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. IPR2015-00396
`Patent 7,218,313
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION
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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. IPR2015-00396
`Patent 7,218,313
` ____________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION
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`INTRODUCTION
`Petitioner respectfully requests that the Board consider the record, rather than
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`IPR2015-00396
`U.S. Patent No. 7,218,313
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`I.
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`Patent Owner’s (“PO”) characterizations of the record, in determining patentability of
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`U.S. Patent No. 7,218,313 (“the ‘313 Patent”). PO’s observations are misleading,
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`because the observations either mischaracterize the record, or include assertions that
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`are not supported by the record.
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`II. RESPONSES TO OBSERVATIONS
`1.
`PO’s observation is not relevant. As Dr. Welch explained, his reliance on
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`Rekimoto is just as an exemplary reference used to rebut opinions offered by Dr.
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`MacLean. See Ex. 2051, Welch Dec. 17 Tr. at 8:9-18; Ex. 1042, Welch Supp. Decl. at
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`¶ 14. Specifically, the reference is used to rebut Dr. MacLean’s opinion that multi-
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`touch technology was not available in October 2003. See id. There is no rule that
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`rebuttal evidence is limited to prior art used in instituted grounds.
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`2.
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`PO’s observation is not relevant. Petitioner has not argued, and Dr.
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`Welch has not opined, that Ishihara explicitly discloses multi-touch capability. See
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`Paper 21, Petitioner’s Reply at 11-12; Ex. 1042, Welch Supp. Decl. at ¶¶ 2-16; Ex.
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`2051, Welch Dec. 17 Tr. at 9:16-16:1. Rather, Dr. Welch opines that multi-touch
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`technology was well known before October 2003, and he provides several examples.
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`Ex. 1042, Welch Supp. Decl. at ¶¶ 2-16. Nothing in this testimony contradicts or
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`limits Dr. Welch’s opinion. See Ex. 2051, Welch Dec. 17 Tr. at 9:16-16:1.
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`IPR2015-00396
`U.S. Patent No. 7,218,313
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`PO’s observation is not relevant, and PO’s assertion about the impact of
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`3.
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`this testimony on the significance of Dr. Welch’s testimony is not accurate. Petitioner
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`has not argued, and Dr. Welch has not opined, that Itaya explicitly discusses using
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`multi-touch on a hand-held scale. See Paper 21, Petitioner’s Reply at 11-12; Ex.
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`1042, Welch Supp. Decl. at ¶ 10; Ex. 2051, Welch Dec. 17 Tr. at 16:20-17:25. As Dr.
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`Welch testified, a PHOSITA would understand that “everything taught in [Itaya]
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`could be realized at a variety of scales and probably was.” Ex. 2051, Welch Dec. 17
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`Tr. at 17:16-20.
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`4.
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`PO’s characterizations of this testimony are not accurate. The quotation
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`included in PO’s motion is not Dr. Welch opining on what the document “shows,” as
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`PO suggests. See Ex. 2051, Welch Dec. 17 Tr. at 19:3-12. Dr. Welch was simply
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`asked to read a portion of the document into the record. Id.; see also Ex. 1051, AMD
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`Specification Sheet at p. 2. The purpose of Dr. Welch’s supplemental declaration on
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`this point was simply to show that Mr. Lim’s assumption that Intel/AMD x86 based
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`processors would not work on anything other than a PC was unfounded. See Ex.
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`1042, Welch Supp. Decl. at ¶ 19. Nothing in this testimony or in the document
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`contradicts Dr. Welch’s opinion or supports Mr. Lim’s assumption. See Ex. 2051,
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`Welch Dec. 17 Tr. at 19:3-12. Further, nothing in this testimony contradicts Dr.
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`Welch’s other opinions that other processor families supported I/O controllers for
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`small handheld devices. See Ex. 1042, Welch Supp. Decl. at ¶ 20.
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`U.S. Patent No. 7,218,313
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`PO’s observation is not relevant. Petitioner has not argued, and Dr.
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`5.
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`Welch has not opined, that Aebli teaches an input controller inside a mobile phone.
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`See generally Paper 21, Petitioner’s Reply; Ex. 1042, Welch Supp. Decl. at ¶ 21; Ex.
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`2051, Welch Dec. 17 Tr. at 20:11-21:14. Rather, Dr. Welch simply opines that Aebli
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`“provides a further example of handheld devices using input controllers….” Ex. 1042,
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`Welch Supp. Decl. at ¶ 21. Nothing in this testimony contradicts or limits Dr. Welch’s
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`opinion. Ex. 2051, Welch Dec. 17 Tr. at 20:11-21:14.
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`6.
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`PO’s characterizations of this testimony are not accurate. Once again, in
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`the testimony cited in PO’s observation, Dr. Welch was simply asked to read into the
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`record a portion of the document. See Ex. 2051, Welch Dec. 17 Tr. at 23:10-27:13.
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`Dr. Welch testified that this discussion in Willner was referring to the specific
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`example of chording to generate alphabetic characters, and even that limited example
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`allowed for some use of chording. See id. PO’s assertion that Pallakoff and Willner
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`have opposite teachings about depressing multiple keys is not supported by this
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`testimony (or any other evidence in the record). See id.
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`Respectfully submitted,
`ERISE IP, P.A.
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`/Abran J. Kean/ _
`Eric A. Buresh, Reg. No. 50,394
`Abran J. Kean, Reg. No. 58,540
`6201 College Blvd., Suite 300
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`BY:
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`IPR2015-00396
`U.S. Patent No. 7,218,313
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`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`abran.kean@eriseip.com
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`ATTORNEYS FOR PETITIONER
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`IPR2015-00396
`U.S. Patent No. 7,218,313
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 8, 2016 the
`foregoing Petitioner’s Response to Patent Owner’s Motion for Observation was served via
`electronic filing with the Board on the following counsel of record for Patent Owner:
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`Michael Mauriel, USPTO Reg. No. 44,226
`Sherman W. Kahn (pro hac vice)
`MAURIEL KAPOUYTIAN WOODS LLP
`15 West 26th Street, 7th Floor
`New York, NY 10010
`Telephone: (212) 529-5131 Ex. 101
`Facsimile:
`(212) 529-5132
`E-mail:
`mmauriel@mkwllp.com
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`skahn@mkwllp.com
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`Robert J. Gilbertson (pro hac vice)
`Sybil L. Dunlop (pro hac vice)
`X. Kevin Zhao (pro hac vice)
`GREENE ESPEL PLLP
`222 South Ninth Street, Ste. 2200
`Minneapolis, MN 55402
`Telephone: (612) 373-0830
`Facsimile:
`(612) 373-0929
`E-mail:
`bgilbertson@greeneespel.com
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`sdunlop@greeneespel.com
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`kzhao@greeneespel.com
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`Dated: January 8, 2016
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`Respectfully submitted,
`ERISE IP, P.A.
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`/Abran J. Kean/ _
`Eric A. Buresh, Reg. No. 50,394
`Abran J. Kean, Reg. No. 58,540
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`IPR2015-00396
`U.S. Patent No. 7,218,313
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`ATTORNEYS FOR PETITIONER
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