UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
` v.
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`Case No. IPR2015‐00396
`
`Patent No. 7,218,313
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
` Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313‐145
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
` v.
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`Case No. IPR2015‐00396
`
`Patent No. 7,218,313
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
` Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313‐145
`
`
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`TABLE OF CONTENTS
`
`
`
`
`
`
` Page
`
`
`
`
`
` TABLE OF AUTHORITIES ............................................................................. iii
` EXHIBIT LIST ................................................................................................. v
` I.
`INTRODUCTION .................................................................................. 1
` II.
`OVERVIEW OF THE ’313 PATENT ..................................................... 2
` III. THE PETITION FAILS TO SET FORTH ANY EVIDENCE
`
`SUPPORTING MULTIPLE GROUNDS ................................................. 5
` IV.
`THE PETITION’S REDUNDANT GROUNDS ARE NOT
`
`ENTITLED TO CONSIDERATION ....................................................... 9
` V.
`THE PETITION IMPROPERLY RELIES ON ARGUMENTS
`
`PRESENTED IN AN EXPERT DECLARATION AND
`
`CLAIM CHARTS ................................................................................. 20
` VI.
`CLAIM CONSTRUCTION ................................................................... 25
` VII. APLIX RESERVES ALL RIGHTS TO RESPOND
`
`FURTHER ........................................................................................... 32
` VIII. CONCLUSION AND STATEMENT OF PRECISE
`
`RELIEF REQUESTED ......................................................................... 33
`
`
`
`
`
`
`
`
`ii
`
`
`
`U.S. Patent No. 7,218,313
`TABLE OF AUTHORITIES
`
`
`
`
`
`
`
`
`
`Cases
`
`
`IPR2015‐00396
`
` Page
`
`
`
`BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheeta Omni, LLC
`IPR2013-00175 ....................................................................... 20, 22, 23
`
`
`Cisco Sys. Inc. v. C-Cation Techs.
`IPR2014-00454 ....................................................................... 20, 21, 22
`
`
`Google Inc. v. Everymd.com LLC
`IPR2014-00347 ..................................................................................... 5
`
`
`Google Inc. v. Visual Real Estate, Inc.
` IPR2014-01338 .................................................................................. 23
`
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.
`CBM2012-00003 .................................................. 10, 11, 13, 14, 15, 19
`
`
`Petroleum Geo-Servs., Inc. v. WesternGeco LLC
`IPR2014-00689 ................................................................................... 25
`
`
`Raymarine, Inc. v. Navico Holding AS
`
`IPR2013-00355 ................................................................................... 10
`
`Samsung Electronics Co. v. Black Hills Media, LLC
`
`IPR2014-00740 ............................................................................. 25, 26
`
`Ultratec, Inc. v. Sorenson Commcn’s, Inc.
`IPR2013-00288 ............................................................................. 10, 19
`
`
`VMware, Inc. v. Elecs. & Telecomms. Research Inst.
`IPR 2014-00901 .................................................................................. 23
`
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.
`IPR2013-00054 ..................................................................................... 5
`
`
`
`
`
`
`iii
`
`
`
`U.S. Patent No. 7,218,313
`
`IPR2015‐00396
`
`Statutes
`
`35 U.S.C. § 326 ............................................................................................... 9
`
`
`
`Regulations
`
`37 C.F.R. § 42.1 .............................................................................................. 9
`
`37 C.F.R. § 42.6 ............................................................................................ 20
`
`37 C.F.R. § 42.22 ............................................................................................ 9
`
`37 C.F.R. § 42.104 .......................................................................................... 5
`
`
`37 C.F.R. § 42.107 .......................................................................................... 1
`
`
`
`
`
`iv
`
`
`
`IPR2015‐00396
`
`EXHIBIT LIST
`
`
`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`U.S. Patent No. 7,218,313
`Exhibit 1001
`U.S. Patent 7,218,313
`Exhibit 1002
`File History of U.S. Patent No. 7,218,313
`Exhibit 1013
`Expert Declaration of Dr. Gregory Francis Welch
`
`
`EXHIBITS FILED BY APLIX IP HOLDINGS CORPORATION
`Exhibit 2005
`Amended Complaint in Aplix IP Holdings Corporation v.
`Entertainment America LLC, Case No. 1:14‐cv‐12745
`
`Sony Computer Entertainment Inc. and Sony Computer
`
`v
`
`
`
`
`
`
`
`
`
`I.
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`INTRODUCTION
`Patent Owner Aplix IP Holdings Corporation (“Aplix”) submits this
`preliminary response, under 37 C.F.R. § 42.107, to Petitioner Sony
`Computer Entertainment America LLC’s (“Petitioner’s”) petition for inter
`partes review.
`Petitioner has failed to meet its burden of demonstrating that trial is
`required on each of the multiple grounds it raises per claim. In fact, for
`several proposed grounds, Petitioner fails to support its assertions with
`any reference to the cited prior art. Aplix respectfully suggests that the
`Board should not institute a review of the many redundant and
`unsupported grounds offered in the petition or pursuant to improper
`arguments asserted in Petitioner’s claim charts and incorporated via the
`expert declaration submitted with the petition. Finally, and in the
`alternative, to the extent that the Board institutes any review of U.S. Patent
`No. 7,218,313 (“the ’313 patent”) it should decline to construe the claim
`limitations that Petitioner proposes for construction.
`
`
`
`
`1
`
`
`
`II.
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`OVERVIEW OF THE ’313 PATENT
`Beginning in 2003, a group of Massachusetts inventors led by Dr.
`Beth Marcus, developed interactive‐design technologies for improving data
`entry, control, and game‐play on hand‐held devices and host devices.1
`Among other advancements, Dr. Marcus and her team deployed
`configurable input systems and elements on multiple surfaces of a hand‐
`held device, implementing unique combinations of and applications for
`particular types of input elements.2 The team also designed hand‐held
`accessory devices that would enable users to remotely operate (and play
`video games on) cell phones and tablet devices.3
`Marcus and her team applied for patents on their inventions, and,
`after a thorough review, the United States Patent & Trademark Office
`(“USPTO”) awarded them several patents, including, on May 15, 2007, the
`’313 patent, titled “Human Interface System.”4 The ’313 patent claims a
`hand‐held electronic device as well as methods for providing an interface
`
`1
`Ex. 2005 at ¶ 2.
`2
`Ex. 2005 at ¶ 2.
`3
`Ex. 2005 at ¶ 2.
`4
`Ex. 2005 at ¶ 12.
`
`
`
`2
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`for use with such a device. The claims recite arrangements that
`substantially optimize a biomechanical effect of a human user’s hand.5 In
`some of the claimed embodiments, input elements are configured to be
`selectively mapped to one or more input functions of a selected one of a
`plurality of applications.6 Some of the claimed embodiments can be
`configured so that manipulation of a second‐surface input element causes
`an input function mapped to a first‐surface input element to change.7 In
`some of the claimed embodiments, a first‐surface input element is
`configured to be mapped to more than one function of a selected
`application.8
`The USPTO considered 144 references during examination of the
`application for the ’313 patent. In its Office Action dated October 5, 2006,
`the USPTO discussed the Liebenow reference in detail and found that
`neither it nor the other considered references, alone or in combination,
`disclosed “wherein at least one of the input elements of the second input
`
`5
`Ex. 1001 at claims 1, 15, 21, 30, 35, 37, and 52.
`6
`See, e.g., Ex. 1001 at claim 1.
`7
`See, e.g., Ex. 1001 at claim 1.
`8
`See, e.g., Ex. 1001 at claim 21.
`
`
`
`3
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`assembly is a selectively configurable sensing surface so as to provide a
`plurality of delineated active areas, further wherein one or more of the
`delineated active areas is mapped to one or more functions associated with
`the selected application.”9 In the Notice of Allowance dated March 1, 2007,
`the USPTO found that several other claimed limitations were also missing
`from the prior art, including, inter alia, that “at least one of the input
`elements of the first input assembly is further configured to map to more
`than one input function associated with a selected one of the plurality of
`applications.”10
`This patent was assigned to Dr. Marcus’ company, Zeemote, Inc., a
`Boston‐area start‐up, which sought to commercialize the technology.11
`Aplix, a Japanese operating company, later acquired Zeemote’s assets,
`including the ’313 patent.12
`
`
`9
`Ex. 1002 at 116.
`10
`Ex. 1002 at 44.
`11
`Ex. 2005 at ¶ 2.
`12
`Ex. 2005 at ¶ 2.
`
`
`
`4
`
`
`
`
`
`III. THE PETITION FAILS TO SET FORTH ANY EVIDENCE SUPPORTING
`MULTIPLE GROUNDS
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`At the threshold, Petitioner fails to set forth evidence or argument
`commensurate with its assertions. In particular, several proposed grounds
`are not supported by any evidence in the petition’s claim charts. In this
`manner, Petitioner improperly places the burden on the Board and Aplix to
`guess how asserted references are being applied by Petitioner in each
`ground. See 37 C.F.R. § 42.104(b)(2)(4); Google Inc. v. Everymd.com LLC,
`IPR2014‐00347, Paper 9 at 24‐25; Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013‐00054, Paper 12 at 10‐11.
`This problem pervades the petition’s claim charts. For example, the
`petition asserts that Griffin in view of Rekimoto in further view of Pirkola
`renders claims 1, 3, 8, 9, 10, and 12 obvious.13 The petition, however, does
`not map any part of Pirkola to these claims. Rather, it simply asks that
`evidence from Griffin and/or Rekimoto alone be used to reject these
`claims.14 There are several other instances of similarly unsupported
`combinations:
`
`13
`Paper No. 2 (petition) at 27.
`14
`Paper No. 2 (petition) at 27‐29.
`
`
`
`
`
`5
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
` The petition asserts that Griffin in view of Rekimoto in further
`view of Liebenow renders claims 1, 3, 8, 9, 10, and 12 obvious,
`but presents no evidence mapping any part of Liebenow to
`these claims.15
` The petition asserts that Pallakoff in view of Ishihara in further
`view of Liebenow renders claims 1, 3, 5, 10, and 12 obvious, but
`presents no evidence mapping any part of Liebenow to these
`claims.16
` The petition asserts that Griffin in view of Rekimoto in further
`view of Martin renders claims 1, 3, 10, and 12 obvious, but
`presents no evidence mapping any part of Martin to these
`claims.17
` The petition asserts that Pallakoff in view of Ishihara in further
`view of Martin renders claims 1, 3, 5, 10, and 12 obvious, but
`
`15
`Paper No. 2 (petition) at 44‐46.
`16
`Paper No. 2 (petition) at 44‐46.
`17
`Paper No. 2 (petition) at 46‐50.
`
`
`
`6
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`presents no evidence mapping any part of Martin to these
`claims.18
` The petition asserts that Griffin in view of Rekimoto in further
`view of Armstrong renders claims 1, 3, 8, 9, 10, and 12 obvious,
`but presents no evidence mapping any part of Armstrong to
`these claims.19
` The petition asserts that Pallakoff in view of Ishihara in further
`view of Armstrong renders claims 1, 3, 5, 10, and 12 obvious,
`but presents no evidence mapping any part of Armstrong to
`these claims.20
` The petition asserts that Griffin in view of Rekimoto in further
`view of Willner renders claims 1, 3, 8, 9, 10, and 12 obvious, but
`presents no evidence mapping any part of Willner to these
`claims.21
`
`Paper No. 2 (petition) at 46‐50.
`18
`19
`Paper No. 2 (petition) at 50‐53.
`20
`Paper No. 2 (petition) at 50‐53.
`21
`Paper No. 2 (petition) at 53‐56.
`
`
`
`7
`
`
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`IPR2015‐00396
`U.S. Patent No. 7,218,313
` The petition asserts that Pallakoff in view of Ishihara in further
`view of Willner renders claims 1, 3, 5, 10, and 12 obvious, but
`presents no evidence mapping any part of Willner to these
`claims.22
` The petition asserts that Griffin in view of Rekimoto in further
`view of Hedburg renders claims 1, 3, 8, 9, 10, and 12 obvious,
`but presents no evidence mapping any part of Hedburg to these
`claims.23
` The petition asserts that Pallakoff in view of Ishihara in further
`view of Hedburg renders claims 1, 3, 5, 10, and 12 obvious, but
`presents no evidence mapping any part of Hedburg to these
`claims.24
`
`Making these assertions without evidence or explanation
`improperly shifts Petitioner’s burden onto Aplix to guess how the asserted
`references are being applied by Petitioner. But even beyond this
`
`22
`Paper No. 2 (petition) at 53‐56.
`23
`Paper No. 2 (petition) at 56‐59.
`24
`Paper No. 2 (petition) at 56‐59.
`
`
`
`8
`
`
`
`
`
`
`IV. THE PETITION’S REDUNDANT GROUNDS ARE NOT ENTITLED TO
`CONSIDERATION
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`dispositive failure to present evidence, Petitioner’s approach highlights the
`petition’s extensive redundancies, detailed in the next section.
`Congress has directed the Board to consider “the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings . . . .” 35 U.S.C. § 326(b). Pursuant to this congressional
`mandate, and to promote efficiency, the Board has promulgated
`regulations, one of which requires petitioners to provide “[a] full statement
`of the reasons for the relief requested, including a detailed explanation of
`the significance of the evidence including material facts, and the governing
`law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2).
`Here, Petitioner asks the Board to review 13 claims pursuant to 87
`distinct grounds, raising as many as eight separate grounds per claim. Yet
`Petitioner fails to discharge its obligation to explain, with detailed
`argument, why the “just, speedy, and inexpensive resolution” of this
`proceeding requires trial on each of several the grounds it raises per claim,
`as required by 37 C.F.R. § 42.1(b).
`The Board has concluded that “multiple grounds, which are
`presented in a redundant manner by a petitioner who makes no
`
`
`
`9
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`meaningful distinction between them, are contrary to the regulatory and
`statutory mandates, and therefore are not all entitled to consideration.”
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012‐00003, Paper 7 at
`2. To assess this issue, the Board has emphasized that “[t]he proper focus
`of a redundancy designation is on whether Petitioner articulates a
`meaningful distinction in terms of relative strengths and weaknesses with
`respect to the application of the prior art disclosures to one or more claim
`limitations,” Ultratec, Inc. v. Sorenson Commc’ns, Inc., IPR2013‐00288,
`Paper 23 at 4, and “not on whether the applied prior art disclosures have
`differences, for it is rarely the case that the disclosures of different prior art
`references will be literally identical,” Raymarine, Inc. v. Navico Holding AS,
`IPR2013‐00355, Paper 21 at 3 (emphasis added). Applying these
`principles, the Board has refused to consider grounds when a petitioner
`fails to explain “why the grounds of unpatentability based, in whole or in
`part,” on one piece of prior art are “stronger or weaker than the grounds of
`unpatentability on” other pieces. Ultratec, Inc., IPR2013‐00288, Paper 23
`at 4. The Board has identified two types of redundancies, both of which
`are improper and both of which are present in the petition. The first
`type—vertical redundancy—involves more than one piece of prior art
`
`
`
`10
`
`
`
`A.
`
`The petition improperly presents vertically redundant
`grounds.
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`applied both in partial combination and in full combination to invalidate a
`claim, when a single piece of prior art would be sufficient. Liberty Mut.,
`CBM2012‐00003, Paper 7 at 3. The second—horizontal redundancy—
`“involves a plurality of prior art references applied not in combination to
`complement each other but as distinct and separate alternatives,” again
`when a single piece of prior art would be sufficient. Id. Petitioner’s
`proposed grounds are redundant in both ways.
`
`Petitioner asserts at least 61 vertically redundant grounds for
`review. Vertical redundancy exists when additional references are added
`to a base reference or combination of references without any apparent or
`explained need for the addition (i.e., the base reference or combination of
`references is already alleged to disclose all elements of the claim, and no
`weaknesses are identified for the base reference or combination of
`references). See, e.g., Liberty Mut., CBM2012‐00003, Paper No. 7 at 12.
`When a petition asserts vertically redundant grounds, it must explain “why
`the reliance in part may be the stronger assertion as applied in certain
`circumstances and why the reliance in whole may also be the stronger
`assertion in other instances.” Id. at 3 (emphasis in original).
`
`
`
`11
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`The petition alleges vertically redundant grounds as reflected in the
`chart below:
`Griffin in view of
`Rekimoto
`
`Claim
`
`Base Reference
`
`Additional References added to
`Base Reference
`
`Griffin in view of Rekimoto in further
`view of Pirkola;
`Griffin in view of Rekimoto in further
`view of Liebenow;
`Griffin in view of Rekimoto in further
`view of Martin;
`Griffin in view of Rekimoto in further
`view of Armstrong;
`Griffin in view of Rekimoto in further
`view of Willner; and
`Griffin in view of Rekimoto in further
`view of Hedburg.
`
`1, 3,
`8‐10,
`12
`
`
`
`12
`
`
`
`U.S. Patent No. 7,218,313
`Pallakoff in view of
`Ishihara
`
`Claim
`
`Base Reference
`
`Additional References added to
`Base Reference
`
`IPR2015‐00396
`Pallakoff in view of Ishihara in further
`view of Liebenow;
`Pallakoff in view of Ishihara in further
`view of Martin;
`Pallakoff in view of Ishihara in further
`view of Armstrong;
`Pallakoff in view of Ishihara in further
`view of Willner; and
`Pallakoff in view of Ishihara in further
`view of Hedburg.
`
`If the petition is going to claim, for example, that Griffin in view of
`Rekimoto renders claim 1 obvious and that Griffin in view of Rekimoto in
`further view of Pirkola does the same, Petitioner must explain, “why the
`reliance in part may be the stronger assertion as applied in certain
`circumstances and why the reliance in whole may also be the stronger
`assertion in other instances.” Liberty Mut., CBM2012‐00003, Paper No. 7 at
`3 (emphasis in original). This the petition does not do. Instead, petitioner
`
`1, 3,
`5, 10,
`12
`
`
`
`13
`
`
`
`B.
`
`The petition improperly presents horizontally redundant
`grounds.
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`tacitly concedes the redundancy of its arguments, incorporating prior
`obviousness arguments into each of grounds B, D, E, F, G, and H.25 In other
`words, Petitioner provides no reason for the Board to consider each above‐
`identified ground independently for all claims. For this reason, the Board
`should decline to consider ground B, D, E, F, G, and H26 with respect to
`these claims.
`
`Petitioner’s claimed grounds are horizontally redundant with respect
`to claims 1, 3, and 4‐14. Horizontal redundancy occurs when multiple
`references are relied upon to “provide essentially the same teaching to
`meet the same claim limitation, and the associated arguments do not
`explain why one reference more closely satisfies the claim limitation at
`issue in some respects than another reference, and vice versa.” Liberty
`
`25
`Paper No. 2 (petition) at 28 (arguing that Griffin in view of
`Rekimoto in further view of Pirkola renders claim 1 obvious because “[a]s
`discussed above, it would have been obvious to a person having ordinary
`skill in the art at the time of the ’313 patent to combine Griffin and
`Rekimoto to render claims 1, 3, 8‐10, and 12 obvious”).
`26
`Paper No. 2 (petition) at 27‐59 (sections IV.B ‐ IV.H).
`
`
`
`14
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`Mut., CBM2012‐00003, Paper 7 at 3 (emphasis in original). The Board’s
`instructions are clear—if one alternative ground is better from all
`perspectives, then the petition should not burden the patent owner and the
`Board with the weaker ground. And if there is no difference in the
`grounds, the petition should assert only one of the grounds. Id. at 12.
`“Only if the Petitioner reasonably articulates why each ground has strength
`and weakness relative to the other should both grounds be asserted for
`consideration.” Id.
`Here, Petitioner proposes the rejection of claims 1, 3, and 4‐14 under
`multiple sets of references:
`i)
`using Griffin in view of Rekimoto as the primary reference; and
`ii)
`using Pallakoff in view of Ishihara as the primary reference.
`The chart below demonstrates this overlap:
`
`
`
`
`
`15
`
`
`
`Claim
`
`Ground
`(Griffin in view of Rekimoto as
`the primary reference)
`
`U.S. Patent No. 7,218,313
`Griffin in view of Rekimoto;
`Griffin in view of Rekimoto in
`further view of Pirkola;
`Griffin in view of Rekimoto in
`further view of Liebenow;
`Griffin in view of Rekimoto in
`further view of Martin;
`Griffin in view of Rekimoto in
`further view of Armstrong;
`Griffin in view of Rekimoto in
`further view of Willner; and
`Griffin in view of Rekimoto in
`further view of Heburg.
`Griffin in view of Rekimoto in
`further view of Liebenow.
`
`1, 3,
`10, 12
`
`4
`
`Ground
`(Pallakoff in view of Ishihara as
`the primary reference)
`
`IPR2015‐00396
`Pallakoff in view of Ishihara;
`Pallakoff in view of Ishihara in
`further view of Liebenow;
`Pallakoff in view of Ishihara in
`further view of Martin;
`Pallakoff in view of Ishihara in
`further view of Armstrong;
`Pallakoff in view of Ishihara in
`further view of Willner; and
`Pallakoff in view of Ishihara in
`further view of Hedburg.
`
`Pallakoff in view of Ishihara in
`further view of Liebenow.
`
`
`
`16
`
`
`
`Ground
`(Pallakoff in view of Ishihara as
`the primary reference)
`
`IPR2015‐00396
`Pallakoff in view of Ishihara;
`Pallakoff in view of Ishihara in
`further view of Liebenow;
`Pallakoff in view of Ishihara in
`further view of Martin;
`Pallakoff in view of Ishihara in
`further view of Armstrong;
`Pallakoff in view of Ishihara in
`further view of Willner; and
`Pallakoff in view of Ishihara in
`further view of Hedburg.
`Pallakoff in view of Ishihara in
`further view of Martin
`Pallakoff in view of Ishihara in
`further view of Armstrong
`
`U.S. Patent No. 7,218,313
`Griffin in view of Rekimoto in
`further view of Pirkola.
`
`Claim
`
`Ground
`(Griffin in view of Rekimoto as
`the primary reference)
`
`5
`
`Griffin in view of Rekimoto in
`further view of Martin
`Griffin in view of Rekimoto in
`further view of Armstrong
`
`6
`
`7
`
`
`
`17
`
`
`
`Ground
`(Griffin in view of Rekimoto as
`the primary reference)
`
`Claim
`
`U.S. Patent No. 7,218,313
`8, 9 Griffin in view of Rekimoto;
`Griffin in view of Rekimoto in
`further view of Pirkola;
`Griffin in view of Rekimoto in
`further view of Liebenow;
`Griffin in view of Rekimoto in
`further view of Martin;
`Griffin in view of Rekimoto in
`further view of Armstrong;
`Griffin in view of Rekimoto in
`further view of Willner; and
`Griffin in view of Rekimoto in
`further view of Heburg.
`11 Griffin in view of Rekimoto in
`further view of Willner.
`
`IPR2015‐00396
`Pallakoff in view of Ishihara in
`further view of Martin
`
`Ground
`(Pallakoff in view of Ishihara as
`the primary reference)
`
`Pallakoff in view of Ishihara in
`further view of Willner.
`
`
`
`18
`
`
`
`Ground
`(Griffin in view of Rekimoto as
`the primary reference)
`
`Ground
`(Pallakoff in view of Ishihara as
`the primary reference)
`
`Claim
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`Pallakoff in view of Ishihara in
`13, 14 Griffin in view of Rekimoto in
`further view of Hedburg.
`further view of Hedburg.
`
`The petition does not explain “the relative strengths or weaknesses
`between the applied prior art references.” Ultratec, Inc., IPR2013‐00288,
`Paper 23 at 4. Nor does the petition explain why any of the multiple
`references is a “better reference than the other two references.” Liberty
`Mut., CBM2012‐00003, at 9.
`In fact, the petition makes only a token
`attempt to articulate any distinction between the two primary references,
`explaining “Pallakoff in view of Ishihara is not redundant to Griffin in view
`of Rekimoto at least because Pallakoff in view of Ishihara also teaches the
`limitation of Claim 5.”27 Claim 5, however, is only one of 13 claims for
`which Petitioner argues that Griffin in view of Rekimoto and Pallakoff in
`view of Ishihara (by themselves or in conjunction with additional prior art)
`invalidate a claim of the ’313 patent. Yet Petitioner makes no attempt to
`distinguish any redundancies in its arguments relating to claims 1, 3, 4, 6,
`
`27 Paper No. 2 (petition) at 31.
`
`
`
`19
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`7, 8, 9, 10, 11, 12, 13, and 14. Adding Liebenow, Martin, Armstrong,
`Willner, and Hedberg to both Griffin in view of Rekimoto and Pallakoff in
`view of Ishihara adds still additional layers of repetition. In these
`circumstances, Petitioner has not met its burden to distinguish overlapping
`prior‐art references. To the contrary, Petitioner relies on the same
`justifications to assert separate and distinct grounds. For these reasons,
`the Board should decline to consider the petition’s horizontally redundant
`grounds.28
`
`
`V. THE PETITION IMPROPERLY RELIES ON ARGUMENTS
`PRESENTED IN AN EXPERT DECLARATION AND CLAIM CHARTS
`
`The petition improperly relies on arguments presented in
`an expert declaration.
`
`It is improper to incorporate by reference arguments from one
`document into another document. 37 C.F.R. § 42.6(a)(3). For this reason,
`the Board has clarified that “a party may not make its case within the
`declaration of an expert” and “[i]t is improper for any argument to be fully
`developed and presented, not in the party’s paper itself, but in the
`declaration of an expert.” BAE Sys. Info. and Elec. Sys. Integration, Inc. v.
`Cheeta Omni, LLC, IPR2013‐00175, Paper 45 at 23; see also Cisco Sys. Inc. v.
`
`28
`Paper No. 2 (petition) at 11‐59 (Sections IV.A ‐ IV.H).
`
`
`
`A.
`
`
`
`
`
`20
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`C‐Cation Techs., IPR2014‐00454, Paper 12 at 8 (emphasizing that the
`practice of citing to “large portions of another document, without sufficient
`explanation of those portions, amounts to incorporation by reference”).
`Ignoring these directives, the petition repeatedly limits its argument to
`conclusory statements parroting concepts from case law and, rather than
`explaining why those concepts apply to the asserted prior art and claims,
`instead incorporates the declaration of Petitioner’s proffered expert, Dr.
`Gregory Welch, by reference and directs the Board to declaration
`paragraphs presenting the actual explanation and argument.
`For example, the petition asserts that it would have been obvious to
`one of skill in the art to combine Griffin and Rekimoto and dedicates a
`single paragraph to this argument.29 That paragraph, however, does little
`more than state conclusions about what a person of ordinary skill “would
`have recognized” and whether the combination would have rendered
`Griffin “inoperable” and “would have yielded predictable results.”30 The
`petition does not even attempt to explain in that paragraph why a person of
`ordinary skill in the art would have thought to combine the references the
`
`29
`Paper No. 2 (petition) at 13‐14.
`30
`Paper No. 2 (petition) at 13‐14.
`
`
`
`21
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`petition suggests, why the combination would not have rendered Griffin
`inoperable, or why it would have yielded predictable results.
`That paragraph, however, incorporates ten paragraphs from Dr.
`Welch’s declaration, paragraphs 38‐47.31 These ten paragraphs spill over
`eight pages, include illustration, and reference the declaration’s seven‐page
`“Background of the Technology,” section.32 Thus for a one‐paragraph
`treatment lacking any explanation of the alleged obviousness of modifying
`Griffin with Rekimoto, the petition incorporates 15 pages of discussion
`from the expert’s declaration.33 As in Cisco, this “amounts to incorporation
`by reference.” Cisco, IPR2014‐00454, Paper 12 at 8.
`The petition mirrors this approach throughout.34 Plainly, the
`argument is “fully developed and presented, not in the party’s paper itself,
`but in the declaration of an expert,” which the Board’s BAE decision
`recognized is improper. In such circumstances, the Board has not hesitated
`
`31
`Paper No. 2 (petition) at 13‐14.
`32
`Ex. 1013 (Welch Decl.) at 20‐27.
`33
`Paper No. 2 (petition) at 13‐14 (citing Welch Dec. ¶¶ 38‐47).
`34
`See, e.g., Paper No. 2 (petition) at 28, 31, 44‐45, 47‐48, 51‐52,
`54‐55, and 57‐58.
`
`
`
`22
`
`
`
`B.
`
`The petitioner improperly relies on arguments presented
`in claim charts.
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`to find that a petitioner has failed to meet its burden in an appropriate
`manner. See, e.g., BAE Sys. Info., IPR2013‐00175, Paper 45 at 24.
`The Board has clarified that “[c]laim charts should only be used to
`provide an element‐by‐element showing as to how the prior art teaches the
`limitations of a claim.” Google Inc. v. Visual Real Estate, Inc., IPR2014‐
`01338, Paper No. 3 at 2. To this end, claim charts “may not include
`arguments, claim construction, statements of the law, or detailed
`explanations as to why a claim limitation is taught or rendered obvious by
`the prior art.” Id. “Explanations, characterizations, conclusions, or
`inferences drawn from the references are improper in a claim chart.”
`VMware, Inc. v. Elecs. & Telecomms. Research Inst., IPR2014‐00901, Paper
`No. 7 at 2. “If there is any need to explain how a reference discloses or
`teaches a limitation, that explanation must be elsewhere in the petition—
`not in a claim chart.” Id. at 2‐3 (emphasis in original).
`Petitioner’s claim charts violate these directives, including repeated
`characterizations, conclusions, and inferences drawn from the cited prior
`art. Indeed, Petitioner frequently asserts, as evidence, the very conclusions
`
`
`
`23
`
`
`
`IPR2015‐00396
`U.S. Patent No. 7,218,313
`that Petitioner asks the Board to draw from its evidence. For example,
`Petitioner’s claim chart asserts that:
`Pallakoff discloses that the device, which includes a
`processor, is communicatively coupled [with] an
`electronic device remotely hosting applications35
` This assertion contains no citation, but tautologically parrots limitations of
`the ’313 patent’s claim 12. This approach is maintained throughout, with
`the petition offering self‐serving summaries or interpretations of cited
`prior art.36 Beyond occasionally asking the reader to extrapolate from a
`
`35
`Paper No. 2 (petition) at 43.
`36
`Paper No. 2 (petition) at 15, 18, 19, 22, 25 (“Griffin discloses . . .
`.”), 16 (“The keyboard 900 and thumbwheel 1000 are configured to
`selectively map one or more input functions associated with a selected
`application.”), 20, 23, 24 (“Rekimoto discloses . . . .”), 23 (“As
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