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. IPR2015-00230
`
`Patent No. 7,463,245
`
`
`
`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
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00230
`
`Patent No. 7,463,245
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`
`
`
`
`
`
`
`
` Page
`
`
`
`TABLE OF AUTHORITIES ............................................................................. iv
`
`EXHIBIT LIST .................................................................................................. vi
`
`I.
`
`II.
`
`FACTUAL BACKGROUND .................................................................. 1
`
`THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS OF
`CLAIMS 1, 7, 10-12, 17, AND 20 ........................................................... 3
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART ................................... 5
`
`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`
`ANALOGOUS ART ................................................................................ 6
`
`
`A. Andrews is not analogous art ....................................................... 12
`
`B. Hedberg is not analogous art ........................................................ 16
`
`
`V. PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS
`
`DO NOT RENDER THE ’245 PATENT’S CLAIMS OBVIOUS ........ 19
`
`LIEBENOW AND ANDREWS do not render claims
`1-5, 7, 10-15, 17, and 20 obvious................................................. 20
`
`1.
`
`2.
`
`Liebenow and Andrews should not be combined .............. 22
`
`Even if wrongly combined, Liebenow and Andrews
`do not disclose claims 1-5, 7, 10-15, 17, and 20 ............... 29
`
`LIEBENOW AND HEDBERG do not render claims
`8, 9, and 17-19 obvious ................................................................ 41
`
`1.
`
`2.
`
`Liebenow and Hedberg should not be combined .............. 41
`
`Even if wrongly combined, Liebenow and
`Hedberg do not disclose claims 8, 9, and 17-19 ................ 43
`
`A.
`
`
`
`
`B.
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`
`
`
`
`C.
`
`
`
`LIEBENOW AND MARTIN do not render claim 6
`obvious ......................................................................................... 44
`
`1.
`
`2.
`
`Liebenow and Martin should not be combined ................. 45
`
`Even if wrongly combined, Liebenow and Martin
`do not disclose claim 6 ...................................................... 48
`
`
`D. GRIFFIN AND LIEBENOW do not render claim 16
`obvious ......................................................................................... 49
`
`
`
`1.
`
`2.
`
`Griffin and Liebenow should not be combined ................. 49
`
`Even if wrongly combined, Griffin and Liebenow
`do not disclose claim 16..................................................... 54
`
`
`VI. SECONDARY CONSIDERATIONS SHOW THAT THE ’245
`
`PATENT’S CLAIMS ARE NOT OBVIOUS ........................................ 55
`
`VII. CONCLUSION ...................................................................................... 60
`
`
`
`iii
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`
`
`
`
`
` Page
`
`
`
`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ.
`
`212 F.3d 1272 (Fed. Cir. 2000) .................................................... 58, 59
`
`Apple Inc. v. ITC
`
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................... 55
`
`Boehringer Ingelheim Vetmedica, Inc. v. Schering–Plough Corp.
`
`320 F.3d 1339 (Fed. Cir. 2003) .......................................................... 58
`
`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) ..................................................................................6
`
`In re Bigio
`
`381 F.3d 1320 (Fed. Cir. 2004) ...................................................... 8, 17
`
`In re Clay
`
`966 F.2d 656 (Fed. Cir. 1992) ...................................... 9, 10, 12, 13, 18
`
`In re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig.
`
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................... 58
`
`In re Klein
`
`647 F.3d 1343 (Fed. Cir. 2011) ................................................ 7, 11, 19
`
`InTouch Techs., Inc. v. VGo Communs., Inc.
`
`751 F.3d 1327 (Fed. Cir. 2014) .................................................... 42, 48
`
`
`
`
`iv
`
`
`
`
`
`KSR Int’l Co. v. Teleflex Inc.
`
`550 U.S. 398 (U.S. 2007) ......................................................... 7, 20, 23
`
`K-Tec, Inc. v. Vita-Mix Corp.
`
`696 F.3d 1364 (Fed. Cir. 2012) .................................................... 11, 19
`
`Leapfrog Enter. Inc. v. Fisher-Price Inc.
`
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................... 20
`
`Leo Pharm. Prods., Ltd. v. Rea
`
`726 F.3d 1346 (Fed. Cir. 2013) .................................................... 56, 58
`
`Mintz v. Dietz & Watson, Inc.
`
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................... 56
`
`MEHL/Biophile Int'l Corp. v. Milgraum
`
`192 F.3d 1362 (Fed. Cir. 1999) .............................................................4
`
`MobileMedia Ideas LLC v. Apple Inc.
`
`780 F.3d 1159 (Fed. Cir. 2015) .......................................................... 24
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.
`
`520 F.3d 1358 (Fed. Cir. 2008) .......................................................... 55
`
`Ruiz v. A.B. Chance Co.
`
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................... 19
`
`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) .......................................................... 56
`
`Wang Labs., Inc. v. Toshiba Corp.
`
`993 F.2d 858 (Fed. Cir. 1993) ...................................... 8, 10, 12, 13, 17
`
`Other References
`
`Janice M. Mueller, Patent Law (4th ed. 2013) ................................................7
`
`
`
`
`v
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`Exhibit 1001 U.S. Patent 7,463,245
`
`Exhibit 1003 U.S. Patent Application Publication No. 2002/0118175 to
`Liebenow et al.
`
`Exhibit 1004
`
`International Publication No. WO2000/59594 to Andrews et
`al.
`
`Exhibit 1005
`
`International Publication No. WO1999/18495 to Hedberg
`
`Exhibit 1006 U.S. Patent No. 7,336,260 to Martin et al.
`
`Exhibit 1007 U.S. Patent Application Publication No. 2003/0020692 to
`Griffin et al.
`
`Exhibit 1010
`
`Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 1015 Michael McCandless, The PalmPilot and the handheld
`revolution, IEEE Expert pp. 6-8 (November/December 1997)
`
`Exhibit 1016
`
`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
`
`
`
`vi
`
`
`
`
`
`Exhibit 2005
`
`Expert Declaration of Peng Lim
`
`Exhibit 2006
`
`Professional Summary of Peng Lim
`
`Exhibit 2007 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 2008 Wikipedia entry on “List of Blackberry products” at
`https://en.wikipedia.org/wiki/List_of_BlackBerry_products,
`accessed 8/3/2015
`
`Exhibit 2009 Keyboard image at http://www.computerhistory.org/
`collections/catalog/102642008, accessed 8/2/2015
`
`Exhibit 2010
`
`Patent US 5,305,017
`
`Exhibit 2011 Wikipedia entry on “Touchpad” at
`https://en.wikipedia.org/wiki/Touchpad, accessed 8/1/2015
`
`Exhibit 2012
`
`Buxton, W., Multi-Touch Systems that I Have Known and
`Loved, at www.billbuxton.com/multitouchOverview.html,
`accessed 8/2/2015
`
`Exhibit 2013 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 2014 Wikipedia entry on “IBM Simon” at
`https://en.wikipedia.org/wiki/ IBM_Simon, accessed 8/2/2015
`
`Exhibit 2015 Wikipedia entry on “Casio PB 1000” at
`https://en.wikipedia.org/wiki/Casio_PB-1000, accessed
`8/2/2015
`
`Exhibit 2016
`
`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
`
`
`
`vii
`
`
`
`
`
`Exhibit 2017 Wikipedia entry on “List of iPod models” at
`https://en.wikipedia.org/wiki/List_of_iPod_models, accessed
`8/2/2015
`
`Exhibit 2018 Microsoft Teams with Interlink Electronics for Xbox
`Controllers, at www.Gamasutra.com, accessed 8/2/2015
`
`Exhibit 2019 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
`
`Exhibit 2020 Wikipedia entry on “Camera phone” at
`https://en.wikipedia.org/wiki/Camera_phone, accessed
`8/3/2015
`
`Exhibit 2021
`
`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 2022 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 2023
`
`Excerpt from The History of Tablet Computers – a Timeline,
`http://www.zdnet.com/article/the-history-of-tablet-computers-
`a-timeline, accessed 8/4/15
`
`Exhibit 2024
`
`Fujitsu Sylistic 2300, Pen Computing Magazine, April 1999
`
`Exhibit 2025
`
`A Brief History of Handheld Video Games, Endgadget.com,
`March 3, 2006
`
`Exhibit 2026
`
`Excerpt from 25 Worst Gadgets Flops of All Time, Laptop
`magazine, March 23, 2013
`
`Exhibit 2027 Wikipedia entry on “Touchscreen” at
`https://en.wikipedia.org/wiki/Touchscreen, accessed 8/1/2015
`
`
`
`viii
`
`
`
`
`
`Exhibit 2028 History of the Touch-Screen,
`http://compsci02.snc.edu/cs225/2010/touchScreen/history--
`evolution.html, accessed 8/1/2015
`
`Exhibit 2029
`
`Touch Controls (/touch-controls/3015-256/), Games that are
`controlled partially or entirely with a touch screen,
`www.giantbomb.com, accessed 8/1/2015
`
`Exhibit 2030
`
`Inspiring Quotes and Words of Wisdom from Steve Jobs by
`Parin, http://www.thegreatnessmind.com/
`2011/09/29/inspiring-quotes-and-words-of-wisdom-from-
`steve-jobs, accessed 8/4/2015
`
`Exhibit 2031 N-Gage Sales Goal at http://www.ign.com/articles/2003/
`10/09/n-gage-sales-goal, accessed 8/5/2015
`
`Exhibit 2032
`
`PDA sales soar in 2000,
`http://cnnfn.cnn.com/2001/01/26/technology/handheld,
`January 26, 2001
`
`Exhibit 2033
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00229 and IPR2015-00230, July 28-29, 2015
`
`ix
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`
`FACTUAL BACKGROUND
`
`As detailed in the district-court complaint (ex. 2001), 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 (¶ 2). 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 (id.). The team also designed hand-held
`
`accessory devices that would enable users to remotely operate (and play video
`
`games on) cell phones and tablet devices (id.).
`
`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 December 9, 2008, the ’245 patent, titled “Human
`
`Interface System.” The patent was assigned to Dr. Marcus’ company, Zeemote,
`
`Inc., a Boston-area start-up, which sought to commercialize the technology
`
`(id.). Aplix, a Japanese operating company, later acquired Zeemote’s assets,
`
`including the ’245 patent (id.).
`
`The ’245 patent claims a hand-held electronic device including first and
`
`second surface input elements, at least one second surface input element having
`
`a sensor pad or touch-sensing input element “comprising a selectively
`
`
`
`1
`
`
`
`
`
`configurable sensing surface that provides more than one delineated active area
`
`based on the selected application” (claims 1 and 12). The claims require that
`
`the device enable mapping between first, second, and third functions of an
`
`application and, respectively, an input element on a first surface, on a first
`
`delineated active area of the configurable sensing surface, and on a second
`
`delineated active area of the configurable sensing surface.
`
`Petitioner’s lead prior-art reference, Liebenow, was vetted by the USPTO
`
`during related prosecution of the ’245 patent’s parent application. Although the
`
`USPTO gave a detailed analysis of Liebenow in initially rejecting many of the
`
`claims in the ’245 patent’s parent application, it found that Liebenow does not
`
`disclose limitations very similar to those of the ’245 patent’s claims (and
`
`discussed in detail below in section V.A.2.a.iii.).1
`
`By providing delineated active areas based on a selected application and
`
`enabling selective mapping of those areas to different application functions, in
`
`combination with enabling yet other functions to be mapped to a first-surface
`
`input element, the ’245 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’ team’s innovations
`
`were well ahead of their time in the infancy of the smartphone world.
`
`
`1
`Ex. 2002 (10-5-06 Office Action) at 2-7.
`
`
`
`2
`
`
`
`
`
`
`II.
`
`
`
`THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS OF
`CLAIMS 1, 7, 10-12, 17, AND 20.
`
`Petitioner based its lead argument on § 102 grounds, arguing that
`
`Liebenow anticipates the ’245 patent’s claims 1, 7, 10-12, 17, and 20.2
`
`Petitioner offered no argument whatsoever about how any combination of
`
`Liebenow and another reference renders claims 1, 7, 10-12, 17, and 20 obvious.
`
`The petition’s sections on a Liebenow-Andrews combination and a Liebenow-
`
`Hedberg combination include claim charts that contain no evidence about how
`
`those proposed combinations render claims 1, 7, 10-12, 17, and 20 obvious.
`
`Petitioner’s only obviousness argument as to these claims is to incorporate by
`
`reference its contentions about anticipation,3 a ground on which the Board
`
`opted not to proceed. The same is true of Petitioner’s presentation about a
`
`Liebenow-Martin combination: As to claims 1, 7, and 10-11, Petitioner’s sole
`
`obviousness argument is to point to its earlier argument about anticipation.4
`
`The tests for obviousness and anticipation are different. “To anticipate a
`
`claim, a prior art reference must disclose every limitation of the claimed
`
`
`2
`Paper No. 2 (petition) at 10-24.
`
`3
`
`Paper No. 2 (petition) at 25 (next-to-last sentence on page) and 28
`
`(second paragraph, first sentence).
`
`4
`
`Paper No. 2 (petition) at 31 (next-to-last sentence).
`
`
`
`3
`
`
`
`
`
`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 reach beyond the boundaries of Liebenow, eschewing
`
`a review of the anticipation ground and instead opting to evaluate obviousness.
`
`The Board’s obviousness review involves four possible combinations of
`
`Liebenow and other references. (Patent Owner Aplix addresses these other
`
`references in section IV below and addresses the proposed combinations in
`
`section V below.) As to Liebenow and Andrews, for example, the Board’s
`
`institution decision says that “[w]e have reviewed the proposed ground of
`
`obviousness over Liebenow and Andrews . . . 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.”5
`
`
`5
`Paper No. 16 (institution decision) at 11 (emphasis added), 16.
`
`
`
`4
`
`
`
`
`
`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, 7, 10-12, 17, and
`
`20—and should find that therefore those claims are not invalid.
`
`
`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. Petitioner’s expert agreed on cross-examination that it
`
`could be just one year.6
`
`
`
`
`6
`Ex. 2033 (Welch depo) at 62:6-23.
`
`
`
`5
`
`
`
`
`
`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`ANALOGOUS ART.
`
`
`
`The Board has instituted review based on five alleged prior-art references
`
`submitted by Petitioner:
`
`Liebenow US 2002/0118175 A1 Aug. 29, 2002
`
`(Ex. 1003)
`
`Andrews WO 2000/59594
`
`Hedberg WO 1999/18495
`
`
`
`
`
`Oct. 12, 2000
`
`(Ex. 1004)
`
`Apr. 15, 1999
`
`(Ex. 1005)
`
`Martin
`
`US 7,336,260 B2
`
`Feb. 26, 2008
`
`(Ex. 1006)
`
`Griffin
`
`US 2003/0020692 A1
`
`Jan. 30, 2003
`
`(Ex. 1007)
`
`The Board has opted to institute proceedings to evaluate whether the ’245
`
`patent’s claims are obvious under § 103(a), or not, in light of four specific
`
`combinations: Liebenow-Andrews, Liebenow-Hedberg, Liebenow-Martin, and
`
`Griffin-Liebenow.
`
`
`
`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
`
`
`
`6
`
`
`
`
`
`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 ’245
`
`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
`
`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
`
`
`
`7
`
`
`
`
`
`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,
`
`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.
`
`
`
`8
`
`
`
`
`
`
`
`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
`
`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
`
`
`
`9
`
`
`
`
`
`inventor may well have been motivated to consider
`
`the reference when making his invention. If it is
`
`directed to a different purpose, the inventor would
`
`accordingly have had less motivation or occasion to
`
`consider it.
`
`
`Clay, 966 F.2d at 659 (emphasis added). Applying these principles, Clay held
`
`that the problem that the prior-art reference was trying to solve—extracting oil
`
`from rock—was not reasonably pertinent to the inventor’s problem, which was
`
`storing oil and preventing its loss. Id.
`
`
`
`What art is “reasonably pertinent” depends heavily on facts. In Wang,
`
`for example, the Federal Circuit sustained a non-obviousness finding based in
`
`significant part on expert testimony that a person of skill in the art trying to
`
`solve the problem of compact, modular memories for personal computers would
`
`not have considered art “developed for use in a controller of large industrial
`
`machinery and [that] could not be used in a personal computer.” 993 F.2d at
`
`864. The differences in the problems to be solved were dispositive. Because
`
`Wang was trying to solve a compact, modular memory problem that the cited
`
`prior art (dealing with large industrial machinery) did not need to address, the
`
`Federal Circuit found sufficient evidence to support a finding that the art was
`
`not reasonably pertinent. See id. at 865.
`
`
`
`10
`
`
`
`
`
`Likewise, in K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed.
`
`Cir. 2012), the patent claimed a five-walled container for a blender. Its shape
`
`created a vortex, blending liquid away from the central axis and toward a
`
`truncated wall. This in turn created a flow pattern that reduced the container’s
`
`cavitation, increasing the blending’s speed and efficiency. As part of its
`
`obviousness case, the accused infringer cited container prior art from non-
`
`blender applications such as food mixers. But the Federal Circuit affirmed the
`
`district court’s finding that the accused infringer had not offered a sufficient
`
`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.
`
`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
`
`substantial evidence. 647 F.3d at 1350. There, a patent owner challenged the
`
`Board’s obviousness determination regarding his invention—a mixing device to
`
`prepare nectar for different types of birds and butterflies. Id. at 1345. The
`
`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
`
`
`
`11
`
`
`
`
`
`problem of making a nectar feeder with a movable divider to prepare different
`
`ratios of sugar and water for different animals, would not have been motivated
`
`to consider any of these references when making his invention.” Id. (internal
`
`citations omitted). The Federal Circuit expressly disapproved of the Board’s
`
`attempt to “redefine the problem” in order to force an analogy. Id. at 1351 n.1.
`
`A. Andrews is not analogous art.
`
`
`
`Andrews (ex. 1004) is neither in the same field of endeavor as the ’245
`
`patent nor reasonably pertinent to the particular problem the ’245 inventors
`
`were trying to solve.
`
`Andrews and the ’245 patent do not share the same field of endeavor
`
`merely because both may arguably relate to hand-held electronic devices. See
`
`Wang, 993 F.2d at 864 (industrial computer memories not in the same field of
`
`endeavor as compact modular memories); Clay, 966 F.2d at 659 (“Sydansk
`
`cannot be considered to be within Clay's field of endeavor merely because both
`
`relate to the petroleum industry”). The ’245 patent’s function and structure
`
`address human interfaces and input systems for hand-held electronic devices.
`
`(Ex. 1001, 1:13-15.) Andrews, in contrast, addresses a very different
`
`problem—namely, applications that have difficulty communicating with
`
`unanticipated peripheral input devices. (Ex. 1004, 4:9-10.) In other words,
`
`while the ’245 patent addresses the design of a human-device interface,
`
`
`
`12
`
`
`
`
`
`Andrews addresses only a specific problem related to device-device
`
`communication; it has nothing to say about how to design input interfaces.
`
`(Ex. 2005, Lim ¶ 85.) These clear differences in the structure and function of
`
`the invention (the ’245 patent) and the prior art (Andrews) mean that the two
`
`occupy distinctly different fields of endeavor.
`
`Likewise, the purposes of the ’245 patent and Andrews are very different,
`
`and thus Andrews would not have “logically . . . commended” itself to the
`
`attention of the ’245 inventors. Clay, 966 F.2d at 659. To begin with,
`
`Andrews’ description of the background context references peripheral devices
`
`that communicate with a computer using the Human Interface Device (HID)
`
`standard. (Ex. 1004, 3:6-9; ex. 2005, Lim ¶ 85.) But Andrews does not address
`
`the human interface design (e.g., control locations, type, and use) of such
`
`devices. Instead, Andrews addresses the problem of how input elements on
`
`those peripheral devices are named and associated with actions in applications.
`
`(Ex. 1004, 3:16-4:8; ex. 2005, Lim ¶ 85.) Given this fundamentally different
`
`purpose, the ’245 inventors would have had no motive or occasion to consider
`
`Andrews in developing their invention. See, e.g., Wang, 993 F.2d at 864-65;
`
`Clay, 966 F.2d at 659.
`
`While the ’245 patent can, in some instances, be applied to hand-held
`
`electronic devices that are connected to other devices (e.g. Fig. 8, 1:19, 14:46-
`
`
`
`13
`
`
`
`
`
`55), Petitioner does not point to Andrews’ peripheral devices as themselves
`
`being the hand-held devices that allegedly make Andrews pertinent to the ’245
`
`patent. Instead, the petition repeatedly cites to 6:10-14 of Andrews—which
`
`references “hand-held devices” in a list of “other computer system
`
`configurations” with which Andrews’ invention could be practiced—to support
`
`the contention that Andrews is analogous to the ’245 patent.7 Andrews’ Figure
`
`1 shows a computer 20, described as “a conventional personal computer”
`
`(Fig. 1, 6:20-21), connected to various peripheral devices, including keyboard
`
`40, mouse 42, drawing pad 65, and driving game controller 66. Petitioner’s
`
`expert testified that the “hand-held device” referenced in Andrews 6:10-14
`
`means that Figure 1’s computer 20 could, in alternative embodiments, be a
`
`hand-held device with peripheral devices plugged into it.8 But even in that
`
`embodiment, Andrews would still not address mapping a hand-held device’s
`
`controls to application functions. Rather, Andrews would still be addressing
`
`only the mapping of peripheral devices plugged into the hand-held device. (Ex.
`
`2005, Lim ¶ 86.) In fact, as Petitioner’s own expert testified regarding
`
`
`7
`Petition at 24, 26; ex. 1010 (Welch dec) at 20.
`
`8
`
`Ex. 2033 (Welch depo) at 188:13-23, 190:25-191:7, 193:5-10.
`
`
`
`14
`
`
`
`
`
`Andrews, “the whole patent is inherently about – is about, peripheral
`
`devices….”9
`
`Andrews has nothing to say about mapping inputs that are on-board
`
`computer 20, whether computer 20 is a “conventional personal computer” or a
`
`hand-held device. Thus, while Andrews’ computer 20 can, in one embodiment,
`
`be a hand-held device, Andrews is silent about the human-interface input
`
`elements that are onboard that device. For these reasons, a person of ordinary
`
`skill
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
