Trials@uspto.gov Paper 32
`571-272-7822
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`Date Entered: June 3, 2016
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`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 IPR2015-00396
`Patent 7,218,313 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1 and 3–14 of U.S.
`Patent No. 7,218,313 B2 are unpatentable.
`
`
`
`
`571-272-7822
`
`Date Entered: June 3, 2016
`
`
`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 IPR2015-00396
`Patent 7,218,313 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1 and 3–14 of U.S.
`Patent No. 7,218,313 B2 are unpatentable.
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`A. Procedural History
`Petitioner, Sony Computer Entertainment America LLC, filed a
`Petition requesting an inter partes review of claims 1 and 3–14 of
`U.S. Patent No. 7,218,313 B2 (Ex. 1001, “the ’313 patent”). Paper 2
`(“Pet.”). Patent Owner, Aplix IP Holdings Corporation, filed a Preliminary
`Response. Paper 10 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, on June 22, 2015, we instituted an inter partes
`review of claims 1 and 3–14, pursuant to 35 U.S.C. § 314. Paper 11
`(“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 15 (“PO Resp.”)) and Petitioner filed a Reply (Paper 21
`(“Pet. Reply”)). Patent Owner filed a Motion for Observations (Paper 25)
`and Petitioner filed a Response to the Observations (Paper 29). An oral
`hearing was held on January 19, 2016, and a transcript of the hearing is
`included in the record (Paper 31; “Tr.”).
`B. Related Proceedings
`The ’313 patent is involved in the following lawsuit: Aplix IP
`Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
`(MLW) (D. Mass.). Pet. 59.
`C. The ’313 Patent
`The ’313 patent relates to hand-held electronic devices, such as cell
`phones, personal digital assistants (“PDAs”), pocket personal computers,
`smart phones, hand-held game devices, bar-code readers, and remote
`controls having a keypad or one or more input elements. Ex. 1001, 1:5–11.
`The hand-held device includes, on one surface, one or more software
`configurable input elements that can be manipulated by a user’s thumb(s) or
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`stylus, and on the other surface, one or more software configurable selection
`elements that can be manipulated by a user’s finger(s). Id. at Abstract.
`D. Illustrative Claim
`Of the challenged claims, claim 1 is the only independent claim.
`Claims 3–14 depend either directly or indirectly from claim 1.
`Claim 1, reproduced below, is illustrative.
`1. A hand-held electronic device comprising:
`a memory configured to store a plurality of applications,
`wherein each application is associated with a set of functions;
`a processor configured to process a selected one of the
`plurality of applications;
`a first input assembly having a plurality of input elements
`on a first surface configured to receive input from a human user
`through manipulation of the plurality of input elements, wherein
`at least one of the input elements on the first surface is configured
`to selectively map to one or more input functions of the set of
`functions associated with the selected one of the plurality of
`applications;
`a second input assembly having one or more input
`elements on a second surface configured to be manipulated by
`one or more of the human user’s fingers, wherein at least one of
`the input elements on the second surface is further configured to
`be selectively mapped to one or more input functions of the set
`of functions corresponding to the selected one of the plurality of
`applications, further wherein the plurality of input elements on
`the first surface and the one or more input elements on the second
`surface are arranged so as
`to substantially optimize a
`biomechanical effect of the human user’s hand; and
`wherein at least one of the input elements of the second
`input assembly is a sensor pad configured to selectively represent
`a plurality of delineated active areas, wherein manipulation of a
`delineated active area causes the input function of one or more
`input elements of the first input assembly to change.
`Ex. 1001, 15:46–16:10.
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`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 1 and 3–14 on the
`following grounds:
`
`
`
`Claims
`
`Basis
`
`References
`
`1, 3, 5, 6, 8–10, and 12 § 103(a)
`
`Pallakoff,1 Ishihara,2 and Martin3
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`4
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`7
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`11
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`13 and 14
`
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`§ 103(a)
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`Pallakoff, Ishihara, and Liebenow4
`
`§ 103(a)
`
`Pallakoff, Ishihara, and
`Armstrong5
`
`§ 103(a)
`
`Pallakoff, Ishihara, and Willner6
`
`§ 103(a)
`
`Pallakoff, Ishihara, and Hedberg7
`
`II. ANALYSIS
`A. Level of Skill of Person in the Art
`We find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`
`1 Pallakoff, US 2002/0163504 A1, Pub. Nov. 7, 2002 (Ex. 1006).
`2 Ishihara, JP 2002/77357, Pub. Mar. 15, 2002 (Ex. 1007).
`3 Martin et al., US 6,563,487 B2, Iss. May 13, 2003 (Ex. 1009).
`4 Liebenow et al., US 2002/0118175 A1, Pub. Aug. 29, 2002 (Ex. 1008).
`5 Armstrong, US 6,469,691 B1, Iss. Oct. 22, 2002 (Ex. 1010).
`6 Willner et al., US 5,874,906, Iss. Feb. 23, 1999 (Ex. 1011).
`7 Hedberg, PCT WO 99/18495, Pub. Apr. 15, 1999 (Ex. 1012).
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`B. Claim Interpretation
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). Consistent with the broadest reasonable construction,
`claim terms are presumed to have their ordinary and customary meaning as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Also, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
`specification.”). However, an inventor may provide a meaning for a term
`that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following claim terms: “a
`plurality of delineated active areas” (claim 1) and “substantially optimize a
`biomechanical effect of the human user’s hand” (claim 1). Pet. 6–10. In our
`Decision to Institute, we determined that it was not necessary to construe “a
`plurality of delineated active areas” (claim 1) and agreed with Petitioner’s
`construction for “substantially optimize a biomechanical effect of the human
`user’s hand” (claim 1). Dec. 6–7. Neither party has indicated that our
`determinations in that regard were improper and we do not perceive any
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`reason or evidence that now compels any deviation from our initial
`determinations. Accordingly, the following construction applies to this
`Decision:
`
`
`
`Claim Term
`substantially optimize a
`biomechanical effect of the human
`user’s hand
`
`
`Construction
`includes any configuration designed
`to take advantage of any
`biomechanical effect
`
`C. Obviousness Over Pallakoff, Ishihara, and Martin
`Petitioner contends that claims 1, 3, 5, 6, 8–10, and 12 are
`unpatentable under 35 U.S.C. § 103 based on Pallakoff, Ishihara, and
`Martin. Pet. 46. To support its contentions, Petitioner provides a detailed
`showing, mapping limitations of claims 1, 3, 5, 6, 8–10, and 12 to structures
`described by the prior art. Id. at 29–44, 46–50. Petitioner also relies upon
`the Declaration of Dr. Gregory F. Welch (Ex. 1013) to support its position.8
`Pallakoff describes an electronic hand-held device, such as personal
`digital assistants (“PDAs”), hand-held computers, smart-phones, Web-
`phones, pagers, instant-messaging devices, and input-devices connected to
`field equipment, having multiple keys on its face (face-keys), and one or
`more buttons on the side (“side-buttons” or “modifier buttons”). Ex. 1006,
`¶¶ 1, 15, 16. Figure 1 of Pallakoff is reproduced below.
`
`
`8 Patent Owner argues that the Board should give Dr. Welch’s testimony
`little weight. PO Resp. 18–20. We are not persuaded by the arguments.
`The evidence to which we are directed does not support the conclusion that
`Dr. Welch is not a credible witness. See id.
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`As shown in Figure 1 of Pallakoff, a cell phone handset 100 has a
`display 107, a “Shift” side-button 101, a “2nd Letter” side-button 102, and a
`“3rd Letter” side-button 103. Id. ¶ 17. Handset 100 also includes face-keys
`such as 112 and 113. Id. ¶¶ 194, 198. A user types a character by pressing
`one of the face-keys either alone or in combination with side-buttons for
`typing different characters, either with one hand or in combination with the
`left and right hand. Id. ¶¶ 1, 15, 16, 193.
`Pallakoff further describes, in connection with the hand-held device, a
`storage system for storing a plurality of software processes (applications),
`and a processor for running software processes (applications). Id. ¶¶ 20, 24,
`196, 199, 208.
`
`Ishihara describes a hand-held electronic device such as a mobile
`phone, with a display screen on the front surface and a touch panel switch 37
`on the back surface. Ex. 1007, Abstract. The touch panel switch 37, located
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`on the back of the mobile phone, is push-pressure operated to correspond to
`the requisite position of the desired item among items displayed in the
`display area 33, located on the front of the mobile phone. Id. ¶¶ 50–52.
`Martin describes an electronic control device such as a game
`controller, mouse, remote control device, or other type of device, coupled to
`a host computer. Ex. 1009, Abstract. The control device includes a housing,
`a direction pad, and a computer-controlled actuator. Id. Direction pad 18
`can provide an output haptic feedback (e.g., force feedback or tactile
`feedback) such as tactile sensations to the user who is contacting the
`direction pad. Id. at 1:51–53, 4:50–52. In particular, using one or more
`actuators and sensors coupled to the direction pad, a variety of force
`sensations, such as jolts, vibrations, and textures can be output to the user
`who is contacting the button. Id. at 4:60–65. Forces can be based on
`position of the direction pad in a degree of freedom, and/or on the location
`or state of a controlled object in the graphical environment of the host
`computer, and/or independent of direction pad position or object state. Id. at
`4:65–5:2.
`Claim 1 requires a hand-held electronic device comprising a memory
`configured to store a plurality of applications where each application is
`associated with a set of functions and a processor configured to process a
`selected one of the plurality of applications. Ex. 1001, 15:46–51. For these
`limitations, Petitioner contends that Pallakoff discloses a hand-held device
`(e.g., Fig. 1) including a memory for storing applications and a processor to
`process the applications. Pet. 32; Ex. 1006, Abstract, ¶¶ 1, 4, 11, 20, 196.
`As pointed out by Petitioner, Pallakoff describes a processor that runs email,
`instant messaging, calculator, and web browsing applications. Pet. 29; Ex.
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`1006 ¶¶ 24, 208. Petitioner further contends that each application is
`associated with a set of functions. See, e.g., Pet. 29–30. We are persuaded
`by Petitioner’s showing, and adopt it as our own, that Pallakoff discloses a
`hand-held electronic device including a memory for storing applications and
`a processor to process the applications, where each application is associated
`with a set of functions.
`Petitioner also contends that Pallakoff describes a first input assembly
`having a plurality of input elements on a first surface (e.g., Pallakoff Fig. 1),
`where at last one of the input elements is configured to map to one or more
`input functions associated with one of the applications (e.g., for text
`application, pressing the “2” key results in a lowercase a). Pet. 34–35; Ex.
`1006 Abstract, ¶¶ 18 and 187. We are persuaded by Petitioner’s showing,
`and adopt it as our own, that Pallakoff discloses a first input assembly as
`claimed.
`Claim 1 further recites a second input assembly having one or more
`input elements on a second surface. Petitioner relies on Pallakoff’s modifier
`buttons (e.g., Fig. 1, side buttons 101, 102, 103) to meet the one or more
`input elements on a second surface of the second input assembly limitations.
`Pet. 36. Moreover, Petitioner relies on Ishihara to meet the limitation that
`one of those input elements (of the second input assembly — side buttons)
`be a sensor pad as claimed. Id. at 38. Petitioner argues that a person having
`ordinary skill in the art at the time of the invention would have appreciated
`that Pallakoff’s side buttons could be implemented using the delineated
`active areas taught by Ishihara and that doing so would improve Pallakoff’s
`device in the same way as Ishihara’s device. Pet. 31 (citing Ex. 1013 ¶¶ 50–
`56).
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`Patent Owner argues that Pallakoff’s modifier buttons are not
`configured to be selectively mapped to functions corresponding to the
`selected one of the plurality of applications required by claim 1. PO
`Resp. 28–30. In particular, Patent Owner argues that claim 1 requires the
`input elements of the second input assembly to be mapped to application-
`specific functions, foreclosing Pallakoff’s side buttons from meeting that
`limitation because such side buttons operate the same way across
`applications. Id. (citing Ex. 2007 ¶¶ 106–108). We disagree with Patent
`Owner that claim 1 requires the second input elements to be mapped to
`application-specific functions. There is nothing in the language of claim 1
`that recites application-specific functions, or functions that must change
`depending on the application. Moreover, Patent Owner does not direct us to
`support in the Specification of the ’313 patent for its narrow construction of
`claim 1 as requiring application-specific functions.
`Claim 1 requires one (or more) input element (of the second input
`assembly) be mapped to one (or more) input function(s) corresponding to the
`selected application of the plurality of applications. Petitioner contends, and
`we agree, that this limitation is met, for example, by the description in
`Pallakoff of typing the “2” key with the “2nd Letter” modifier button (one
`input of the second assembly) and the “Shift” modifier button (another input
`of the second assembly), resulting in an uppercase “B” for the selected text
`application. Pet. 36–37; Ex. 1006 ¶ 18. Claim 1 does not require that the
`input element of the selected application, e.g., Pallakoff’s modifier buttons,
`function differently with other applications as it does with the selected
`application. In any event, Patent Owner does not address the description in
`Pallakoff that appears to describe such application-specific functions, and
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`that Petitioner relied upon in its Petition. See, e.g., Pet. 37–38; Ex. 1006
`¶ 178 (describing that a device’s software can change the interpretation of
`the pressing and releasing of keys, modifier buttons, and controls based on
`context, and further describing this in the context of a web-based
`application, email application, and text message application).
`Patent Owner argues that Ishihara’s touchpad is not “configured to
`selectively represent a plurality of delineated active areas” as required by
`claim 1. PO Resp. 30–31. Patent Owner’s argument, however, is based on
`construing the phrase to require a variety of different shapes and sizes of
`areas that can be configured in software. Id. at 31. We are not persuaded
`that we should construe the phrase so narrowly. First, the testimony to
`which we are directed in support of the argument is inconsistent with the
`argument. Indeed, Dr. MacLean testifies that “selectively represent” means
`“selectively provide where those areas are” as a virtual, software construct;
`or alternatively means “selectively render to the user where those areas are
`defined in software.” Ex. 2007 ¶ 117. Dr. MacLean, however, does not
`testify that “configured to selectively represent a plurality of delineated
`active areas” requires a variety of different shapes and sizes of areas that can
`be configured in software as Patent Owner argues in its Patent Owner
`Response. PO Resp. 31. Moreover, the argument and Dr. MacLean’s
`testimony are not commensurate in scope with the language of claim 1, are
`conclusory, and are not supported by record evidence. Neither Patent Owner
`nor Dr. MacLean directs attention to where in the Specification of the ’313
`patent there is a definition for the disputed phrase or even support for the
`narrow constructions advanced. Petitioner explains, and we agree, that
`Ishihara describes a touch panel switch 37 (i.e., sensor pad) configured to
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`selectively represent a plurality of delineated active areas (e.g., convex area
`38) which are shown (represented) on display 33. Pet. 38–40; Ex. 1007
`Abstract, ¶¶ 50, 57, 59, 61.
`For claims 6 and 8–10, each of which depends either directly or
`indirectly from claim 1, Petitioner relies on the combinations of Pallakoff
`and Ishihara (claim 10) and Pallakoff, Ishihara, and Martin (claims 6, 8, and
`9) to meet the additional limitations of claims 6 and 8–10. Pet. 42–43, 48–
`50. We agree with Petitioner’s showing, which we adopt as our own, that
`the combinations of Pallakoff and Ishihara (claim 10) and Pallakoff,
`Ishihara, and Martin (claims 6, 8, and 9) disclose the additional limitations
`of claims 6 and 8–10. Patent Owner does not argue these claims separately.
`PO Resp. 31–34.
`Claims 3, 5, and 12
`Claim 3 depends from claim 1 and recites “wherein the processor
`receives signals generated by the input elements of first or second input
`assemblies when manipulated by the human user.” Ex. 1001, 16:15–18.
`Petitioner contends that software on Pallakoff’s processor receives and
`interprets signals generated by input elements when manipulated by the user,
`directing attention to paragraphs 23 and 24 of Pallakoff. Pet. 41. Pallakoff
`describes that when a user presses any given button or key, firmware on the
`device sends a unique code corresponding to the pressed button or key to a
`queue to be read by software running on the device. Ex. 1006 ¶ 23.
`Software on the device continuously looks for new codes to appear in the
`queue, reads those codes, and interprets them as typing. Id. ¶ 24. The
`software can be implemented as part of the device’s firmware or can run on
`a processor that also runs a high level operating system. Id. We are not
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`persuaded by Patent Owner’s implicit argument that claim 3 requires a direct
`connection between the processor and the input elements. PO Resp. 32
`(“Pallokoff’s description makes clear that the codes are generated and sent
`by ‘firmware,’ not by the input elements themselves.”). Nothing in claim 3
`requires a direct connection between the input elements and the processor.
`As long as the signals from the input elements are received by the processor,
`it is of no moment that the same signals are first received by firmware or
`software that runs on the processor.
`Claim 5 depends directly from claim 1 and recites “wherein at least
`one of the input elements of the second input assembly is a rotary sensor.”
`Ex. 1001, 16:25–27. Petitioner contends that Pallakoff’s thumb-wheel for
`any of 108, 208, 308, or 408 on the sides of Pallakoff’s handheld devices are
`rotary sensors (input elements) of the second input assembly. Pet. 42.
`Patent Owner agrees that Pallakoff’s thumb-wheel is a rotary sensor, but
`argues that it would not have been obvious to locate the thumb-wheel on the
`back of the handheld device—what Patent Owner contends Petitioner
`designates as the second surface in its Petition. PO Resp. 32–33; Ex. 2007
`¶ 121.
`The argument is not persuasive because the Petition indicates that the
`second surface could be the sides or back of the Pallakoff device, directing
`attention to paragraph 196 of Pallakoff. Pet. 38. Patent Owner and Dr.
`MacLean do not address Petitioner’s assertion that the second input
`assembly, and second surface may be the side surface, as opposed to the
`back surface. Moreover, Pallakoff itself would have conveyed to a person of
`ordinary skill in the art at the time of the invention that the location of the
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`face-keys and side-buttons may be arranged in different locations, including
`on the sides or back of the handheld device. Ex. 1006 ¶¶ 196, 200, 323.
`Claim 12 depends directly from claim 1 and recites “wherein the
`processor is further configured to be communicatively coupled to a host
`electronic device.” Ex. 1001, 16:62–64. Petitioner contends that Pallakoff
`describes this feature by the description of a user being able to access email,
`instant messaging, Web pages, remotely hosted applications, and other
`services. Pet. 43; Ex. 1006 ¶¶ 196, 328.
`Patent Owner directs attention to Figure 8 of the ’313 patent as
`showing a host computer 824 accessible through a local area network 822
`and argues that claim 12 requires a host computer connected through a local
`area network. PO Resp. 34. We are not persuaded by Patent Owner’s
`arguments (id.) because claim 12 does not recite that the processor is
`communicatively coupled to a host device through a local area network or
`that the host device be part of a local area network. Based on the record
`before us, Petitioner has shown by a preponderance of the evidence that
`Pallakoff describes claim 12 as explained above and Petitioner has not
`rebutted sufficiently Petitioner’s showing.
`We now address Petitioner’s reasons for combining Pallakoff,
`Ishihara, and Martin (Pet. 31, 47–48) and Patent Owner’s arguments that the
`references should not be combined. PO Resp. 20–28.
`
`Petitioner provides reasons for combining Pallakoff and Ishihara by
`explaining that a person having ordinary skill in the art at the time of the
`invention would have incorporated Ishihara’s touch panel into Pallakoff’s
`handheld device to improve similar devices in the same way. Pet. 31: Ex.
`1013 ¶¶ 50–56. In support of that assertion, Dr. Welch testifies that a skilled
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`artisan would have recognized that Ishihara would have improved the
`Pallakoff handheld device in that positions of modifier buttons on the back
`surface touch panel could be configured using software instead of requiring
`the user to physically change the positions of the modifier buttons using
`sliding panels. Ex. 1013 ¶ 54.
`Petitioner provides reasons for combining Martin with Pallakoff and
`Ishihara by explaining that a person having ordinary skill in the art at the
`time of the invention would have recognized that a directional pad as taught
`by Martin (for claim 6) was well known as an input element on handheld
`devices and including one would have been obvious as a matter of design
`choice. Pet. 47–48; Ex. 1013 ¶¶ 61–63. Petitioner also provides reasons for
`combining Martin with Pallakoff and Ishihara by explaining that a person
`having ordinary skill in the art at the time of the invention would have
`realized the benefits of incorporating an actuator into the device of Pallakoff
`to provide haptic feedback to a user (for claims 8 and 9). Id.
`Patent Owner argues that the Petition points to no specific reason why
`a person skilled in the art would want to combine Pallakoff and Ishihara. PO
`Resp. 20–21. We disagree because the Petition does provide specific
`reasons for making the combinations as discussed immediately above. Pet.
`31, 47–48 (citing Ex. 1013 ¶¶ 50–56, 61–63).
`Patent Owner also argues that Pallakoff teaches away from
`implementing modifier buttons on the back of the hand held device because
`Pallakoff does not describe the side buttons as being on the back. Id. at 21–
`23. A reference does not teach away if it merely expresses a general
`preference for an alternative invention but does not “criticize, discredit, or
`otherwise discourage” investigation into the invention claimed. In re
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`Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We have considered Patent
`Owner’s arguments and evidence to which we are directed and determine
`that Patent Owner has not shown sufficiently that Pallakoff criticizes,
`discredits, or otherwise discourages implementing the modifier buttons on
`any surface of the handheld device, including the back surface. Moreover,
`Pallakoff teaches that the location of the face-keys and side-buttons may be
`arranged in different locations, including on the sides or back of the
`handheld device. Ex. 1006 ¶¶ 196, 200, 323.
`Patent Owner next argues that Ishihara’s touchpad could not be
`substituted for Pallakoff’s modifier buttons and be able to perform the
`operations required in Pallakoff because Ishihara’s touchpad would not
`recognize two different areas being pressed simultaneously. PO Resp. 23–
`24. Patent Owner’s arguments and evidence are based on incorporating
`physically all technicalities of Ishihara with all technicalities of Pallakoff.
`The test for obviousness is what the combined teachings of the references
`would have suggested to a person of ordinary skill in the art, not whether
`one reference may be bodily incorporated into the structure of another
`reference. In re Keller, 642 F.2d 413 (CCPA 1981). For example, Patent
`Owner and Dr. MacLean are of the apparent impression that the operation of
`pressing two modifier buttons simultaneously as described in Pallakoff need
`be maintained when combining Pallakoff with Ishihara. See, e.g., PO Resp.
`23–24; Ex. 2007 ¶¶ 73, 74, 76. But that is not what the law requires, and in
`any event, none of the claims require how input elements are selected or
`operated by the user.
`Patent Owner argues that locating Pallokoff’s modifier buttons on the
`back of the handheld device as suggested by Ishihara would defeat
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`Pallakoff’s goal of enabling fast typing. PO Resp. 24–26. Patent Owner’s
`arguments are not persuasive. Patent Owner does not contend that the
`combined teachings would not result in a working device, or that the
`combination would be beyond the skill set of a person of ordinary skill in the
`art. It is of no moment that the combination would result, in some aspects—
`aspects not related to claimed features—to be inferior.
`We also have considered Patent Owner’s arguments, and evidence in
`support thereof, that it would not have been obvious to put Martin’s d-pad
`on the back of Pallakoff’s back surface. PO Resp. 26–28. In particular,
`Patent Owner argues that the favored location for a cursor control is on the
`front surface, not on the back surface. Id.
` We do not give much weight to the testimony to which we are
`directed in support of the arguments presented at pages 26–28 of Patent
`Owner’s Response, because such testimony is either conclusory or focused
`on physically combining the references without consideration of the skill set
`of a person of ordinary skill in the art. For example, Dr. MacLean opines
`that because Martin’s directional pad (d-pad) is on the front of Martin’s
`device, one would not put it on the back of Pallakoff’s device because it
`would not be a simple substitution, and placing d-pads on back surfaces is
`uncommon. Ex. 2003 ¶¶ 147–149. Neither Patent Owner nor Dr. MacLean
`provide evidence in support of such statements. Dr. MacLean does not
`explain why putting a d-pad on the back of a hand-held device as opposed to
`on the front of such a device would be beyond the skill set of a person of
`ordinary skill in the art. Moreover, Patent Owner (and Dr. MacLean) are of
`the apparent perception that bodily incorporation is required to make a
`substitution of one thing for the other. But that is not the case, as we have
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`explained above. See Keller, 642 F.2d at 413. Here, the replacement of
`Pallakoff’s cursor on the back of its device (or side) with a d-pad like the
`one shown in Martin would have been obvious to a person of ordinary skill
`in the art at the time of the invention. This is a matter of replacing one
`known thing for another.
`In summary, we have considered all of Patent Owner’s arguments and
`are not persuaded by any of Patent Owner’s arguments that it would not
`have been obvious to a person of ordinary skill in the art at the time of the
`invention to combine Pallakoff, Ishihara, and Martin. Pallakoff describes a
`hand-held device with input elements and an application as claimed.
`Ishihara describes a sensor pad and Martin describes a directional pad and
`actuators (vibratory units). We are persuaded by a preponderance of the
`evidence that modifying the Pallakoff hand-held device to include
`specifically a sensor pad, directional pad, and actuators would have been
`within the level of a person of ordinary skill in the art. Moreover, as
`explained by Petitioner, adding such features to the Pallakoff device would
`have increased the functionality and desirability of the hand held device. A
`person with ordinary skill in the art is “a person of ordinary creativity, not an
`automaton,” and “in many cases . . . will be able to fit the teachings of
`multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21.
`D. Obviousness Over Pallakoff, Ishihara, and Liebenow
`Petitioner contends that claim 4 is unpatentable under 35 U.S.C. § 103
`based on Pallakoff, Ishihara, and Liebenow. Pet. 44. To support its
`contentions, Petitioner provides a detailed showing mapping limitations of
`claim 4 to structures described by Pallakoff, Ishihara, and Liebenow. Id. at
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`44–46. Petitioner also relies upon the Declaration of Dr. Gregory F. Welch
`(Ex. 1013) to support its position.
`Liebenow describes an electronic hand-held information appliance
`having a display disposed on a first surface and an input device disposed on
`a second surface opposed to the first surface for inputting information. Ex.
`1008, Abstract. Liebenow further describes, in connection with the hand-
`held device, an input/output system 516 which may comprise one or more
`controllers or adapters for providing interface functions between one or
`more of I/O devices 518–522. Id. ¶¶ 62; Fig. 13.
`Claim 4 depends directly from claim 1 and recites that the hand-held
`device includes an input controller that receives signals generated by input
`elements of the first or second input assemblies and converts the signals into
`a form suitable to be interpreted by the processor. Ex. 1001, 16:19–24.
`Petitioner relies on Liebenow for its description of input controllers
`included in a hand-held device. Pet. 44–46. Petitioner concludes that one
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