UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00230
`Patent 7,463,245
` ____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`____________
`
`Case No. IPR2015-00230
`Patent 7,463,245
` ____________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2015-00230
`U.S. Patent No. 7,463,245
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`Table of Contents
`I. INTRODUCTION ............................................................................................... 1
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`II. ARGUMENT ...................................................................................................... 1
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`A. THE INSTITUTED GROUNDS ARE PROPERLY SUPPORTED ................................ 1
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`B. ANDREWS AND HEDBERG ARE ANALOGOUS ART .......................................... 3
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`1. Andrews Is Analogous Art ..................................................................... 5
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`2. Hedberg Is Analogous Art ...................................................................... 7
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`C. ALL CHALLENGED CLAIMS ARE OBVIOUS ..................................................... 9
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`1. Liebenow-Andrews Renders Claims 1-5,7,10-15,17,20 Obvious .......... 9
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`2. Liebenow-Hedberg Renders Claims 8,9, and 17-19 Obvious .............. 17
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`3. Liebenow-Martin Renders Claim 6 Obvious ....................................... 19
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`4. Griffin-Liebenow Renders Claim 16 Obvious ..................................... 20
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`D. SECONDARY CONSIDERATIONS FAIL TO SHOW NONOBVIOUSNESS .............. 23
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`III. CONCLUSION ................................................................................................. 25
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`INTRODUCTION
`The specification of the ‘245 Patent claims that there was a purported novelty
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`I.
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`in providing input controls, such as a touchpad, on the back of a handheld device so
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`that the device could be operated with either the thumbs or the fingers. It has now
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`been established that this concept was never novel. Confronted with prior art that
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`shows exactly the same concept, and an overwhelming record of obviousness, PO is
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`forced to resort to numerous arcane distinctions that are absent from the claims and
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`artificial barriers to obviousness that assume a PHOSITA has no common sense or
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`creativity. Even PO’s own experts do not agree that the claims should be interpreted
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`so narrowly or that motivation to combine known technology would be so elusive.
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`Like in the copending ‘692 proceeding, the flaw in PO’s reasoning throughout
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`its Response is faulty generalization. The Board should rely on the entire record,
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`rather than the limited and oversimplified view that PO promotes, and find that all of
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`the Challenged Claims are unpatentable.
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`II. ARGUMENT
`A. The Instituted Grounds are Properly Supported
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`In its Response, PO renews an argument presented in its Preliminary Response
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`that the Petition does not map Andrews to claims 1, 7, 10-12, 17, and 20, and that the
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`Petition does not map Hedberg to claim 17. See Paper 19, Response at 3-5.
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`According to PO, the Board’s decision to proceed on obviousness grounds instead of
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`anticipation created a fatal flaw in this proceeding, and PO would now have the Board
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`1
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`find that patentability of these claims must be confirmed regardless of their
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`substantive merit. See id. The Board should reject PO’s position for two reasons.
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`First, PO’s argument has already been rejected, and PO has not identified any
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`reason for the Board to reach a different outcome. PO still has not identified any
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`authority to support its conclusion that a rejection based on a prior art combination
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`must cite to underlying evidence from every reference that comprises the
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`combination. See id. There is no support for this rigid rule, and there is nothing to
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`prevent the Board from rejecting claims as obvious in view of a prior art combination
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`even where the relevant teachings for a particular claim come from a single reference.
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`Second, PO’s argument is legally flawed because, based on the record in this
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`proceeding, the evidence of anticipation also shows obviousness. A claim may be
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`rendered obvious if all of its limitations are disclosed in a single prior art reference
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`because “anticipation is the epitome of obviousness.” In re McDaniel, 293 F.3d 1379,
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`1385 (Fed. Cir. 2002) (affirming BPAI obviousness rejection); see also Invensense,
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`Inc. v. STMicroelectronics, Inc., IPR2013-00241, Paper 20 (PTAB Nov. 26, 2013).
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`Once it is established that a single prior art reference discloses each limitation of a
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`claim, there is no need to further apply the remaining references. See, e.g., ADC
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`Technology, Inc. v. Nintendo of North Am., Inc. et al., Reexam Nos. 95/001,234 and
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`90/009,521 (PTAB May 28, 2015); see also Vibrant Media, Inc. v. General Electric
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`Co., IPR2013-00170, Paper No. 56 at 37 and Paper No. 55 at 13 (PTAB Jun. 26, 2014
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`2
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`and Apr. 8, 2014) (Final Written Decision and Record of Oral Hearing).
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`On this record, the evidence is overwhelming that: (1) Liebenow, either alone
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`or in combination with Andrews or Hedberg, discloses all elements of claims 1, 7, 10-
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`12, 17, and 20; (2) any combinations (i.e., Liebenow-Andrews for claims 1, 7, 10-12,
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`17, and 20, and Liebenow-Hedberg for claim 17) would have been obvious to a
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`PHOSITA; and (3) there are no secondary considerations of nonobviouness sufficient
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`to overcome the strong showing of obviousness. Thus, the Board should conclude,
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`inter alia, that claims 1, 7, 10-12, 17, and 20 are obvious in view of Liebenow and
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`Armstrong, and that claim 17 is obvious in view of Liebenow and Hedberg.
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`B. Andrews and Hedberg Are Analogous Art
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`Without proposing a definition for the field of endeavor of the ‘245 Patent, and
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`without identifying any evidence to support a narrow understanding of the scope of
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`analogous art here, PO concludes that Andrews and Hedberg are not analogous. See
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`Paper 19, Response at 6-19. PO’s conclusion should be rejected because it is rooted
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`in a misapplication of the law and a misunderstanding of the facts. Once the field of
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`endeavor is correctly defined, applying that definition to Andrews and Hedberg shows
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`that both references qualify as properly within the field of endeavor of the ‘245 Patent.
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`Support for defining the field of endeavor come from a patent’s “written
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`description and claims, including the structure and function of an invention.” In re
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`Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Review of the written description and
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`claims of the ‘245 Patent makes clear that the field of endeavor should be defined to
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`include: “hand-held electronic devices with one or more input elements.” The claims
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`of the ‘245 Patent recite a “hand-held device” that comprises at least an input element.
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`See, e.g., Ex. 1001, ‘245 Patent at Claims 1, 12. The written description broadly
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`defines the field of the ‘245 Patent, stating that the description “relates to human
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`interface and input systems for electronic devices, such as cell phones, personal digital
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`assistants (“PDAs”), pocket personal computers, smart phones, hand-held game
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`devices, bar-code readers, remote controls, and other similar input devices having a
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`keypad or one or more input elements.” Id. at Col. 1:13-19. Throughout the written
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`description, the ‘245 Patent broadly describes its invention as a “human interface and
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`input system.” See, e.g., id. at Col. 7:7-11; 7:48-50; 8:28-33; 13:46-50. Elsewhere in
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`the background, hand-held electronic devices are described in the context of gaming
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`to include “PDAs and conventional game console controllers.” Id. at Col. 3:37-41.
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`The figures of the ‘245 Patent illustrate a hand-held electronic device with one or
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`more input elements. See, e.g., id. at Figs. 3a, 4a, 5a, 6a, and 7a; see also, e.g., In re
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`Shaneour, 600 Fed. App’x. 734, (Fed. Cir. 2015) (affirming Board’s field of
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`endeavor definition, where the claims recite a “multiple fixture lighting system” that is
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`“capable of providing multiple output levels” and where the Board classified the field
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`of “lighting control systems.”).
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`Like in the copending ‘692 proceeding, no authority cited by the PO here
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`supports a narrower definition for the ‘245 Patent’s field of endeavor. Clay limited the
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`field of endeavor to scope that was explicitly required by the claims and the context of
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`the specification, and Wang Labs. found no error where the field of endeavor
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`excluded scope that was explicitly distinguished by the patent. See In re Clay, 966
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`F.2d 656, 657-58 (Fed. Cir. 1992); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858,
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`863 (Fed. Cir. 1993). PO’s proposition here is something different. As explained in
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`more detail below, PO would exclude from the field of endeavor scope that is
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`explicitly included by the ‘245 Patent. None of the cases cited by PO supports PO’s
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`view. Rather, these cases support the conclusion that the field of endeavor should be
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`construed as broadly as the patentee has described and claimed it to be. See In re
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`Singhal, 602 Fed. App’x 826, 830 (Fed. Cir. 2015) (citing Bigio, 381 F.3d at 1326).
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`Indeed, nearly 20 years after Clay and Wang Labs. the Federal Circuit has rejected
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`PO’s position that courts generally decline to construe analogous art broadly. See
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`Paper 19, Response at 12. To the contrary, the Supreme Court’s KSR decision
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`“directs us to construe the scope of analogous art broadly….’” Wyers v. Master Lock
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`Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 420 (2007)).
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`1.
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`Andrews Is Analogous Art
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`Andrews is within the field of endeavor of the ’245 Patent, which should be
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`defined to include hand-held electronic devices with one or more input elements.
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`Andrews describes a game controller (i.e., hand-held electronic device) with several
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`input elements associated with various game controls. See generally Ex. 1004,
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`Andrews; see also, e.g., id. at Title, Abstract, 6:15-21, Fig. 6, etc. The Andrews game
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`controller is just like remote control and game controller embodiments described by
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`the ‘245 Patent, and these embodiments are also captured by the scope of the claims.
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`See, e.g., Ex. 1001, ‘245 Patent at Col. 1:13-19; Col. 3:37-41; Claims 1, 12.
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`PO asserts that peripheral devices must be excluded from the field of endeavor
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`of the ‘245 Patent. See Paper 19, Response at 12-13. These assertions are contrary to
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`the ‘245 Patent itself, which explicitly includes remote controls and game controllers
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`(i.e., peripheral devices) as within the scope of the invention. See, e.g., Ex. 1001, ‘245
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`Patent at Col. 1:13-19; Col. 3:37-41. These peripheral device embodiments are also
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`captured by the scope of the claims. See id. at Claims 1, 12. PO has not identified any
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`reasoning or authority for defining a field of endeavor that is narrower than the claims
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`and embodiments in a patent.1
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`PO’s argument should also be rejected because PO and its expert conflate the
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`two separate analogous art inquiries, and assert that Andrews must be outside the field
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`1 Several prior art references submitted by the applicant as relevant to the ‘245 Patent
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`are directed to peripheral game controllers. See, e.g., Ex. 1002, ‘245 Patent File
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`History at 256-66 (citing USPN 6,512,511, USAN 2002/0023265, and Sony Clie).
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`of endeavor because of the problems it allegedly addresses. See, e.g., id. at 12
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`(discussing field of endeavor, and concluding that Andrews “addresses a very
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`different problem…”); see also, e.g., Ex. 2005, Lim Decl. at ¶ 23 (“I understand that
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`determining the field of endeavor requires consideration of the problem the inventor
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`was trying to solve.”); Ex. 1041, Lim Tr. at 99:2-100:9. Andrews qualifies as
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`analogous art under the first inquiry, irrespective of the problems addressed by the art.
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`See Ex. 1004, Andrews at Title, Abstract, 6:15-21, Fig. 6, etc. Setting aside PO’s
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`flawed analysis, PO has not identified any evidence or any reason why the field of
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`endeavor here should be defined narrowly, or why Andrews should not be included.
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`See Paper 19, Response at 12-13; see also Bigio, 381 F.3d at 1326 (“substantial
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`evidence must support the PTO’s factual assessment of the field of endeavor”).
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`2.
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`Hedberg Is Analogous Art
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`Hedberg is within the field of endeavor of the ‘245 Patent. Hedberg describes
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`and illustrates a hand-held device with several input elements. See Ex. 1005, Hedberg
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`at p. 3:6-11; Fig. 5; see also, e.g., Ex. 1040, MacLean Tr. at 120:8-121:22
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`(“[Hedberg] teaches the use of a handheld data entry device for a different purpose.”).
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`Like in the ‘692 proceeding, PO argues that Hedberg is not within the same
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`field of endeavor based on an oversimplified view that Hedberg focuses on viewing
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`rather than data entry. But the ‘245 Patent itself defines the field of endeavor to
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`include the same type of devices disclosed in Hedberg. According to PO’s own
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`expert, a PHOSITA would have recognized that the device described in Hedberg
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`could be used for data entry. See Ex. 1040, MacLean Tr. at 120:8-121:22; see also
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`Ex. 1005, Hedberg at p. 3:6-11, Fig. 5. And a PHOSITA would have also recognized
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`that the device described in the ‘245 Patent could include a display. See Ex. 1040,
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`MacLean Tr. at 86:16-87:1, 88:7-21; see also, e.g., Ex.1001, ‘245 Patent at Figs. 3a,
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`4a, 5a, 6a, 7a, and Col. 8:43. Indeed, the examples from Hedberg identified by Dr.
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`MacLean as being repurposed to implement the Hedberg invention are explicitly
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`included in the written description of the ‘245 Patent. See Ex. 1040, MacLean Tr. at
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`120:8-121:22; compare Ex. 1005, Hedberg at p. 1 with Ex.1001, ‘245 Patent at 1:13-
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`19. Put simply, Hedberg and the ‘245 Patent involve the very same type of devices,
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`and PO’s argument should be rejected for that reason alone.
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`PO’s argument should also be rejected because PO and its expert conflate the
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`two separate analogous art inquiries, and assert that Hedberg must be outside the field
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`of endeavor because of the problems that it allegedly addresses. See Ex. 1040,
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`MacLean Tr. at 119:14-23. This analysis is irrelevant to the field of endeavor inquiry.
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`See, e.g., Bigio, 381 F.3d at 1325. Setting aside PO’s flawed analysis, PO has not
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`identified any evidence or any reason why the field of endeavor here should be
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`defined narrowly, or why Hedberg should not be included. See Paper 19, Response at
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`16-19; see also Bigio, 381 F.3d at 1327.
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`In short, PO has not identified any support in the law or in the record for
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`narrowly defining the field of endeavor to exclude Andrews and Hedberg. The Board
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`should define the field of endeavor based on the claims and written description of the
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`‘245 Patent to include hand-held electronic devices with one or more input elements.
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`The Board should also find that Andrews and Hedberg are within the field of
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`endeavor because each reference plainly satisfies the proper definition.
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`C. All Challenged Claims are Obvious
`1.
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`Liebenow-Andrews Renders Claims 1-5,7,10-15,17,20 Obvious
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`Petitioner cites to Andrews for the straightforward proposition that it would
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`have been obvious to a PHOSITA in October 2003 to include a game application,
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`with various gaming functions, on a tablet device like the one described in Liebenow.
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`See Paper 2, Petition at 24-28. Games and game functions were generally well
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`known, and the utility of Andrews in this proceeding is that it is a single document
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`that explicitly names the various game functions that PO has claimed, and it describes
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`how to use those functions with other devices. See, e.g., Ex. 1041, Lim Tr. at 74:9-
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`75:14 (games and claimed game functions were known in Oct. 2003). PO endeavors
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`to create confusion, and to make this seem much more complicated than it is.
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`a.
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`Liebenow and Andrews are Properly Combinable
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`Liebenow and Andrews are properly combinable because it would have been
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`obvious for a PHOSITA to add games to the tablet device described in Liebenow. See,
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`e.g., Ex. 1041, Lim Tr. at 125:5-126:4 (“So I think your question is could someone
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`load games into Liebenow device, I think they could.”); 144:19-24 (Solitaire
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`“probably could run” on Liebenow); see also Ex. 1042, Welch Supp. Decl. at ¶¶ 18-21
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`(combining Liebenow with Andrews would yield predictable results). And a
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`PHOSITA would have been motivated to make this combination because games on a
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`device like the one described in Liebenow would make the device more desirable.
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`See, e.g., Ex. 1040, MacLean Tr. at 24:17-18 (“games have been available for every
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`device that was ever made, I think.”), 25:14-16 (Palm included games “[b]ecause
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`people like to play games.”); see also, e.g., Ex. 1041, Lim Tr. at 23:3-24:18 (“in the
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`computer industry, there’s always a way that people would like to go into consumer
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`market….”), 62:10-22 (discussing the company he founded in 2001 and the hand-held
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`device they designed to include games, stating: “we want to do the best possible [job]
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`knowing the market, doing the best possible job, produce the best product that would
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`be the quote, unquote, best acceptance by the market.”), 182:13-22 (agreeing that a
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`PHOSITA would be motivated to include games on a handheld device such as the
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`Nokia 3210, stating: “probably would, if he can make money – I mean it’s a
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`business….”); see also Ex. 1042, Welch Supp. Decl. at ¶¶ 11-17. PO’s arguments to
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`the contrary rest on flawed premises and inaccurate assertions.
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`First, PO criticizes the Petition as having “one lonely sentence” on point, and
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`argues that Petitioner is “blindly adding functionality to devices.” Paper 19, Response
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`at 22-23. This assertion ignores the context of the Petition and is not accurate. The
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`combination proposed in the Petition is very specific, and it is in the context of
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`extensive discussion in both the Petition and Dr. Welch’s direct testimony regarding
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`the state of the art and the teachings of the references. See, e.g., Paper 2, Petition, at
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`10-27; Ex. 1010, Welch Decl. at ¶¶ 27-29, 38-41. The more developed record created
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`in this proceeding shows that all kinds of devices included games at the time,
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`including some of the best-selling hand-held electronic devices ever developed. See,
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`e.g., Ex. 1040, MacLean Tr. at 24:17-18; Ex. 1041, Lim Tr. at 23:3-24:18, 62:10-22,
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`182:13-22; Ex. 1042, Welch Supp. Decl. at ¶¶ 11-17; Ex. 1030, Windows XP Tablet
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`PC Review (discussing game called Inkball); Ex. 1034, 12 Cell Phones that Changed
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`Our World (discussing Nokia 3210 and game Snake); Ex. 1035, 25 Best Selling Cell
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`Phones of All Time (same). PO points to the PalmPilot and its simplicity, but even that
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`device had games. See, e.g., Ex. 1016, PalmPilot Handbook at 45 (listing games); Ex.
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`1040, MacLean Tr. at 25:6-16; Ex. 1041, Lim Tr. at 177:2-178:17 (“when I say
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`simplicity in my report, I wasn’t saying specifically that adding games means not
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`good, that wasn’t what I said.”). There is extensive evidence in the record supporting
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`this combination, and PO’s assertion that accepting this combination renders all
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`inventions obvious ignores this record.
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`Second, PO argues that PHOSITAs would not have been motivated to add
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`games to the device described in Liebenow based on the flawed premise that
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`Liebenow is a specialized “data-entry-focused business device” that was not designed
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`for general consumers. Paper 19, Response at 24-25. Exactly the opposite is true.
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`Liebenow explicitly states that it is focused on “compact digital information
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`appliances [that] will become increasingly common fixtures of everyday life.” Ex.
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`1003, Liebenow at [0003]. There is simply nothing in Liebenow that suggests it was
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`focused on “specialized machines” or “corporations using them for a specific
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`application.” See generally id. PO’s entire argument is rooted in assertions from PO’s
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`expert witness, whose relevant experience at Fujitsu ended four years before the
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`priority date of the ‘245 Patent. See, e.g., Ex. 1041, Lim Tr. at 22:13-23:5 (Lim was
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`not involved at Fujitsu after leaving the company in 1999), 25:14-27:10 (Lim “cannot
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`speak for [what] Fujitsu was attempting [by 2002], I had no clue.”), 30:21-31:12,
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`116:22-117:16, 149:16-150:6. Mr. Lim also testified that tablet devices at the time
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`would support games, and that companies consistently attempted to enter the
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`consumer space. See id. at 21:19-24:18, 23:3-24:18, 43:21-25, 46:24-50:10, 57:2-17,
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`62:10-63:22, 78:17-79:7. Mr. Lim even testified that Liebenow might be used in a
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`consumer market, and there might be motivation to do so depending “on your risk
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`tolerance.” See id. at 115:7-116:16, 117:13-118:21.
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`Third, PO argues that Andrews is not relevant to the hand-held device in
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`Liebenow. Paper 19, Response at 26. The flawed premise here is that PO assumes
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`that the HID teachings of Andrews cannot be used with a hand-held device. But the
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`HID teachings of Andrews could be used with a hand-held device like Andrews itself
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`says. See Ex. 1004, Andrews at 6:10-14; see also Ex. 1042, Welch Supp. Decl. at ¶¶
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`18-21 (describing how a PHOSITA would use Andrews disclosure with a keyboard).
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`Fourth, PO argues that adding games to Liebenow would have required
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`“thousands of engineers and software developers working together.” Paper 19,
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`Response at 26-29. PO seems to suggest that the combination would require designing
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`and developing a new gaming platform from the ground up. See id. This is not
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`required, because nothing in the claims of the ‘245 Patent requires a particular
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`platform that Liebenow does not already disclose. The addition of Andrews is just to
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`add games to the existing Liebenow inputs. PO also suggests that this simple addition
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`would be unworkable. But Dr. Welch explains that it would be straightforward for a
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`PHOSITA to use the existing keyboard disclosure in Liebenow with the mappings in
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`Andrews to support games. See Ex. 1042, Welch Supp. Decl. at ¶¶ 18-21.
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`b.
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`Liebenow-Andrews Discloses the Claims
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`Liebenow and Andrews disclose the claims, and the Board should reject PO’s
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`attempts to read limitations from the specification into the claims. First, PO argues
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`that Liebenow fails to teach functions “of” an application, and implies that functions
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`must be customized by applications, i.e., the functions of the keys must be defined at
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`the application level rather than the device or operating system level. Paper 19,
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`Response at 29-31. The claims do not require this, as PO’s expert agrees. See Ex.
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`1040, MacLean Tr. at 155:24-156:11. Indeed, the claims say nothing about where the
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`functions of the keys are defined and make no distinction between the keys defined at
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`the device level or at the application level. The words “of the selected application”
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`plainly encompass any keys associated with an application regardless of where those
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`keys are defined. The fact that mapping of elements may be customized by an
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`application obviously does not mean that the claims can be rewritten to require
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`“application-level customized mapping.” See Paper 19, Response at 30-31.
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`Second, PO argues that Liebenow fails to teach that a single selected
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`application has different functions mapped to a first and second surface input
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`elements. Paper 19, Response at 31-33. This is simply untrue. Liebenow explicitly
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`teaches that standard character entry can be mapped to both input elements, and PO’s
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`expert agrees that standard character entry can be considered a first, second, third, etc.
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`function of an application. See, e.g., Ex. 1003, Liebenow at Figs. 1, 15; [0033]; Ex.
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`1040, MacLean Tr. at 188:21-189:2 (a key in a word processing application can be
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`considered a function of an application); 203:24-204:12 (different character inputs
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`would be different functions of an application). At a minimum, the Space key taught
`
`by Liebenow is a character entry, and would qualify as a separate function of an
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`application that can be mapped to a second surface. See id.
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`Third, PO argues that Liebenow fails to teach delineated active areas based on
`
`the selected application. Paper 19, Response at 33-36. This argument is similar to
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`PO’s argument in the copending ‘692 proceeding, and it fails for the same reasons.
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`The claims are simply not as limited as PO proposes, and PO’s proposal invites error.
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`See, e.g., Ex. 1040, MacLean Tr. at 41:12-43:9, 47:20-25;, 48:8-13, 50:1-14, 69:19-
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`71:7, 74:17-75:5, 75:19-76:3, 132:1-4, 155:24-156:11; Ex. 1042, Welch Supp. Decl. at
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`¶¶ 2-10; see also, e.g., In re Van Geuns, 988 F.2d 1181, 1184-85 (Fed. Cir. 1993);
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.2d 1367, 1372-73 (Fed. Cir. 2014). And
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`the teachings of Liebenow as described by PO satisfy the requirements of the claims
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`as described by PO’s expert. Compare Paper 19, Response at 36 (“Liebenow teaches
`
`different emulated keyboards provided by the system and selected by an application”)
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`with Ex. 1040, MacLean Tr. at 50:1-14 (Q: Is there any reason the application could
`
`not select some type of keyboard that already existed in the operating system? A: It
`
`can. That is one of the things that it can do. It’s not the only thing. I think this claim
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`language doesn’t limit it to that, but that is within the space of what it can do….”).
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`Fourth, PO challenges the application of Liebenow and Andrews to claims 2
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`and 13 See Paper 19, Response at 36-41. These claims just direct that the “selected
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`application” is a “game application.” See Ex. 1001, ‘245 Patent at Claims 2, 13. PO
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`suggests that the notion of using the Liebenow device for games would have been
`
`beyond the grasp of a PHOSITA. See Paper 19, Response at 36-41. Yet even PO’s
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`experts agree that the use of handhelds for gaming was widely known at the time. See
`
`Supra at II.C.1.a. All a PHOSITA would need to do is read Liebenow, which
`
`describes everyday use, and realize that one popular use would be gaming.
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`15
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`PO also suggests that implementation would somehow be more complex in a
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`gaming environment, and that a PHOSITA would only use one surface. See Paper 19,
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`Response at 36-41. The inventors of the ‘245 Patent did not share PO’s assumption
`
`that a PHOSITA would lack skill or even minimal creativity. See generally Ex. 1001,
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`‘245 Patent. The inventors described mapping game functions to input elements as a
`
`straightforward process that “can be customized by the software application developer
`
`or the user through downloads or other programming modalities.” See id. at 5:46-56.2
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`Indeed, as an implementation matter, combining Andrews with Liebenow
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`would have been straightforward to a PHOSITA. Andrews explicitly teaches mapping
`
`game functions to keys of a keyboard. See Ex. 1004, Andrews at 21:14-16, 14:26-
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`15:5. A PHOSITA would have recognized that the mapping of a peripheral keyboard
`
`to certain game functions described in Andrews could be implemented with the
`
`emulated keyboard already available in Liebenow. See Ex. 1042, Welch Supp. Decl.
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`at ¶¶ 18-21. No peripheral device would be required in this instance, and so PO’s
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`illustration of peripheral connections is just a straw man. See id.; see also Paper 19,
`
`
`2 PO’s reliance on Spectralytics is misplaced because there is no evidence that
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`prior art touchpads are only used for non-game functionality. See Spectralytics,
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`Inc. v. Cordis Corp., 649 F.3d 1336, 1343 (Fed. Cir. 2011). Mr. Lim describes
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`touchscreen gaming as early as 1985. See Ex. 2005, Lim Decl. at ¶¶ 50-55.
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`16
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`Response at 40. Further, a PHOSITA would have understood that a game application
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`would interpret key presses of the emulated keyboard in the same way that
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`Liebenow’s text and calculator applications interpret key presses, so no further
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`modification would be required. See Ex. 1042, Welch Supp. Decl. at ¶¶ 18-21. Just as
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`an example, a game that utilized the spacebar and at least two alphabetic keys would
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`have one game function on a first surface, and two game functions on a second
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`surface each on a separate delineated active area (i.e., key). See, e.g., Ex. 1003,
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`Liebenow at Figs. 1, 15; [0033]. A PHOSITA would also have recognized that well-
`
`known games made extensive use of keyboard inputs, including alphabetic, function,
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`and modifier keys. See Ex. 1042, Welch Supp. Decl. at ¶¶ 18-21.
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`2.
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`Liebenow-Hedberg Renders Claims 8,9, and 17-19 Obvious
`
`a.
`
`Liebenow and Hedberg are Properly Combinable
`
`The Board should reject PO’s argument as to the combination of Liebenow and
`
`Hedberg because the argument is rooted in a flawed premise, and because there is an
`
`explicit motivation in the references themselves for the combination. PO first asserts
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`that Hedberg “focuses exclusively on viewing rather than information entry.” Paper
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`19, Response at 41. As explained above, this assertion is contrary to Hedberg, and
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`how a PHOSITA would understand the teachings of Hedberg. See supra at II.B. Also,
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`there is no requirement in either of claims 8-9 and 18-19 that the accelerometer or
`
`gyroscope must be used in a particular way (e.g., for data entry). See Ex. 1001, ‘245
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`17
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`Patent at Claims 8-9, 18-19. Rather, the claims just require that an accelerometer or a
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`gyroscope be included in the device for any reason. See id.
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`Like in the ‘692 proceeding, the reason to combine Liebenow and Hedberg is
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`apparent from the explicit descriptions in the documents. The landscape and portrait
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`views from Hedberg would increase the usability of Liebenow. See Ex. 1008, Welch
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`Decl. at ¶¶ 43-44; See Ex. 1041, Welch Supp. Decl. at ¶¶ 22-28 (responding to
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`MacLean assertions). Liebenow also explicitly recognizes this benefit. See, e.g., Ex.
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`1003, Liebenow at [0005], [0047]. Even PO’s expert agrees that landscape and portrait
`
`orientations could be useful for hand-held data entry. See Ex. 1040, MacLean Tr. at
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`98:5-10; see also KSR, 550 U.S. at 401; Belden Inc. v. Berk-Tek LLC, Nos. 2014-
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`1575, 2014-1576, 2015 WL 6756451, at * 9 (Fed. Cir. Nov. 5, 2015). Here, it would
`
`have been obvious to add a gyroscope to Liebenow at least to facilitate orientation.
`
`b.
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`Liebenow-Hedberg Discloses the Claims
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`Remarkably, PO argues that Hedberg does not teach a gyroscope even though
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`the word “gyroscope” is explicitly included in the reference. PO ignores the Supreme
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`Court’s instruction that a PHOSITA would apply some common sense, and arrives at
`
`this incredible conclusion by reasoning that there is a fatal flaw in the punctuation of
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`Hedberg. See Paper 19, Response at 43-44. PO fails to mention the Abstract of
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`Hedberg, which also discloses a gyroscope, this time without any potential for comma
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`confusion. Dr. MacLean had not considered the Abstract until her deposition, and
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`now even she agrees that this disclosure teaches claim 9. See Ex. 1040, MacLean Tr.
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`at 105:5-16, 112:13-114:4. A PHOSITA would understand Hedberg’s recitation of a
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`“gyroscope” to disclose a gyroscope. It is really that simple.
`
`3.
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`Liebenow-Martin Renders Claim 6 Obvious
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`The point of this combination is to show that it would have been obvious to a
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`PHOSITA to include the d-pad from Martin into the device described in Liebenow to
`
`perform cursor control. This is a simple substitution of one known element for another
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`to perform the same function and, thus, claim 6 is obvious over Liebenow in view of
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`Martin. See Ex. 1010, Welch Decl. at ¶¶ 44-47. PO’s entire
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