, 2014) (Final Written Decision and Record of Oral Hearing) (Finding claims
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`obvious over a combination of two references notwithstanding observation during oral
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`argument that only one reference disclosed the claim elements).
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`On this record, the evidence is overwhelming that: (1) Liebenow, either alone
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`or in combination with Armstrong or Hedberg, discloses all elements of claims 1-3, 5-
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`5
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`13, and 15-20; (2) any combinations (i.e., Liebenow-Armstrong for claim 6 and
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`Liebenow-Hedberg for claims 11 and 19) would have been obvious to a PHOSITA;
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`and (3) there are no secondary considerations of nonobviouness sufficient to
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`overcome the strong showing of obviousness. Thus, the Board should conclude that
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`claims 1-3 and 5-10 are obvious in view of Liebenow and Armstrong, and that claims
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`11-13 and 15-20 are obvious in view of Liebenow and Hedberg.
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`B.
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` Hedberg Is Analogous Art
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`Without proposing a definition for the field of endeavor of the ‘692 Patent, and
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`without identifying any evidence to support a narrow understanding of the scope of
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`analogous art here, PO concludes that Hedberg is not analogous. See Paper 18,
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`Response at 6-19. PO’s conclusion should be rejected because it is rooted in a
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`misapplication of the law and a misunderstanding of the facts. Once the field of
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`endeavor is correctly defined, applying that definition to Hedberg shows that the
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`reference is within the field of endeavor of the ‘692 Patent.
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`Support for defining the field of endeavor come from a patent’s “written
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`description and claims, including the structure and function of an invention.” In re
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`Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Review of the written description and
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`claims of the ‘692 Patent makes clear that the field of endeavor should be defined to
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`include: “hand-held electronic devices with one or more input elements.” The claims
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`of the ‘692 Patent recite a method for use with a “hand-held electronic device” that
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`comprises at least an input element. See, e.g., Ex. 1001, ‘692 Patent at Claims 1, 12.
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`The written description broadly defines the field of the ‘692 Patent, stating that the
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`description “relates to human interface and input systems for electronic devices, such
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`as cell phones, personal digital assistants (“PDAs”), pocket personal computers, smart
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`phones, hand-held game devices, bar-code readers, remote controls, and other similar
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`input devices having a keypad or one or more input elements.” Id. at Col. 1:15-21.
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`Throughout the written description, the ‘692 Patent broadly describes its invention as
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`a “human interface and input system.” See, e.g., id. at Col. 4:32-39; 7:11-15; 7:53;
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`8:32-33. Elsewhere in the background, hand-held electronic devices are described in
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`the context of gaming to include “PDAs and conventional game console controllers.”
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`Id. at Col. 3:40-49. The figures of the ‘692 Patent illustrate a hand-held electronic
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`device with one or more input elements. See, e.g., id. at Figs. 3a, 4a, 5a, 6a, and 7a;
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`see also, e.g., In re Shaneour, 600 Fed. App’x. 734, (Fed. Cir. 2015) (affirming
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`Board’s field of endeavor definition, where the claims recite a “multiple fixture
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`lighting system” that is “capable of providing multiple output levels” and where the
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`Board classified the field of “lighting control systems.”).
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`No authority cited by PO supports a narrower definition for the ‘692 Patent’s
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`field of endeavor. In Clay, the application was entitled “Storage of a Refined Liquid
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`Hydrocarbon Product,” and the claims required using a gel in the process of “storing
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`said refined liquid hydrocarbon product in said storage tank…” In re Clay, 966 F.2d
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`656, 657-58 (Fed. Cir. 1992). The prior art described improving oil extraction by
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`using a gel to reduce permeability of oil-bearing rock formations. Id. at 658. The court
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`concluded that defining the field of endeavor as “maximizing withdrawal of
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`petroleum stored in petroleum reservoirs” was too broad. Id. at 659. Because the
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`claims and the specification were explicitly focused on storage of refined liquid
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`hydrocarbons as its field of endeavor, the court understandably limited the field of
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`endeavor to “the storage of refined liquid hydrocarbons,” and found that the prior art
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`was beyond that scope.
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`In Wang Labs., the context was review of a jury verdict finding validity, which
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`required the Federal Circuit to set aside its own view and affirm “unless appellants
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`show that no reasonable juror could have reached such a result.” Wang Labs., Inc. v.
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`Toshiba Corp., 993 F.2d 858, 863 (Fed. Cir. 1993). Applying that standard, the court
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`concluded that the jury could have defined the field of endeavor as “compact modular
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`memories,” because the patent’s written description and claims distinguished the
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`invention based on memory size and density. Id. at 861-62, 864-65; see also Ex. 1051,
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`U.S. Patent No. 4,656,605 to Clayton at Col. 3:4-8 (asserted patent discussed in Wang
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`Labs., distinguishing invention from “conventional dual in line terminal packages.”).
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`The court held that the jury could reasonably have found that prior art directed to
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`memory modules of varying size that use dual in-line packages was outside this field
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`of endeavor as defined by the claims and specification. Wang Labs., 993 F.2d at 864;
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`see also Ex. 1052, U.S. Patent No. 4,281,392 to Grants et al. at Col. 4:62-64 (prior art
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`patent discussed in Wang Labs.; describing “memory chips mounted in dual-in-line
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`packages.”).
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`At bottom, Clay limited the field of endeavor to scope that was explicitly
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`required by the claims and the context of the specification, and Wang Labs. found no
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`error where the field of endeavor excluded scope that was explicitly distinguished by
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`the patent. PO’s proposition here is something different. As explained in more detail
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`below, PO would exclude from the field of endeavor scope that is explicitly included
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`by the ‘692 Patent. None of the cases cited by PO supports PO’s view. Rather, these
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`cases support the conclusion that the field of endeavor should be construed as broadly
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`as the patentee has described and claimed it to be. See In re Singhal, 602 Fed. App’x
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`826, 830 (Fed. Cir. 2015) (citing In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004)
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`(“The scope of the field of endeavor is a factual determination based on the scope of
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`the application's written description and claims.”). Indeed, nearly 20 years after Clay
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`and Wang Labs., the Federal Circuit has rejected PO’s position that courts generally
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`decline to construe analogous art broadly. See Paper 18, Response at 12. To the
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`contrary, the Supreme Court’s KSR decision “directs us to construe the scope of
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`analogous art broadly, stating that ‘familiar items may have obvious uses beyond their
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`primary purposes, and a person of ordinary skill often will be able to fit the teachings
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`of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616
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`F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
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`398, 420 (2007)) (emphasis in original).
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`Turning to Hedberg specifically, Hedberg is within the field of endeavor of the
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`‘692 Patent. Hedberg describes and illustrates a hand-held device with several input
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`elements. See Ex. 1005, Hedberg at p. 3:6-11; Fig. 5; see also, e.g., Ex. 1040,
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`MacLean Tr. at 120:8-121:22 (“[Hedberg] teaches the use of a handheld data entry
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`device for a different purpose.”). Nothing more is required for Hedberg to meet a
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`properly defined field of endeavor for the ‘692 Patent.
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`PO argues that Hedberg is not within the same field of endeavor based on an
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`oversimplified view that Hedberg focuses on viewing rather than data entry. For
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`instance, PO asserts: “Hedberg addresses only viewing rather than information entry.”
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`Paper 18, Response, at 12-13 (emphasis in original). PO also asserts: “the ‘692 patent
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`does not describe its invention as a display or viewing system.” Id. at 14. But the field
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`of endeavor inquiry does not support this type of hair-splitting, as the ‘692 Patent
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`itself defines the field of endeavor to include the same type of devices disclosed in
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`Hedberg. According to PO’s own expert, a PHOSITA would have recognized that the
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`device described in Hedberg could be used for data entry. See Ex. 1040, MacLean Tr.
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`at 120:8-121:22 (Hedberg teaches a device that is “typically used” for data entry but
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`the substance of the Hedberg invention is “taking advantage of something else you
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`can make such a device do.”); see also Ex. 1005, Hedberg at p. 3:6-11 (“It is an object
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`of the present invention to provide a hand-held display device for use with an
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`electronic device, said display device being suitable for the purpose of a hand-held
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`data entry device as well as for both landscape and portrait presentations of a full-page
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`word processing document.”) (emphasis added); see also id. at Fig. 5. And a
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`PHOSITA would have also recognized that the device described in the ‘692 Patent
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`could include a display. See Ex. 1040, MacLean Tr. at 86:16-87:1 (not correct that the
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`‘692 Patent does not describe a display or viewing system); 88:7-21 (email and word
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`processing would include a graphical display); see also, e.g., Ex.1001, ‘692 Patent at
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`Figs. 3a, 4a, 5a, 6a, 7a, and Col. 8:43; see also id. at Col. 10:38-41 (discussing “a text
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`message application [that] is running on the electronic device 302 and displayed on
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`the screen 330….”). Indeed, the examples from Hedberg identified by Dr. MacLean
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`as being repurposed to implement the Hedberg invention are explicitly included in the
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`written description of the ‘692 Patent. See Ex. 1040, MacLean Tr. at 120:8-121:22;
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`compare Ex. 1005, Hedberg at p. 1 (describing electronic devices “such as mobile
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`telephone, a PDA (Personal Digital Assistant), an organizer, or a PC (personal
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`computer) etc.”) with Ex.1001, ‘692 Patent at 1:15-21 (describing “electronic devices,
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`particularly hand-held electronic devise, such as cell phones, personal digital
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`assistants (‘PDA’s), pocket personal computers, smart phones…” etc.). Put simply,
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`Hedberg and the ‘692 Patent involve the very same type of devices, and PO’s
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`argument should be rejected for that reason alone.
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`PO’s argument should also be rejected because PO and its expert conflate the
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`two separate analogous art inquiries, and assert that Hedberg must be outside the field
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`of endeavor because of the problems that it allegedly addresses. See Ex. 1040,
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`MacLean Tr. at 120:1-7. This analysis is irrelevant to the field of endeavor inquiry.
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`See, e.g., Bigio, 381 F.3d at 1325 (“Two separate tests define the scope of analogous
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`prior art: (1) whether the art is from the same field of endeavor, regardless of the
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`problem addressed and, (2) if the reference is not within the same field of the
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`inventor’s endeavor, whether the reference is still reasonably pertinent to the
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`particular problem with which the inventor is involved.”) (emphasis added). The
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`problem addressed by a prior art reference is only meaningful to the second test,
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`where the field of endeavor test has not already been satisfied. See id. Setting aside
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`PO’s flawed analysis, PO has not identified any evidence or any reason why the field
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`of endeavor here should be defined narrowly, or why Hedberg should not be included.
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`See Paper 18, Response at 6-15; see also id. at 1326-27 (affirming obviousness
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`finding, and noting that “substantial evidence must support the PTO’s factual
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`assessment of the field of endeavor” and such findings must have support in “the
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`application’s written description and claims, including the structure and function of
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`the invention.”).
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`In short, PO has not identified any support in the law or in the record for
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`narrowly defining the field of endeavor to exclude Hedberg. The Board should define
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`the field of endeavor based on the claims and written description of the ‘692 Patent to
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`include hand-held electronic devices with one or more input elements. The Board
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`should also find that Hedberg is within the field of endeavor because it plainly
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`satisfies the definition and because the devices described in Hedberg have similar
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`structure and function to the devices described and claimed in the ‘692 Patent.
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`C. All Challenged Claims Are Obvious
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`1.
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`Liebenow Discloses the Concept of Claim 3
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`PO has not moved to amend its claims in this proceeding, and PO has not
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`offered a claim construction position relevant to the concept of dependent claim 3. In
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`fact, PO previously advocated against construing claim 3 (and similar claims) in its
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`Preliminary Response and criticized Petitioner’s proposed construction as being too
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`narrow. Paper 14, POPR at 22. And yet, PO’s argument that claim 3 is patentable is
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`now premised on its assertion that Liebenow allegedly does not teach narrow concepts
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`that are not required by the claim itself. PO’s argument should be rejected for five
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`reasons.
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`First, the broadest reasonable interpretation of claim 3 does not require that the
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`application must draw the delineated active areas. Claim 3 requires: “a selectively
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`configurable sensing surface that provides more than one delineated active area based
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`on the selected application.” Ex. 1001, ‘692 Patent at Claim 3. PO asserts that this
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`“means that the delineations themselves are defined by the application.” Paper 18,
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`Response at 19 (emphasis in original). The plain language of the claim provides no
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`support for this. The language broadly states that the delineated areas are provided
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`“based on” the selected application, and does not state that the delineated areas must
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`be “defined” by the application. As Dr. Welch explained, a PHOSITA would
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`understand PO’s interpretation to be inconsistent with the ordinary and customary
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`meaning of the term. See Ex. 1041, Welch Supp. Decl. at ¶ 4. PO is simply rewriting
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`the claim.
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`To get to its manufactured construction, PO emphasizes a statement in the
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`written description that describes a sensor pad and states that it “may be configured in
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`software.” See id.; see also Ex. 1001, ‘692 Patent at Col. 9:24-27 (emphasis added).
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`In a quantum leap from this inclusive and broad statement, PO concludes that
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`delineations therefore must be drawn at the application level. See Paper 18, Response
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`at 19. This is a false conclusion for two reasons. For one, the phrase “in software”
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`does not mean only at the application level, and PO has not identified any factual
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`basis that would support such a narrow view. See id.; see also Ex. 1041, Welch Supp.
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`Decl. at ¶ 10. Further, even assuming that “in software” could be rewritten to mean
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`“in the application software,” there is still no reason to believe that this single sentence
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`from an exemplary embodiment should be read into claim 3 and understood to
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`exclude everything else. See Paper 18, Response at 19. To the contrary, PO
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`characterizes the ‘692 Patent’s disclosure as “wide and open-ended,” and PO does not
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`identify any reason to limit claim 3 to a particular embodiment or to exclude
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`embodiments from the scope of that claim. Id. at 19.
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`PO’s claim interpretation argument relies heavily on the opinion of Dr.
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`MacLean, and in particular what is meant by the claim term “provides”. See Paper
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`18, Response at 17-20. As a threshold matter, Dr. MacLean testified that she was not
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`familiar with the legal requirements of claim construction, and her process for coming
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`up with definitions of claim terms involved looking for differences between the ‘692
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`Patent and the prior art. See Ex. 1040, MacLean Tr. at 41:12-43:9. Dr. MacLean also
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`explained that the claim term “provides” does not have any technical meaning to a
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`PHOSITA. See id. at 47:20-25; 132:1-13. And she also explained that the general
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`definition of the term would include “makes available, gives.” See id. at 48:8-13.
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`Several times, Dr. MacLean agreed that claim 3 would not be as limited as PO
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`proposes in its argument. See, e.g., id. at 50:1-14 (Q: Is there any reason the
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`application could not select some type of keyboard that already existed in the
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`operating system? A: It can. That is one of the things that it can do. It’s not the only
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`thing. I think this claim language doesn’t limit it to that, but that is within the space of
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`what it can do….”); 69:19-71:7 (stating, inter alia, “I don’t believe that the examples
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`that I have quoted here exclude the possibility that the operating system could make
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`these available as preselected ones—preselected sets of delineations….”); 74:17-75:5
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`(different applications selecting the same delineation from the operating system is not
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`ruled out); 75:19-76:3 (“If I were seeing this invention rendered in a piece of
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`hardware or something like that, a product that is representing this thing … I would
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`expect to provide default layouts as well as providing the ability for an application to
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`draw their own….”). In short, claim 3 can include a situation where an application
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`draws delineations, but it also includes other situations, like where an application
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`selects a default keyboard. See Ex. 1041, Welch Supp. Decl. at ¶¶ 8-9.
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`The broader explanation provided by Dr. MacLean in her deposition is
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`consistent with the teachings of the ‘692 Patent, which discloses multiple applications
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`utilizing the same delineated active areas. For example, Figure 3d depicts an
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`implementation of the delineations described in the ‘692 Patent. See Ex. 1001, ‘692
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`Patent at Fig. 3d; 9:24-27. There are several examples in the ‘692 Patent where two
`
`different applications utilize the same delineated active areas. See, e.g., id. at 11:38-43
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`(text application utilizing U-shaped area 360); 12:13-18 (game application utilizing U-
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`shaped area 360). The fact that two different applications utilize the same delineated
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`active areas also comports with the understanding of a PHOSITA. See Ex. 1041,
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`Welch Supp. Decl. at ¶¶ 7-10. Additionally, a PHOSITA would understand that the
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`sizes, shapes and numbers of delineated active areas could be defined by hardware,
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`firmware, system-level software, or application-level software. See id. at ¶¶ 8-10.
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`This understanding comports with ‘692 Patent’s broad disclosure that “[t]he
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`computational aspects described here can be implemented in analog or digital
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`electronic circuitry, or in computer hardware, firmware, software, or in combinations
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`of them.” Ex. 1001, ‘692 Patent at 14:50-53.
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`Second, Liebenow need not disclose other narrow concepts that are not
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`required by the claims. PO acknowledges that Liebenow teaches keyboards, but then
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`PO criticizes this teaching for not including “a custom layout on a key-by-key basis.”
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`Paper 18, Response at 18. Then, after conceding that the keyboards in Liebenow can
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`be specified by an application, PO criticizes this teaching as limited to “conventional
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`keyboards.” Id. Even after conceding that Liebenow discloses selection of different
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`keyboards for different applications, PO criticizes this teaching as being in “the same
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`basic structure of pre-defined areas usable as keys.” Id. And yet PO has not identified
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`any claim construction reasoning, or any basis in the claims, for limiting the broadest
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`reasonable interpretation to keyboards that: (1) have a custom layout on a key-by-key
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`basis; (2) are unconventional; and (3) have non-pre-defined keys with a variety of
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`shapes and sizes. Even PO’s expert agrees that these concepts are not required. See
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`Ex. 1040, MacLean Tr. at 142:2-20 (claim 3 does not require a unique,
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`unconventional, or custom keyboard layout); 143:3-15 (claim 3 includes predefined
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`keys of a consistent size and shape).
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`Third, the file history of the ‘692’s parent application does not change the
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`analysis here. The allowable concept in the parent application is different than the
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`language of claim 3, because it required “one or more of the delineated active areas is
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`mapped to one or more functions associated with the selected application.” Ex. 2002,
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`Office Action at 7 (emphasis added). PO’s argument assumes that this difference is
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`meaningless, and inaccurately concludes that the Office has already found that
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`Liebenow does not disclose the concept of claim 3. Paper 18, Response at 20. One
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`problem with PO’s argument is that there is no support in the record for this type of
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`speculation about the examiner’s intent (i.e., assuming that the examiner would not
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`have considered the claim differences meaningful). Another problem with PO’s
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`argument is that it assumes that the examiner would reach the same conclusion given
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`the more robust record developed during inter partes review proceedings. The precise
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`claim limitation that PO cites issued as part of Claim 37 in USPN 7,218,313, and inter
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`partes review has already been instituted on that claim and others in the copending
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`proceeding IPR2015-00533 (hereinafter “the ‘533 Proceeding”).1 See Sony Computer
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`Entertainment America LLC v. Aplix IP Holdings Corporation, Case IPR2015-00533,
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`Paper 11, at 16 (PTAB June 22, 2015) (Institution Decision). In the Petition for the
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`‘533 Proceeding, Petitioner raised the fact that Liebenow had previously been
`
`considered with regard to this limitation of Claim 37, and despite this, the Board
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`1 The Board found Claims 37-42, 46, and 49 of the ‘313 Patent to be likely unpatentable
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`over Liebenow in view of Ishihara; however, only Liebenow was cited for the limitations
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`of Claim 37.
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`18
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`agreed with Petitioner and found it more likely than not that Liebenow teaches this
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`limitation. Id.; see also, IPR2015-00533 Paper 2, Petition at 14-15.
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`Fourth, the reasoning promoted by PO invites error. PO is attempting to
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`improperly read limitations into the claims from the specification, and to limit the
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`claims to particular embodiments. PO’s expert did not know that this is improper, and
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`her analysis amounted to a comparison of embodiments from the ‘692 Patent to
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`embodiments in the prior art, looking for distinctions. See Ex. 1040, MacLean Tr. at
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`41:12-43:9, 130:6-17. The Board should reject PO’s hindsight attempt to limit the
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`claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations
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`are not to be read into the claims from the specification.”); Hill-Rom Servs., Inc. v.
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`Stryker Corp., 755 F.2d 1367, 1372-73 (Fed. Cir. 2014) (quoting Teleflex, Inc. v.
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`Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)) (“[e
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