UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`____________
`
`Case No. IPR2015-00230
`Patent 7,463,245
` ____________
`
`
`
`SUPPLEMENTAL DECLARATION OF DR. GREGORY F. WELCH
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`
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`
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`SCEA Ex. 1042 Page 1
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`
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`____________
`
`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 7,463,245
` ____________
`
`
`
`SUPPLEMENTAL DECLARATION OF DR. GREGORY F. WELCH
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`
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`SCEA Ex. 1042 Page 1
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`I, Gregory F. Welch, hereby declare the following:
`1.
`I have been asked to respond to certain issues raised by Patent Owner
`
`(“PO”) and their experts, Dr. Karon MacLean and Mr. Peng Lim, in Patent Owner
`
`Aplix IP Holdings Corporation’s Response to the Petition dated August 6, 2015
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`(“Paper No. 19”). All of my opinions expressed in my original declaration dated
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`November 7, 2014 (Ex. 1010) remain the same. I have reviewed the following
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`additional materials in connection with preparing this supplemental declaration:
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`Paper No. 16, Decision Institution of Inter Partes Review dated May
`14, 2015;
`Paper No. 19, Patent Owner Aplix IP Holdings Corporation’s
`Response to the Petition dated August 6, 2015;
`Ex. 1026, Pen Computer Technology, Fujitsu PC Corporation (2002);
`Ex. 1029, Stylistic® ST4000 Series Tablet PC Technical Reference
`Guide, Fujitsu PC Corporation (2002);
`Ex. 1030, Paul Thurrott, Windows XP Tablet PC Edition Review (June
`25, 2002);
`Ex. 1039, Ben Chiu, Microsoft Flight Simulator 2000 Strategies &
`Secrets, Sybex, Inc. (1999);
`Ex. 1041, Transcript of the deposition of Peng Lim taken in IPR2015-
`00230, October 28, 2015;
`Ex. 1043, Ben Shneiderman. Designing the User Interface: Strategies
`for Effective Human-Computer
`Interaction. Addison-Wesley
`Longman Publishing Co., Inc., Boston, MA, USA, 3rd edition, 1997;
`Ex. 1044, Peter Tarasewich, “Wireless Devices
`for Mobile
`Commerce: User Interface Design and Usability”, Mobile Commerce:
`Technology, Theory, and Applications, Idea Group Publishing (2002);
`Ex.
`1045,
`Newton,
`Reconsidered,
`Harry McCracken,
`http://techland.time.com/2012/06/01/newton-reconsidered/print,
`accessed 11/23/15;
`Ex. 1046, Corin R. Anderson, Pedro Domingos, Daniel S. Weld, Web
`Site Personalizers for Mobile Devices, IJCAI Workshop on Intelligent
`Techniques for Web Personalization (ITWP) (2001);
`
`
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`1
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`SCEA Ex. 1042 Page 2
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`I.
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`•
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`•
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`•
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` Ex. 1047, Parisa Eslambolchilar and Roderick Murray-Smith. Tilt-
`based automatic zooming and scaling in mobile devices – a state-
`space implementation. In S. Brewster and M. Dunlop, editors, Mobile
`Human-Computer Interaction - MobileHCI 2004, volume 3160 of
`Lecture Notes in Computer Science, pages 120–131. Springer Berlin
`Heidelberg, 2004;
`Ex. 1048, Jun Rekimoto. “Tilting operations for small screen
`interfaces.” In Proceedings of the 9th annual ACM symposium on
`User interface software and technology, UIST ’96, pages 167–168,
`New York, NY, USA, October 7–10 1996. ACM;
`Ex. 1049, Ken Hinckley, Jeff Pierce, Mike Sinclair, and Eric Horvitz.
`“Sensing techniques for mobile interaction.” In Proceedings of the
`13th Annual ACM Symposium on User Interface Software and
`Technology, UIST ’00, pages 91–100, New York, NY, USA, 2000.
`ACM;
`Ex. 1050, Joel Bartlett. “Rock ’n’ scroll is here to stay.” Computer
`Graphics and Applications, IEEE, 20(3):40–45, May 2000;
`Ex. 2003, Declaration of Dr. Karon MacLean dated August 6, 2015;
`Ex. 2005, Declaration of Peng Lim dated August 6, 2015;
`Ex. 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; and
`Ex. 2024, Fujitsu Stylistic 2300, Pen Computing Magazine, April
`1999.
`
`OPINION
`A. The ‘245 Patent Does Not Require the Application to “Draw” the
`Delineated Active Areas
`
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`2. With regard to Claim 1 (and also Claim 12) of the ‘245 Patent, Dr.
`
`MacLean opines that the claim limitation “a second surface including at least a
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`second input element having a sensor pad comprising a selectively configurable
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`sensing surface that provides more than one delineated active area based on the
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`selected application” requires the application “to specify the spatial demarcations
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`2
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`SCEA Ex. 1042 Page 3
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`of the delineations according to the applications specific needs.” Ex. 2003 at ¶ 87.
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`Dr. MacLean further opines “disclosure of ‘245’s Claim 1 clearly requires these
`
`delineations to be determined by the application and its specific requirements, not
`
`by the hardware or operating system.” Id. at ¶ 90. Dr. MacLean also suggests that
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`the claim term “providing” means “drawing/defining” the delineated active areas.
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`Id. at ¶ 101 (“I list two examples from the ‘245 specification where ‘245 sets its
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`standard from both of providing (i.e. drawing/defining) rather than just selecting of
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`system-defined delineations . . . .”). For reasons described below, I respectfully
`
`disagree with these opinions.
`
`3.
`
`I have been informed that in proceedings before the USPTO the claims
`
`of an unexpired patent are to be given their broadest reasonable interpretation in
`
`view of the specification from the perspective of one skilled in the art. The
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`broadest reasonable
`
`interpretation does not mean
`
`the broadest possible
`
`interpretation. Rather, the meaning given to a claim term must be consistent with
`
`the ordinary and customary meaning of the term (unless the term has been given a
`
`special definition in the specification), and must be consistent with the use of the
`
`claim term in the specification and drawings. Further, the broadest reasonable
`
`interpretation of the claims must be consistent with the interpretation that those
`
`skilled in the art would reach. I have been informed that the ‘245 Patent has not
`
`
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`3
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`SCEA Ex. 1042 Page 4
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`expired. It is also my understanding the Board has not expressly construed any
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`terms in Claims 1 and 12 to date.
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`4. Dr. MacLean’s opinion is inconsistent with the ordinary and customary
`
`meaning of the claim term “a selectively configurable sensing surface that provides
`
`more than one delineated active area based on the selected application.” Dr.
`
`MacLean opines “I see a distinction between an application’s ‘selecting’ from a set
`
`of basic delineations provided by the hardware or operating system and ‘providing’
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`delineations with spatial boarders that are potentially unique to that application as
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`required by the ‘245 patent.” Ex. 2003 at ¶ 87 (emphasis in original). However,
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`Claim 1 does not recite that the application “provides” the delineated active areas.
`
`Rather, the plain language of the claim recites that the “selectively configurable
`
`sensing surface” – not the application – “provides the more than one delineated
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`active areas.”
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`5.
`
`I see nothing in the ‘245 Patent specification that would have led a
`
`person having ordinary skill in the art to conclude that the spatial boundaries of the
`
`delineated active areas must be drawn or defined by the application in order to be
`
`“based on the selected application.” Figure 3d of the ‘245 Patent depicts a
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`configuration of multiple delineated active areas arranged on a pressure senor pad:
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`4
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`SCEA Ex. 1042 Page 5
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`Ex. 1001 at Fig. 3d; see also, id. at 9:20-23 (“As shown in FIG. 3d, the pressure
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`sensor pad 354 may be configured in software to represent one or more delineated
`
`active areas corresponding to different programmable functions depending on the
`
`application.”). The ‘245 Patent also describes two applications, a text application
`
`and a game application, that are both mapped to the same delineated active areas
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`shown in Figure 3d.
`
`6.
`
`In particular, the inverted U-shaped active area 360 with vertical sides
`
`362 and horizontal side 364 may be mapped to shifting functions in a text
`
`application and game character movement controls in a game application. Id. at
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`11:34-39 (“Another method to implement full keyboard capability . . . is map in
`
`software the delineated active areas of the second input assembly 350 as follows:
`
`left vertical side 362 of the inverted U-shaped active area 360 to be shift position 1;
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`anywhere along the horizontal side 364 to be shift position 2 . . . .”); 12:9-14 (“In
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`5
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`SCEA Ex. 1042 Page 6
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`this implementation, the vertical side 362 of the inverted U-shaped active area 360
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`may be programmed to represent the y-directional (vertical) movement of control
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`of a character in a game, while the horizontal side 364 of the U-shaped active area
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`360 may be programmed to represent the x-directional (horizontal) movement.”).
`
`The five oblong shaped areas 372 may be mapped to indexing or shifting functions
`
`in a text application and weapon fire functions in a game application. Id. at 10:48-
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`50 (“For example, going from left to right, each oblong-shaped active area 372
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`may be mapped to represent a separate index or shift position . . . .”); 12:17-20
`
`(“Rapid firing of weapons may be accomplished by using . . . one of the five
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`oblong-shaped active areas 372, with each one representing a different weapon or
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`action.”). Finally, the rectangular-shaped areas 374, 376, 378, 380 may be mapped
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`to shifting functions in a text application and field of view controls in a game
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`application. Id. at 11:34-44 (“Another method to implement full keyboard
`
`capability . . . is map . . . the top-left rectangular-shaped active area 378 to be shift
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`position 3; the top-right rectangular-shaped active area 374 to be shift position 4;
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`the bottom left rectangular-shaped active area 380 to be shift position 5; and, if
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`needed,
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`the bottom-right rectangular-shaped active area 376.”); 12:14-17
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`(“Movement into or out of the field of view may be controlled by the left and right
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`rectangular buttons 374, 376, 378, 380, thereby allowing 3-D control.”)
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`6
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`SCEA Ex. 1042 Page 7
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`7.
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`The fact that two different applications utilize the same delineated
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`active areas also comports with the understanding of a person of ordinary skill. It
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`was well understood by skilled artisans at the time of the ‘245 Patent that
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`consistency was (and still is) a fundamental rule of user interface design for all
`
`computers including mobile devices. For example, in his famous book Designing
`
`the User Interface: Strategies for Effective Human-Computer Interaction, Prof.
`
`Ben Shneiderman discusses the importance of consistency. Ex. 1043, Shneiderman
`
`at p. 13 (“Consistency primarily refers to common action sequences, terms, units,
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`layouts, color, typography, and so on within an application program. Consistency
`
`is a strong determinant of success of systems. It is naturally extended to include
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`compatibility across application programs and compatibility with paper or non-
`
`computer-based systems.”) (emphasis added). In fact consistency is the first of
`
`Prof. Shneiderman’s very widely-cited “Eight Golden Rules of Interface Design”
`
`from that book. Id. at p. 74. (“1. Strive for consistency. This rule is the most
`
`frequently violated one, but following it can be tricky because there are many
`
`forms of consistency. Consistent sequences of actions should be required in similar
`
`situations; identical terminology should be used in prompts, menus, and help
`
`screens; and consistent color, layout, capitalization, fonts, and so on should be
`
`employed throughout.”) (emphasis added). Those rules appeared in the first edition
`
`of his book (1986), have persisted through four subsequent editions of the book,
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`7
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`SCEA Ex. 1042 Page 8
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`and remain popular and relevant today. The rules apply generally to interface
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`design, and a person of ordinary skill would have understood they would apply to
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`mobile devices. Ex. 1044, Tarasewich at p. 5 (“Likewise, many of the current
`
`principles of interface design can be transferred to newer devices, although
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`soundly applying these principles may be more difficult due to the unique nature of
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`mobile systems and devices. Fundamental rules such as consistency, shortcuts for
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`advanced users, the use of feedback, error prevention, easy reversal of actions, and
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`minimization of short term memory requirements (Shneiderman, 1998) will
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`undoubtedly transfer to mobile applications.”) (emphasis added), where the citation
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`“(Shneiderman, 1998)” is referring to the same 3rd edition of Prof. Shneiderman’s
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`book that I cited above (Designing the User Interface: Strategies for Effective
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`Human-Computer Interaction) and the “[f]undamental rules” would indicate
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`Shneiderman’s “Golden Rules.” Thus, Dr. MacLean’s requirement that each
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`application must redefine spatial boundaries of the delineated active areas is not
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`supported by the ‘245 Patent specification and would also be contrary to the basic
`
`understanding of a skilled artisan at the time of the ‘245 Patent.
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`8. Based on the above disclosures and analyses, a person having ordinary
`
`skill would understand that the mappings of application functions to the delineated
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`active areas may change “based on the selected application.” However, the ‘245
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`8
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`SCEA Ex. 1042 Page 9
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`
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`Patent does not include any requirement that the spatial boundaries of the
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`delineated active areas themselves must change from application to application.
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`9.
`
` Dr. MacLean relies on two examples of different configurations of
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`delineated active areas in the ‘245 Patent that, in her opinion, “describe a number
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`of different delineation shape sets of the second surface sensor pad (354) active
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`areas.” Ex. 2003 at ¶ 101-102. And, I agree that the ‘245 Patent is not limited to
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`any particular configuration of delineated active areas. I also agree with Dr.
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`MacLean’s conclusion that the “delineations may be determined at the application
`
`level.” Id. at ¶ 103 (emphasis added). However, I do not agree that the spatial
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`boundaries of the delineations must be drawn or defined by the application.
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`10. The ‘245 Patent discloses “computational aspects described here can
`
`be implemented in analog or digital electronic circuitry, or in computer hardware,
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`firmware, software, or in combinations of them.” Ex. 1001 at 14:45-48. A person
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`of ordinary skill would understand this to teach a common sense (reasonable)
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`choice of realization of the computational aspects. Correspondingly, in the context
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`of the second surface sensor pad, the term “software” is used very generally
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`throughout the ‘245 Patent without system-level, application-level, or any other
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`limitations. Id. at 4:66-5:1 (“These delineated active areas likewise can be
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`configured in software to represent one or more input functions.”) (emphasis
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`added); 8:56-58 (“The second input assembly 350 includes a pressure sensor pad
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`
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`9
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`SCEA Ex. 1042 Page 10
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`354 having a plurality of software configurable active areas . . . .”) (emphasis
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`added); 9:20-22 (“As shown in FIG. 3d, the pressure sensor pad 354 may be
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`configured in software to represent one or more delineated 25 active areas . . . .”)
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`(emphasis added); 11:57-63 (“A method of implementing the functionality of a
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`game controller is . . . to map in software 65 the delineated active areas of the
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`pressure sensor pad 354 of the second input assembly 350 analog control”)
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`(emphasis added). This is in contrast to places where a distinction to “application
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`software” or “software application” is indicated. Id. at 5:24-29 (“Sensing circuitry
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`. . . may be provided to . . . convert those signals in a form suitable to be received
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`by a processor running application software,”) (emphasis added); 5:6-10 (“force
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`producing unit . . . may provide tactile feedback to the user . . . in response to
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`events occurring in a software application running on a processor.”) (emphasis
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`added). Thus, a skilled artisan would have appreciated that analog or digital
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`circuitry, hardware, firmware, any form of software (system-level or application-
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`level), or any combinations could determine the spatial boundaries of the
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`delineated active areas.
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`B. Liebenow’s information appliance is not limited to “vertically
`integrated” devices
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`11. As a preliminary matter, Mr. Lim’s characterization of Liebenow’s
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`digital information appliances as “tablet” computers (Ex. 2005 at ¶ 66), and the
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`form factor implications arising from the examples provided in “The History of the
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`10
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`SCEA Ex. 1042 Page 11
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`Tablet Computer” section of his declaration (Id. at ¶ 37-44), are both subjective
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`and seemingly chosen to pigeonhole the Liebenow devices into a single category
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`serving only a particular “vertical market” that matches Mr. Lim’s expertise.
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`There is no universally accepted formal classification scheme for computing
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`devices in general, and all informal classifications that I am aware of are based on
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`relatively vague criteria, resulting in more of a continuum of capabilities and
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`characteristics than rigid “bins” of computer types. Indeed, the section titled “A
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`TAXONOMY OF TABLETS” in Ex. 2023 cited by Mr. Lim states “Tablets come
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`in a number of shapes and sizes, and since the form factor largely determines the
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`use case, it's useful to set out the various subcategories. There are no 'canonical'
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`definitions here, but hopefully this list isn't too far off the mark.” Ex. 2023
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`(emphasis added). The article goes on to list the following examples: “Phablet,”
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`“Small-tablet,” “Medium-sized tablet,” “Large tablet,” and “Hybrid/convertible.”
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`Id. These proposed categories span size and capabilities ranging from “6-7in.
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`screens” that “sit mid-way between smartphones and small tablets” to “keyboard-
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`equipped touchscreen devices, usually with 10in. screens or larger, that have
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`some sliding, twisting or keyboard-removal mechanism that allows them to
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`switch between laptop and tablet modes.” Id. (emphasis added). This range of
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`sizes and capabilities is quite broad. As an example of the subjectivity involved in
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`any such classification, the 1993 Apple Newton MessagePad is included in Mr.
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`11
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`SCEA Ex. 1042 Page 12
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`Lim’s examples of “tablets” and yet the Newton was the device used to coin the
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`term “personal digital assistant.” Ex. 1045, McCracken. Conversely the currently
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`available Apple iPhone 6 Plus, which might be called a “smartphone” by some, is
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`also often called a “phablet” (see e.g., http://www.cnet.com/news/iphone-6-plus-
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`leads-phablet-sales-in-us/) which would include it in the taxonomy given in Ex.
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`2023, and thus classify the iPhone 6 Plus as a “tablet.”
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`12. After narrowly characterizing “tablet” computers in his background
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`section, and then pigeonholing the digital information appliance taught by
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`Liebenow into that category, Mr. Lim opines that a person of ordinary skill in the
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`art would not have wanted to add game functionality. Ex. 2005 at ¶ 97. As
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`support for his opinion, Mr. Lim relies on a series of assumptions including: (1) if
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`the device of Liebenow were commercialized, it would be identified in the same
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`category as other tablet computers on the market at the time; (2) tablets computers,
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`such as those manufactured by Fujitsu, were targeted at professional and vertical
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`markets, not general consumers; (3) gaming is banned in most corporate
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`environments. Id. at ¶ 95. I disagree with Mr. Lim’s narrow classifications, his
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`assumptions, and his conclusion.
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`13. First, I disagree with the assumption that a person of ordinary skill in
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`the art would consider the digital information appliance of Liebenow to be strictly
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`limited to any one device category such as the “tablet” devices as characterized by
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`12
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`SCEA Ex. 1042 Page 13
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`Mr. Lim. Liebenow includes a list of exemplary digital information appliances
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`including “electronic books, personal digital assistants (PDAs) and portable
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`information handling systems.” Ex. 1003 at [0002]. As I opined in my original
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`declaration, it was common for users to install games on their PalmPilot PDA
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`devices well before the priority date of the ‘245 Patent. Ex. 1010 at ¶¶ 27-28. In
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`his deposition, Mr. Lim, who was an executive at Palm from 1999 to 2001, agreed
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`that people played games on their Palm devices. Ex. 1041 at 46:4-5 (“Yes, people
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`play games on Palm PDA, I believe people play games of it. I was aware of it.”).
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`Based on Liebenow’s disclosure that the digital information application could be a
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`PDA and based on the prevalence of games on PDAs at the time, a skilled artisan
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`at the time of the ‘245 Patent would have recognized that games could similarly be
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`provided on Liebenow.
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`14. Mr. Lim’s assumption
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`that
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`tablet computers were
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`limited
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`to
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`professional and vertical markets seems to be at least partially based on his
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`experiences at Fujitsu. Ex. 2005 at ¶ 95 (“The Liebenow text input digital
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`information appliance, much like the products I made at Fujitsu (the leader in this
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`segment of the market), would have been understood in the early 2000s to be a
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`type of device that traditionally targeted professional and vertical markets.”). Mr.
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`Lim also cites to an April 1999 article from Pen Computing regarding the Fujitsu
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`Stylistic 2300. Ex. 2024. Mr. Lim was employed at Fujitsu from 1997 to 1999.
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`13
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`SCEA Ex. 1042 Page 14
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`Ex. 2005 at ¶ 11. In his deposition, Mr. Lim admitted that he was not aware of
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`Fujitsu’s activities after his departure in 1999. Ex. 1041 at 22:12-23:5.
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`15. There were key-shifts in the tablet computing market in the time after
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`Mr. Lim’s departure from Fujitsu in 1999 up until October 2003. As referenced by
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`Mr. Lim, Microsoft released its Windows XP Tablet PC operating system in 2002.
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`Ex. 2005 at ¶ 43. Windows XP Tablet PC edition was based on the Windows XP
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`operating system and also
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`included specialized features and applications
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`specifically designed for tablet computers. Ex. 1030, Thurrott at p. 2 (“Tablet PCs
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`ship with a special version of Windows XP called Windows XP Tablet PC Edition.
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`This XP version is available only with Tablet PCs, and is based on Windows XP
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`Professional”). Included among the tablet PC applications was a game called
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`InkBall. Id. at p. 4 (“Windows XP Tablet PC Editions ships with a decent game
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`called Inkball . . . . The goal is to drive two bouncing balls into the correct holes,
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`and you draw little walls with the stylus to guide the balls; each time a ball hits a
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`wall, the wall disappears and the ball ricochets into the correct direction.”). At that
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`time, Microsoft has also planned to release Tablet PC downloads including
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`additional games. Id. at p. 2 (“Microsoft says that it will also issue a number of
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`free Tablet PC downloads to its Web site, including more games and some
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`PowerToys, once the software is complete.”). Therefore, at least as of 2002,
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`games were available on tablet computers running Windows XP Tablet PC edition.
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`14
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`SCEA Ex. 1042 Page 15
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`16.
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`In a white paper entitled “Pen Computer Technology” published by
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`Fujitsu in 2002, Fujitsu identified the target market of several pen computer
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`product categories, including the tablet PC, as “Consumer & Enterprise:”
`
`
`
` Ex. 1026 at p. 2. The aforementioned Fujitsu Tablet PC directed toward the
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`consumer and enterprise markets was to run the Windows XP Tablet PC operating
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`system. Id. The “Technical Reference Guide” for the Fujitsu Stylistic ® ST 4000
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`Series Tablet PCs, which has a copyright date of 2002, states that the device was
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`distributed with Microsoft Windows XP Tablet PC Edition preinstalled. Ex. 1029
`
`at p. 2.
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`17. Therefore, even if Liebenow were limited to some form of tablet
`
`computers, which I disagree with, a skilled artisan in October 2003 would have
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`known that such tablet computers, including Fujitsu’s tablet computers, were being
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`actively marketed to consumers. A skilled artisan would have also known that
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`15
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`SCEA Ex. 1042 Page 16
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`operating systems included on these tablet computers, such as Windows XP Tablet
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`PC edition, included games and allowed users to download and install additional
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`games on their tablets as desired. For this reason, it would have been obvious to
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`similarly install games on the information appliance described by Liebenow.
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`C. Combining Liebenow with Andrews Would Yield Predictable
`Results
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`18. Regarding the combination of Liebenow and Andrews, Mr. Lim opines
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`that without connecting a peripheral input device to the Liebenow device “the
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`genre
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`information will not be available for Andrews’ mapper or
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`the
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`application/game software. Without the external peripheral and the stored game
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`genre, the application/game software will not be able to run properly and the
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`results will be unpredictable.” Ex. 2005 at ¶ 107. I first would like to point out
`
`that
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`this opinion assumes an
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`incorrect characterization of
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`the proposed
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`combination of Liebenow and Andrews.
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`19. As I opined in my original declaration, Andrews teaches exemplary
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`mappings of game functions to input elements and also teaches applying these
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`mappings to games running on handheld devices. Ex. 1010 at ¶ 39. Based on
`
`these teachings, my opinion was (and still is) that “it would have been obvious to a
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`person having ordinary skill in the art at the time of the ‘245 Patent to combine the
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`teachings of Liebenow and Andrews to modify the handheld device of Liebenow
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`to ‘comprise a game application’ as recited by Claims 2 and 13.” Id. at ¶ 40.
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`
`
`16
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`SCEA Ex. 1042 Page 17
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`
`
`
`
`20.
`
`It is certainly true that the input elements described by Andrews
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`correspond to input elements on peripheral input devices. Ex. 1004 at 1:11-13
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`(“This invention relates generally to the use of peripheral input devices with
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`software applications and more specifically to the use of genres in conjunction
`
`with such input devices and software applications.”). However, a person of
`
`ordinary skill and creativity would have appreciated that, to the extent these input
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`elements are already present on the device running the game application, these
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`input elements could similarly be mapped to the game functions using the method
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`taught by Andrews without needing to rely on the complete input device mapper
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`software taught by Andrews. For example, Andrews teaches mapping keys of a
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`peripheral keyboard to certain game functions. Ex. 1004 at 21:14-16 (“For
`
`example, the auxiliary input used to implement the ‘change dash display’ action
`
`correlated with the ‘DASHBOARD’ semantic in driving game 36a could be the
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`‘D’ key on keyboard 40 (not shown in Fig. 8)”); 14:26-15:5 (“For example, even
`
`though game controller 66 does not have a control correlated with the
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`‘DASHBOARD’ semantic, driving game 36a may still correlate its ‘change dash
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`display’ action with the semantic ‘DASHBOARD,’ and input device mapper 39
`
`will locate an appropriate auxiliary input for that action, In mapping 220, auxiliary
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`input 501 is selected by input device mapper 39 to implement the ‘DASHBOARD’
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`semantic. Auxiliary input 501 may be a key on keyboard 40 . . . .”); Fig. 1
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`
`
`17
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`SCEA Ex. 1042 Page 18
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`
`
`
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`(showing keyboard 40 is a peripheral keyboard). A person of ordinary skill would
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`have appreciated that the information appliance of Liebenow already has an
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`emulated keyboard (e.g., Ex. 1003 at Fig. 15) so no peripheral keyboard would be
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`needed.
`
`21. Regarding Liebenow’s emulated keyboard, Mr. Lim opines “The
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`Liebenow keyboard simulator was developed for text purposes only, instead of
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`game applications, so the game genre information will not be available on
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`Liebenow’s keyboard.” Ex. 2005 at ¶ 108. I again disagree. Prior to the October
`
`2003, many games running on general purpose computing devices mapped game
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`functions to keyboards. For example, the well-known Microsoft Flight Simulator
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`PC game made extensive use of keyboard inputs, including plain alphabetic keys
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`such as “H,” “E,” “M,” “J,” “G,” “L,” and “O;” function keys, and modifier keys
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`such as “CTRL” (the “control” keys) and “SHIFT” (the “shift” keys). Ex. 1039,
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`Chiu at Appendix C, Keyboard Command Reference. As cited above, Andrews
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`also teaches mapping keyboard keys (e.g., the “D” key) to game inputs (Dashboard
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`function of a driving game). A person having ordinary skill in the art would have
`
`understood that the emulated keyboard of Liebenow could similarly be used to
`
`provide game inputs. A skilled artisan would have understood that the game
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`application would interpret key presses of the emulated keyboard in the same way
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`that Liebenow’s text and calculator applications interpreted key presses. Thus, no
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`
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`18
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`SCEA Ex. 1042 Page 19
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`
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`
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`further modifications to Liebenow would be necessary to enable it to execute game
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`applications.
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`D. Obvious to Combine Liebenow and Hedberg
`22. With regard to the combination of Liebenow and Hedberg, Dr.
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`MacLean opines “Hedberg’s utility (pan/zoom control of a graphical portal on the
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`image displayed by a different device) is quite specific, and it is unrelated to the
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`device uses taught by Liebenow.” Ex. 2003 at ¶ 112. I respectfully disagree at
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`least because Dr. MacLean’s analysis appears to be omitting a relevant
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`embodiment of Hedberg.
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`23. Hedberg teaches a “hand-held display device for use with an electronic
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`device, said display device being suitable for the purpose of a hand-held date entry
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`device as well as for both landscape and portrait presentations of a full-page word
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`processing document.” Ex. 1005 at 3:6-11. The handheld display device includes
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`an inertial sensor such as an accelerometer or a gyroscope. Id. at Abstract
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`(“Further, a gyroscope (6) is incorporated in said display device (1) . . . .”), 3:26-30
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`(“These objects are accomplished by a display device having movement sensitive
`
`means such as a micro gyroscope, strain gauge, piezo-electric, or equilibrium of
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`force accelerometer etc information in said display device, thereby being
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`responsive to movements in space . . . .”). In the embodiment referenced by Dr.
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`MacLean, the handheld display device is used with an electronic device, such as a
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`
`
`19
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`SCEA Ex. 1042 Page 20
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`
`
`
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`desktop computer, “to display a complete or a determined part of a screen image.”
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`Id. at 3:15-18; see also, id. at Abstract, Fig. 3 (showing electronic device 13 as a
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`desktop computer separate from handheld display device 1). However, in another
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`embodiment, which was not addressed by Dr. MacLean, the handheld display
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`device is “incorporated in an electronic device such as a mobile telephone, PDA
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`(Personal Digital Assistant), and organizer, a data terminal to display a complete or
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`a determined part of a screen image in a proper size with regard to the current
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`needs or requirements of the user.” Id. at 3:20-25; see also, 6:34-7:7 (“For
`
`example, in another embodiment of the invention the different parts: display
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`screen, movement sensitive means, control buttons, electronic circuits and/or
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`connection means, of said display devices can be incorporated as a single nit or as
`
`separate parts in an electronic device such as a mobile telephone, a PDA (Personal
`
`Digital Assistant), an organizer, data terminal, or a handheld computer, wherein the
`
`operations described above are performed in a similar manner.”); Fig. 5 (showing
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`electric device 13 as a mobile phone). In this embodiment, “these kinds of
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`electronic devices, provided with a display device of the invention, can work as
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`stand alone devices . . . .” Id. at 7:10-12 (emphasis added).
`
`24. Liebenow teaches a digital information appliance such as a PDA. Ex.
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`1003 at [0002] (“Digital information appliances such as electronic books, personal
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`digital assistants (PDAs) and portable information handling systems . . . .”).
`
`
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`20
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`SCEA Ex. 1042 Page 21
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`
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`Therefore, the embodiment taught by Hedberg where the standalone handheld
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`electronic device, such as a PDA, includes an inertial sensor is directly related to
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`Liebenow’s digital information appliance, which may also be a PDA.
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`25. Dr. MacLean also opines that Liebenow does not teach any uses that
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`would benefit from using inertial sensors to effect panning/zooming of the
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`graphical display as taught by Hedberg. Ex. 2003 at ¶¶ 115-116. To the contrary,
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`Liebenow teaches an embodiment where the digital information appliance includes
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`a web browser. Ex. 1003 at [0051] (“In an exemplary embodiment, the digital
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`information appliance 300 may be configured for use with an information network
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`such as the Internet. In such an em
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