Trials@uspto.gov Paper 38
`571-272-7822
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`Date Entered: May 10, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00230
`Patent 7,463,245 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1–20 of U.S. Patent
`No. 7,463,245 B2 are unpatentable.
`
`
`
`
`571-272-7822
`
`Date Entered: May 10, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00230
`Patent 7,463,245 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1–20 of U.S. Patent
`No. 7,463,245 B2 are unpatentable.
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`A. Procedural History
`Petitioner, Sony Computer Entertainment America LLC, filed a
`Petition requesting an inter partes review of claims 1–20 of U.S. Patent No.
`7,463,245 B2 (Ex. 1001, “the ’245 patent”). Paper 2 (“Pet.”). Patent
`Owner, Aplix Holdings Corporation, filed a Preliminary Response. Paper 15
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, on May 14, 2015, we instituted an inter partes review of claims
`1–20, pursuant to 35 U.S.C. § 314. Paper 16 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 19 (“PO Resp.”)) and Petitioner filed a Reply (Paper 26
`(“Pet. Reply”)).
` Patent Owner filed a Motion for Observations (Paper 31) and
`Petitioner filed a Response to the Observations (Paper 35).
`An oral hearing was held on January 19, 2016, and a transcript of the
`hearing is included in the record (Paper 37; “Tr.”).
`B. Related Proceedings
`The ’245 patent is involved in the following lawsuit: Aplix IP
`Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
`(MLW) (D. Mass.). Pet. 59.
`C. The ’245 Patent
`The ’245 patent relates to hand-held electronic devices, such as cell
`phones, personal digital assistants (“PDAs”), pocket personal computers,
`smart phones, hand-held game devices, bar-code readers, and remote
`controls having a keypad or one or more input elements. Ex. 1001, 1:13–19.
`The hand-held device includes, on one surface, one or more software
`configurable input elements that can be manipulated by a user’s thumb(s) or
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`stylus, and on the other surface, one or more software configurable selection
`elements that can be manipulated by a user’s finger(s). Id. at Abstract.
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 12 are the only independent
`claims. Claims 2–11 depend either directly or indirectly from claim 1 and
`claims 13–20 depend either directly or indirectly from claim 12.
`Claim 1, reproduced below, is illustrative.
`1. A hand-held device comprising:
`a processor configured to process a selected application
`having two or more functions;
`a first surface including at least a first input element
`mapped to at least a first function of the selected application; and
`a second surface including at least a second input element
`having a sensor pad comprising a selectively configurable
`sensing surface that provides more than one delineated active
`area based on the selected application, wherein at least a first
`delineated active area is mapped to a second function of the
`selected application and a second delineated active area is
`mapped to a third function of the selected application, further
`wherein the second surface is substantially in opposition to the
`first surface.
`Ex. 1001, 15:28–43.
`
`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 1–20 on the following
`grounds:
`
`Claims
`1–5, 7, 10–15, 17, and
`20
`
`Basis
`
`References
`
`§ 103(a)
`
`Liebenow1 and Andrews2
`
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`1 Liebenow et al., US 2002/0118175 A1, Pub. Aug. 29, 2002 (Ex. 1003).
`2 Andrews et al., PCT WO 00/59594, Pub. Oct. 12, 2000 (Ex. 1004).
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`Claims
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`Basis
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`References
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`8, 9, and 17–19
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`§ 103(a)
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`Liebenow and Hedberg3
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`6
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`16
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`§ 103(a)
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`Liebenow and Martin4
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`§ 103(a)
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`Griffin5 and Liebenow
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`II. ANALYSIS
`A. Level of Skill of Person in the Art
`We find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`B. Claim Interpretation
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). Consistent with the broadest reasonable construction,
`claim terms are presumed to have their ordinary and customary meaning as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`
`3 Hedberg, PCT WO 99/18495, Pub. Apr. 15, 1999 (Ex. 1005).
`4 Martin et al., US 7,336,260 B2, Iss. Feb. 26, 2008 (Ex. 1006).
`5 Griffin et al., US 2003/0020692 A1, Pub. Jan. 30, 2003 (Ex. 1007).
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`Cir. 2007). Also, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“limitations are not to be read into the claims from the
`specification”). However, an inventor may provide a meaning for a term
`that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following claim terms:
`“delineated active area” and “the input element and the touch sensing input
`element are communicatively coupled to a host device.” Pet. 8–9. In our
`Decision to Institute, we determined that it was not necessary to construe
`“delineated active area” (claims 1 and 12) and agreed with Petitioner’s
`construction for “the input element and the touch sensing input element are
`communicatively coupled to a host device” (claim 17). Dec. 6. Neither
`party has indicated that our determinations in that regard were improper and
`we do not perceive any reason or evidence that now compels any deviation
`from our initial determinations. Accordingly, the following construction
`applies to this Decision:
`Claim Term
`the input element and the touch
`sensing input element are
`communicatively coupled to a host
`device (claim 17)
`
`
`Construction
`occurs when a handheld device is
`connected to a host device over a
`network
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`C. Obviousness Over Liebenow and Andrews
`Petitioner contends that claims 1–5, 7, 10–15, 17, and 20 are
`unpatentable under 35 U.S.C. § 103 based on Liebenow and Andrews.
`Pet. 24. To support its contentions, Petitioner provides a detailed showing
`mapping limitations of claims 1–5, 7, 10–15, 17, and 20 to structures
`described by Liebenow and Andrews. Pet. 11–27. Petitioner also relies
`upon the Declaration of Dr. Gregory F. Welch (Ex. 1010) to support its
`position.
`Liebenow describes an electronic hand-held information appliance
`having a display disposed on a first surface and an input device disposed on
`a second surface opposed to the first surface for inputting information. Ex.
`1003, Abstract. Figure 1 of Liebenow is reproduced below.
`
`
`As shown in Figure 1 of Liebenow, digital information appliance 100
`is sized and shaped to be held by a user in both hands. Housing 102 includes
`front surface 104 and back surface. Id. ¶ 25. One or more function keys
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`such as 150, 152, and 154 may be mounted on front surface 104. Display
`116 may be a touch-screen for touch or pen input of information and data.
`Id. ¶¶ 26, 33. Figure 5 of Liebenow is reproduced below.
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`As shown in Figure 5, back surface may be comprised of one or more
`touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
`defined as keys of a keyboard (emulated as an electromechanical keyboard
`seen in Figure 2) so that a user touching the panel within such an area would
`accomplish actuation of a key. Id. In particular, panel 140 may be divided
`into left and right key ranges 142 and 144, such that fingers of a user’s left
`and right hands may be positioned over the touch sensitive panel to be in
`position for typing. Various key configurations may be defined as desired
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`by the user or as required by the applications executed by the digital
`information appliance. Id.
`Liebenow further describes, in connection with the hand-held device,
`a processing system 502 that includes a central processing unit such as a
`microprocessor or microcontroller for executing programs, performing data
`manipulations, and controlling tasks of the hand-held device. Id. ¶¶ 21, 56,
`Fig. 13.
`
`Andrews describes a hand-held game system that maps input elements
`to specific game application functions. Ex. 1004, 6:10–14, 9:11–15.
`We begin our analysis with whether Andrews is analogous art. Patent
`Owner argues that Andrews is not analogous art because it is neither in the
`same field of endeavor as the ’245 patent nor reasonably pertinent to the
`particular problem addressed by the ’245 inventors. PO Resp. 12. We are
`not persuaded by Patent Owner’s arguments.
`The test for determining whether a prior art reference constitutes
`analogous art to the claimed invention is: (1) whether the prior art is from
`the same field of endeavor, regardless of the problem addressed, or (2) if the
`reference is not within the field of the inventor’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which
`the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004).
`Patent Owner conflates the two prong test, essentially only addressing
`whether Andrews is reasonably pertinent to the particular problem with
`which the inventors of the ’245 patent were involved. See, e.g., PO Resp. 12
`(“Andrews and the ’245 patent do not share the same field of endeavor . . . .
`[because Andrews] addresses a very different problem.”); Ex. 2005 ¶ 85
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`(Mr. Lim arriving at the field of endeavor for the prior art reference and the
`invention by looking at the problems solved by each). Such a showing is
`insufficient, because if the prior art reference is in the same field of
`endeavor, the test is satisfied, regardless of whether the prior art reference
`addresses the same problem identified by the inventors.
`In determining the field of endeavor, we look to the ’245 patent’s
`written description and claims, including the structure and function of the
`invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
`defining the field of invention, and in determining the relevance of Andrews
`to the obviousness inquiry, here a broad approach should be taken. Pet.
`Reply 5. Indeed, the Supreme Court provided guidance in determining the
`applicability of a reference’s teachings in an obviousness inquiry. In KSR
`Int’l Co. v. Teleflex Inc., the Court explained that if a feature has been used
`to improve one device, and a person of ordinary skill in the art would have
`recognized that it would improve a similar device in that field or another,
`implementing that feature on the similar device is likely obvious. KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
`Here, the appropriate scope of the field of endeavor is hand-held
`devices with one or more input elements. Ex. 1001, 1:13–19, claims 1 and
`12. Andrews is within the field of endeavor because it describes hand-held
`electronic devices, such as game controllers, with one or more input
`elements associated with various game controls. Ex. 1004, Title, Abstract,
`1:10–13. Moreover, we disagree with Patent Owner that Andrews is not
`relevant because it is directed to peripheral devices. PO Resp. 26.
`Peripheral devices, such as the described game controller in Andrews, are
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`within the field of endeavor set forth in the ’245 patent. Ex. 1001, 1:13–19,
`3:37–46.
`Because we find that Andrews is from the same field of endeavor as
`the claimed invention and provides relevant teachings to a person of
`ordinary skill in the art at the time of the invention, we need not consider
`Patent Owner’s arguments regarding whether Andrews is reasonably
`pertinent to the particular problem with which the inventors are involved.
`Claims 1, 7, 10–12, 17, and 206
`Claim 1 is similar in scope to independent claim 12. The parties argue
`these claims collectively, choosing claim 1 as representative. See, e.g., Pet.
`22; PO Resp. 29. Accordingly, the following discussion with respect to
`claim 1 equally applies to claim 12.
`Claim 1 requires a hand-held device comprising a processor
`configured to process a selected application having two or more functions.
`Ex. 1001, 15:28–30. For these limitations, Petitioner contends that
`Liebenow discloses a hand-held device (Liebenow appliance 100) including
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`6 Patent Owner argues that we should not rely on Petitioner’s anticipation
`arguments to evaluate obviousness, but that we should observe that no
`evidence has been presented about how any proposed combination of prior
`art references renders obvious claims 1, 7, 10-12, 17 and 20. PO Resp. 5.
`We decline to do so. Although Petitioner alleges these claims are
`unpatentable as obvious, yet appears to present a case of anticipation, we
`determine that such a presentation is not a basis for dismissing the petition.
`It is axiomatic patent law that a disclosure that anticipates under 35 U.S.C.
`§ 102 also may render the claim unpatentable under 35 U.S.C. § 103,
`because anticipation is the epitome of obviousness. See In re McDaniel, 293
`F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the
`epitome of obviousness.’”) (quoting Connell v. Sears, Roebuck & Co., 722
`F.2d 1542, 1548 (Fed. Cir. 1983)).
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`a processor (Liebenow microprocessor of processing system 502) configured
`to process a selected application (Liebenow word processing application)
`having two or more functions (“Space Bar,” “Ctrl,” “Alt,” and “Shift”
`functions). Pet. 12 (citing Ex. 1003 ¶¶ 25, 33, 56, 69, Figs. 1, 8, 16). We
`are persuaded by Petitioner’s showing, which we adopt as our own, that
`Liebenow discloses a hand-held device including a processor configured to
`process a selected application having two or more functions.
`Petitioner also contends that Liebenow describes a first surface (front
`surface 104 seen above) including a first input element (e.g., 146, 148, 150,
`etc.) mapped to at least a first function (“Space Bar,” “Ctrl,” “alt,” and
`“Shift” functions) of the selected application (word processing application)
`as recited per claim 1. Pet. 13–14. Patent Owner disagrees that Liebenow
`discloses a first input element mapped to at least a first function of the
`selected application as required by claim 1. PO Resp. 29. In particular,
`Patent Owner argues that one skilled in the art would not have considered
`the Liebenow Space Bar, Ctrl, Alt, and Shift keys to be “of” a selected
`application (word processing application), because the function of such keys
`are defined at the device or operating system level, and not at the application
`level. Id. We have considered the testimony to which we are directed in
`that regard. PO Resp. 29; Ex. 2003 ¶¶ 59–61. Dr. MacLean’s testimony,
`however, is based on her “view” that “of a selected application” indicates
`that mapping is specified at the level of the application and not at the device
`or operating system level, resulting in different applications having different
`mappings. Ex. 2003 ¶ 57. However, neither Patent Owner nor Dr. MacLean
`explain sufficiently why we should construe claim 1 that way. In particular,
`there is nothing in claim 1 that suggests how the mapping is specified, much
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`less that the mapping is specified at the level of the application and not at the
`device or operating system level resulting in different applications having
`different mappings as asserted. The argument, and Dr. MacLean’s
`testimony in support of the argument, are not commensurate in scope with
`the language of claim 1, and in any event are conclusory, not supported by
`record evidence.
`For example, Patent Owner has not directed us to where in the ’245
`patent, “of the selected application” requires us to read into the claim that
`mapping is specified at the level of the application and not at the device or
`operating system level. The portion of the Specification of the ’245 patent
`to which the parties direct our attention (PO Resp. 30; Pet. Reply 14)
`describes that the mapping of input elements to particular input functions for
`a given software application “may be customized by the application
`developer or the user through downloads or other programming modalities.”
`Ex. 1001, 8:13–18 (emphasis added). We disagree with Patent Owner that
`this passage would have indicated to a person of ordinary skill in the art that
`the selected application must be customized at the application level. The
`language “may” recited in the Specification of the ’245 patent (id.) is not a
`special definition; rather, it is permissive such that the software application
`“may be customized.” A person of ordinary skill in the art would have
`understood that the functionality of the selected application may be
`programmed at the application level or when the hand-held device is
`manufactured, for example, at the device or operating system level. In any
`event, as noted above, the claim language does not include any specificity
`with respect to when or how the device is customized. Based on the record
`before us, Petitioner has shown by a preponderance of the evidence that
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`Liebenow describes a first input element mapped to at least a first function
`of the selected application.
`Petitioner further contends with respect to claim 1 that Liebenow
`discloses a second surface (Liebenow back surface 106) including at least a
`second input element (back-surface input device 130) having a sensor pad
`(touch sensitive panels 140). Pet. 14. Petitioner further contends that the
`sensor pad includes a selectively configurable sensing surface that provides
`more than one delineated active area based on the selected application (e.g.,
`Liebenow Fig. 15), where the first active area is mapped to a second
`function of the application (Fig. 15 input of the “B” character) and a second
`active area is mapped to a third function of the application (Fig. 15 input of
`the “Y” character). As Petitioner explains, the key layouts in Liebenow
`change based on the selected application or may be uniquely configured by
`the user (e.g., selectively configurable based on the selected application),
`directing attention to the examples shown in Figures 15 and 16 of a key
`layout for a word processing application (Fig. 15) which is different than the
`key layout for the calculator application (Fig. 16). Id. at 14–18; Ex. 1003
`¶ 36.
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`Patent Owner argues that Liebenow does not show that a single
`selected application has different functions of the selected application
`mapped to first and second-surface input elements. PO Resp. 31–33. This
`argument is similar to the one previously discussed, because Patent Owner
`argues that Liebenow does not describe that the “Space Bar,” “Ctrl,” “Alt,”
`and “Shift” functions are associated with the word-processing application,
`because these functions are defined at the device or operating-system level
`and not at the application level. Id. at 32. We do not find Patent Owner’s
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`arguments persuasive for at least the reasons already discussed. Claim 1
`does not require defining keys or functions at any level, much less at the
`application level. Implicit in Patent Owner’s argument is that Liebenow
`does not describe using the keys on the front of the hand held device in
`connection with the described word processing application with respect to
`the back of the hand held device. Id., Ex. 2003 ¶ 76. Patent Owner’s
`argument, and Dr. MacLean’s testimony in that regard, are not
`commensurate in scope with the teachings of Liebenow and how a person of
`ordinary skill in the art would have read Liebenow.
`A person of ordinary skill in the art would understand Liebenow to
`describe that the keys on the hand held device may correspond to the keys of
`a conventional QWERTY keyboard such as the “space bar” on the front of
`the device (Ex. 1003, keys 146 and 148 of Figs. 1, 3, and 4, ¶ 33) and the
`letter keys on the back of the device (Ex. 1003, Fig. 15) used in word
`processing application. Ex. 1003 ¶¶ 33, 69; Pet. 12–18. The space bar on
`the front of the device, letters controlled by the left hand on the back of the
`device, and letters controlled by the right hand on the back of the device are
`each functions of the selected application. Ex. 1040, 188:21–189:2, 203:24–
`204:12 (Patent Owner’s expert testifying that a key in a word processing
`application can be considered a function of an application and that different
`character inputs or keys would be different functions of an application).
`Patent Owner also argues that Liebenow does not describe a
`selectively configurable sensing surface that provides more than one
`delineated active area based on the selected application. PO Resp. 33–34.
`Petitioner contends that Liebenow’s key layouts change based on the
`selected application or may be uniquely configured by the user, explaining
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`that the key layout for the word processing application (Ex. 1003, Fig. 15) is
`different than the key layout for the calculator application (Ex. 1003, Fig.
`16). Pet. 14–16; citing Ex. 1003 ¶¶ 36, 44, 66. Patent Owner acknowledges
`that “Liebenow teaches selection of predefined keyboards” and that
`“[d]ifferent keyboards can be pre-defined by the system and then selected
`and designated for use by a particular application,” but argues that such
`teachings do not meet the claim language because such emulated keyboards
`would be specified at the device or operating-system level and not at the
`application level. PO Resp. 33–34.
`Claim 1 does not require that the sensing surface that provides more
`than one delineated active area based on the selected application be
`selectively configurable at the application level as opposed to at the
`operating system or device level or that the delineations themselves are
`defined by the application (e.g., that the shape of the keypad, for example,
`be different for each different application) as argued. PO Resp. 35. These
`features are not recited in claim 1. Liebenow describes, for example, that
`the keys on the back of the hand held device may emulate a QWERTY
`keyboard, a Dvorak key configuration, non-English language key
`configuration, numeric keypad configuration, a telephone keypad
`configuration, or a user or application specified key configuration. Ex. 1003
`¶ 37; Tr. 12–14. Patent Owner has not shown sufficiently why such a
`description—one that Petitioner relies on in its Petition—does not meet the
`selectively configurable limitation. Based on the record before us, Petitioner
`has shown by a preponderance of the evidence that Liebenow describes a
`selectively configurable sensing surface that provides more than one
`delineated active area based on the selected application.
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`For claims 7, 10, 11, 17, and 20, each of which depends directly from
`either claim 1 or independent claim 12, Petitioner relies on Liebenow to
`meet the additional limitations of those claims. Pet. 28–29, 30. We agree
`with Petitioner’s showing, which we adopt as our own, that Liebenow
`discloses the additional limitations of claims 7, 10, 11, 17, and 20. Patent
`Owner does not argue these claims separately. PO Resp. 41.
`Claims 2–5 and 13–15
`Claim 2 depends directly from claim 1 and includes “wherein the
`selected application comprises a game application.” Ex. 1001, 15:44–45.
`Claim 13, which depends from independent claim 12, is similar. Petitioner
`relies on Andrews in combination with Liebenow to meet the limitations of
`claims 2 and 13. In particular, Petitioner relies on Andrews for its
`description of a hand-held game device with a plurality of game
`applications. Pet. 26. Petitioner argues that a person having ordinary skill in
`the art at the time of the invention would have appreciated that the hand-held
`device of Liebenow could also include a game application as taught by
`Andrews. Id. at 25, citing Ex. 1010 ¶¶ 38–40. Petitioner also argues, with
`supporting evidence, that both Andrews and Liebenow teach mapping input
`elements of a hand-held electronic device to the functions of a specific
`application, and that incorporating a game application in the Liebenow
`device would have yielded predictable results and increased desirability of
`the device due to increased function of the device. Id.
`Patent Owner argues that Liebenow and Andrews do not disclose
`claims 2 and 13. PO Resp. 36–38. In essence, Patent Owner argues that
`neither Liebenow nor Andrews alone teaches all of the limitations of claims
`2 and 13. See, e.g., PO Resp. 37–38 (arguing that there is no “teaching to
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`map an input element on a first surface to a first game application function
`and two different delineated active areas on a second surface to respective
`different functions of the same game application.”). However, one cannot
`show nonobviousness “by attacking references individually” where the
`rejections are based on combinations of references. In re Merck & Co., 800
`F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 426
`(CCPA 1981)). In this case, such arguments are not sufficient to rebut
`Petitioner’s showing that the combination of Liebenow and Andrews
`describes all of the claimed features of claims 2 and 13.
`We also have considered Patent Owner’s arguments regarding why
`there would be no reason to combine Liebenow and Andrews. PO Resp. 22–
`29. As explained above, Petitioner articulates a reasonable rationale with
`supporting evidence for combining Liebenow and Andrews. We are not
`persuaded by Patent Owner’s arguments that adding more functionality (e.g.,
`games) to Liebenow’s hand-held device would not have been desirable. Id.
`at 22–23. In support of its argument, Patent Owner relies on the testimony
`of Mr. Lim, Dr. MacLean, and a 1997 article to show that at the time of the
`invention, hand-held devices were simplistic, user-friendly devices that
`performed well. Id. at 23. However, Patent Owner does not explain, with
`supporting evidence, what features made such prior art devices simplistic,
`user-friendly, and well performing. Without something more, we will not
`speculate that the hand held devices at the time of the invention were
`simplistic, user-friendly and performed well because they did not include
`more than one application to run on the device, such as a gaming
`application. In any event, even Patent Owner’s expert, Dr. MacLean
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`acknowledged, during cross examination that at the time of the invention
`games were available for hand held devices. Ex. 1040, 24.
`Patent Owner also argues that since Liebenow is a data-entry-focused
`business device, not designed for the general consumer, a person of ordinary
`skill in the art would not have been motivated to add distracting games to it.
`PO Resp. 24–25. However, Patent Owner has not directed attention to
`where Liebenow describes the device in such a limited capacity. Mr. Lim’s
`testimony also is not supported by what Liebenow describes. Indeed,
`Liebenow describes the state of the art and indicates that compact digital
`information appliances are becoming increasingly common fixtures of
`everyday life. Ex. 1003 ¶ 3. A person of ordinary skill in the art at the time
`of the invention would have understood that Liebenow could be used in
`everyday life, e.g., by general consumers and was not limited to corporate
`use.
`
`We also are not persuaded by Patent Owner’s arguments that adding a
`game application to Liebenow’s hand held device would have required much
`more than minor modifications to software. PO Resp. 26–29. Patent
`Owner’s arguments regarding the difficulties a person of ordinary skill in the
`art would have encountered are narrowly based on incorporating physically
`all technicalities of Andrews into Liebenow. See, e.g., PO Resp. 28. The
`test for obviousness is what the combined teachings of the references would
`have suggested to a person of ordinary skill in the art, not whether one
`reference may be bodily incorporated into the structure of another reference.
`Keller, 642 F.2d at 413. To the extent that Patent Owner is suggesting that
`the combination would be beyond the skill set of a person of ordinary skill in
`the art, the ’245 patent itself tends to belie such a notion. Ex. 1001, 5:46–56.
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`There is no specificity in the ’245 patent Specification explaining what kind
`of software should be used or how the software should be written. Rather,
`the inventors of the ’245 patent indicate that a person of ordinary skill in the
`art, such as a software developer, would have been able to ascertain how to
`customize the software applications for games. Id.
`We have considered Patent Owner’s argument that one of ordinary
`skill in the art would not have added a gaming application to Liebenow’s
`device because using different delineated active areas on a rear touchpad for
`different game functions would not have been familiar to one of ordinary
`skill in the art. Patent Owner instead contends a person of ordinary skill in
`the art would have at best only utilized the front portion of the Liebenow
`device to play games. Id. at 39 (citing Ex. 2005 ¶¶ 109–112, 131). We have
`considered the evidence in support of Patent Owner’s arguments, but do not
`give such evidence much weight. Mr. Lim’s testimony is based on what
`Liebenow alone and what Andrews alone teach and not on the combination
`as a whole. For example, Mr. Lim testifies as follows:
`109. Liebenow teaches a touchpad for text input, and Andrews
`teaches a drawing pad for CAD. However, neither Liebenow nor
`Andrews teaches using a touchpad to play games. Hence,
`Andrews’ game software in a Liebenow appliance will not utilize
`the touchpad for game applications as taught by the ’245 Patent.
`
` Andrews’ game applications will not utilize the
`110.
`second-surface touchpad as taught by the ’245 Patent. Liebenow
`does not teach game applications on his appliance, and Andrews
`does not teach using the second surface or a touchpad to play
`games. On the other hand, the ’245 Patent teaches using the first
`and second surface of a handheld device to play games.
`Ex. 2005 ¶¶ 109–110.
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`The above testimony is demonstrative of Mr. Lim’s narrow focus on
`the individual teachings and not on what the combined teachings would have
`conveyed to a person of ordinary skill in the ar
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