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
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`
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`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00396
`
`Patent No. 7,218,313
`
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
`
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`TABLE OF CONTENTS
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` Page
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`TABLE OF AUTHORITIES ............................................................................. iv
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`EXHIBIT LIST .................................................................................................. vi
`
`I.
`
`II.
`
`III. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`
`ANALOGOUS ART ................................................................................ 3
`
`
`FACTUAL BACKGROUND .................................................................. 1
`
`PERSON OF ORDINARY SKILL IN THE ART ................................... 2
`
`A. Willner is not analogous art ........................................................... 9
`
`B. Hedberg is not analogous art ........................................................ 14
`
`
`IV. PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS
`
`DO NOT RENDER THE ’313 PATENT’S CLAIMS OBVIOUS ........ 17
`
`
`PALLAKOFF, ISHIHARA, AND MARTIN do not
`render claims 1, 3, 5, 6, 8-10 and 12 obvious .............................. 20
`
`1.
`
`2.
`
`Pallakoff, Ishihara, and Martin should not be
`combined ............................................................................ 20
`
`Even if wrongly combined, Pallakoff, Ishihara, and
`Martin do not disclose claims 1, 3, 5, 6, 8-10, and 12 ....... 28
`
`PALLAKOFF, ISHIHARA, AND LIEBENOW do not
`render claim 4 obvious ................................................................. 34
`
`PALLAKOFF, ISHIHARA, AND ARMSTRONG do not
`render claim 7 obvious ................................................................. 36
`
`PALLAKOFF, ISHIHARA, AND WILLNER do not
`render claim 11 obvious ............................................................... 36
`
`A.
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`B.
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`C.
`
`
`D.
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`ii
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`E.
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`1.
`
`2.
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`Pallakoff, Ishihara, and Willner should not be
`combined ............................................................................ 37
`
`Even if wrongly combined, Pallakoff, Ishihara, and
`Willner do not disclose claim 11 ....................................... 41
`
`PALLAKOFF, ISHIHARA, AND HEDBERG do not
`render claims 13 and 14 obvious .................................................. 45
`
`
`SECONDARY CONSIDERATIONS SHOW THAT THE ’313
`PATENT’S CLAIMS ARE NOT OBVIOUS ........................................ 45
`
`V.
`
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`VI. CONCLUSION ...................................................................................... 50
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`
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`iii
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`TABLE OF AUTHORITIES
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` Page
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`
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`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ.
`
`212 F.3d 1272 (Fed. Cir. 2000) .................................................... 48, 50
`
`Apple Inc. v. ITC
`
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................... 45
`
`Boehringer Ingelheim Vetmedica, Inc. v. Schering–Plough Corp.
`
`320 F.3d 1339 (Fed. Cir. 2003) .......................................................... 48
`
`Circuit Check Inc. v. QXQ Inc.
`
`No. 2015-1155, 2015 WL 4603797 (Fed. Cir. July 28, 2015) ..............4
`
`Graham v. John Deere Co.
`
`383 U.S. 1 (1966) ..................................................................................3
`
`In re Bigio
`
`381 F.3d 1320 (Fed. Cir. 2004) .............................................................5
`
`In re Clay
`
`966 F.2d 656 (Fed. Cir. 1992) ...............................................................5
`
`In re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig.
`
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................... 48
`
`In re Klein
`
`647 F.3d 1343 (Fed. Cir. 2011) .............................................................4
`
`InTouch Techs., Inc. v. VGo Communs., Inc.
`
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................... 21
`
`KSR Int’l Co. v. Teleflex Inc.
`
`550 U.S. 398 (U.S. 2007) ......................................................................3
`
`K-Tec, Inc. v. Vita-Mix Corp.
`
`696 F.3d 1364 (Fed. Cir. 2012) .............................................................7
`
`
`
`iv
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`
`
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`
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`Leapfrog Enter. Inc. v. Fisher-Price Inc.
`
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................... 18
`
`Leo Pharm. Prods., Ltd. v. Rea
`
`726 F.3d 1346 (Fed. Cir. 2013) .................................................... 46, 48
`
`Mintz v. Dietz & Watson, Inc.
`
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................... 46
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.
`
`520 F.3d 1358 (Fed. Cir. 2008) .......................................................... 46
`
`Ruiz v. A.B. Chance Co.
`
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................... 17
`
`State Contracting & Eng’g Corp. v. Condotte America, Inc.
`
`346 F.3d 1057 (Fed. Cir. 2004) .............................................................5
`
`Transocean Offshore Deepwater, Inc. v. Maersk Drilling USA, Inc.
`
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................... 46
`
`Wang Labs., Inc. v. Toshiba Corp.
`
`993 F.2d 858 (Fed. Cir. 1993) ...............................................................5
`
`Other References
`
`Janice M. Mueller, Patent Law (4th ed. 2013) ................................................4
`
`
`
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`v
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`EXHIBIT LIST
`
`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`Exhibit 1001 U.S. Patent 7,218,313
`
`Exhibit 1002
`
`File History of U.S. Patent No. 7,218,313
`
`Exhibit 1006 U.S. Patent Publication No. 2002/0163504 to Pallakoff
`
`Exhibit 1007
`
`Certified English Translation of Japanese Unexamined Patent
`No. 2002-77357 to Ishihara et al.
`
`Exhibit 1008 U.S. Patent Application Publication No. 2002/0118175 to
`Liebenow et al.
`
`Exhibit 1009 U.S. Patent No. 7,336,260 to Martin et al.
`
`Exhibit 1010 U.S. Patent No. 6,469,691 to Armstrong
`
`Exhibit 1011 U.S. Patent No. 5,874,906 to Willner et al.
`
`Exhibit 1012
`
`International Publication No. WO1999/18495 to Hedberg
`
`Exhibit 1013
`
`Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 1018 Michael McCandless, The PalmPilot and the handheld
`revolution, IEEE Expert pp. 6-8 (November/December 1997)
`
`
`
`
`
`EXHIBITS FILED BY APLIX IP HOLDINGS CORPORATION
`
`Exhibit 2001 Declaration in support of motion for pro hac vice admission of
`Sybil L. Dunlop
`
`Exhibit 2002 Declaration in support of motion for pro hac vice admission of
`Robert J. Gilbertson
`
`Exhibit 2003 Declaration in support of motion for pro hac vice admission of
`Sherman W. Kahn
`
`
`
`vi
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`
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`
`
`Exhibit 2004 Declaration in support of motion for pro hac vice admission of
`X. Kevin Zhao
`
`Exhibit 2005 Amended Complaint in Aplix IP Holdings Corporation v. Sony
`Computer Entertainment Inc. and Sony Computer
`Entertainment America LLC, Case No. 1:14-cv-12745
`
`Exhibit 2006
`
`Excerpt from U.S. Patent No. 5,874,906 to Willner et al.,
`exhibit to the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00396, IPR2015-00476, and IPR2015-00533, August
`19, 2015
`
`Exhibit 2007
`
`Expert Declaration of Dr. Karon MacLean
`
`Exhibit 2008
`
`Curriculum Vitae of Dr. Karon MacLean
`
`Exhibit 2009
`
`Expert Declaration of Peng Lim
`
`Exhibit 2010
`
`Professional Summary of Peng Lim
`
`Exhibit 2011 Allen, J. P., Handheld Computing Predictions: What Went
`Wrong?, Proceedings of the 1st International Symposium on
`Handheld and Ubiquitous Computing, Karlsruhe, Germany:
`Springer-Verlag, 1999, pp. 117-123
`
`Exhibit 2012 Wikipedia entry on “List of Blackberry products” at
`https://en.wikipedia.org/wiki/List_of_BlackBerry_products,
`accessed 8/3/2015
`
`Exhibit 2013 Keyboard image at http://www.computerhistory.org/
`collections/catalog/102642008, accessed 8/2/2015
`
`Exhibit 2014
`
`Patent US 5,305,017
`
`Exhibit 2015 Wikipedia entry on “Touchpad” at
`https://en.wikipedia.org/wiki/Touchpad, accessed 8/1/2015
`
`Exhibit 2016
`
`Buxton, W., Multi-Touch Systems that I Have Known and
`Loved, at www.billbuxton.com/multitouchOverview.html,
`accessed 8/2/2015
`
`
`
`vii
`
`
`
`
`
`Exhibit 2017 Walker, G., A Review of Technologies for Sensing Contact
`Location on the Surface of a Display, Journal of the Society
`for Information Display, vol. 20:8, pp. 413-440, 2012
`
`Exhibit 2018 Wikipedia entry on “IBM Simon” at
`https://en.wikipedia.org/wiki/ IBM_Simon, accessed 8/2/2015
`
`Exhibit 2019 Wikipedia entry on “Casio PB 1000” at
`https://en.wikipedia.org/wiki/Casio_PB-1000, accessed
`8/2/2015
`
`Exhibit 2020
`
`Blickenstorfer, C., NeoNode N1, Can a unique interface put
`this compelling smart phone on the map? At
`http://pencomputing.com/WinCE/neonode-n1-review.html,
`accessed 8/2/2015
`
`Exhibit 2021 Wikipedia entry on “List of iPod models” at
`https://en.wikipedia.org/wiki/List_of_iPod_models, accessed
`8/2/2015
`
`Exhibit 2022
`
`Barker, M., Microsoft Teams with Interlink Electronics for
`Xbox Controllers, at www.Gamasutra.com, accessed 8/2/2015
`
`Exhibit 2023 Hinckley, K., Sensing Techniques for Mobile Interaction,
`Proceedings of the 13th Annual ACM Symposium on User
`Interface Software and Technology, San Diego, California,
`USA: ACM, 2000, pp. 91-100
`
`Exhibit 2025
`
`Exhibit 2024 Microchip AR1000 Series Resistive Touch Screen Controller
`Data Sheet (2009-2012) at
`http://ww1.microchip.com/downloads/en/DeviceDoc/41393B.
`Elo Touch Solutions: Tyco Electronics Introduces the
`Industry's First Multi-Touch Gestures Technology for Analog
`Resistive Touchscreens, December 4, 2008
`True Multi Touch on Analog Resistive at www.haptyc.com,
`accessed 8/26/15
`Exhibit 2027 Wikipedia entry on "Cirque Corporation" at
`https://en.wikipedia.org/wiki/Cirque_Corporation, accessed
`8/26/15
`
`Exhibit 2026
`
`
`
`viii
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`
`
`
`
`Exhibit 2028 Wikipedia entry on "iPod Classic Second Generation" at
`https://en.wikipedia.org/wiki/IPod_Classic#2nd_generation,
`accessed 8/26/15
`Exhibit 2029 Wikipedia entry on "iPod click wheel" at
`https://en.wikipedia.org/wiki/IPod_click_wheel, accessed
`8/26/15
`PCMag.com review: Fingerworks iGesture Pad, February 3,
`2004
`
`Exhibit 2030
`
`Exhibit 2031 Wikipedia entry on “Camera phone” at
`https://en.wikipedia.org/wiki/Camera_phone, accessed
`8/3/2015
`
`Exhibit 2032
`
`Partridge, K., Tilttype: Accelerometer-Supported Text Entry
`for Very Small Devices,” in Proceedings of the 15th annual
`ACM symposium on User interface software and technology.
`Paris, France: ACM, 2002, pp. 201-204
`
`Exhibit 2033 Wigdor, D., Tilttext: Using Tilt for Text Input to Mobile
`Phones” in Proceedings of the 16th annual ACM symposium
`on User interface software and technology. Vancouver,
`Canada: ACM, 2003, pp. 81-90
`
`Exhibit 2034
`
`Buxton, W., Hill, R., and Rowley, P., Issues and techniques in
`touch-sensitive tablet input, SIGGRAPH Computer Graphics,
`vol. 19:3, pp. 215-224, July 1985.
`
`Exhibit 2035 Wikipedia entry on “Touchscreen” at
`https://en.wikipedia.org/wiki/Touchscreen, accessed 8/1/2015
`
`Exhibit 2036
`
`Excerpt from The History of Tablet Computers – a Timeline,
`http://www.zdnet.com/article/the-history-of-tablet-computers-
`a-timeline, accessed 8/4/15
`
`Exhibit 2037
`
`Fujitsu Sylistic 2300, Pen Computing Magazine, April 1999
`
`Exhibit 2038
`
`A Brief History of Handheld Video Games, Endgadget.com,
`March 3, 2006
`
`Exhibit 2039
`
`Excerpt from 25 Worst Gadgets Flops of All Time, Laptop
`magazine, March 23, 2013
`
`
`
`ix
`
`
`
`
`
`Exhibit 2040 History of the Touch-Screen,
`http://compsci02.snc.edu/cs225/2010/touchScreen/history--
`evolution.html, accessed 8/1/2015
`
`Exhibit 2041
`
`Touch Controls (/touch-controls/3015-256/), Games that are
`controlled partially or entirely with a touch screen,
`www.giantbomb.com, accessed 8/1/2015
`
`Exhibit 2042
`
`Inspiring Quotes and Words of Wisdom from Steve Jobs by
`Parin, http://www.thegreatnessmind.com/
`2011/09/29/inspiring-quotes-and-words-of-wisdom-from-
`steve-jobs, accessed 8/4/2015
`
`Exhibit 2043 N-Gage Sales Goal at http://www.ign.com/articles/2003/
`10/09/n-gage-sales-goal, accessed 8/5/2015
`
`Exhibit 2044
`
`PDA sales soar in 2000,
`http://cnnfn.cnn.com/2001/01/26/technology/handheld,
`January 26, 2001
`
`Exhibit 2045
`
`Excerpt from Blueprint Reading Material, Chapter 2: Three-
`View, Plan View and Elevation View Drawings,
`http://classes.engineering.wustl.edu/2009/spring/jme4900/Blue
`print%20Reading%20Material.pdf, from Washington
`University in St. Louis, accessed 8/27/2015
`
`Exhibit 2046 Wikipedia entry on "Chipset" at
`https://en.wikipedia.org/wiki/Chipset, accessed 8/27/2015
`
`Exhibit 2047
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00229 and IPR2015-00230, July 28-29, 2015
`
`Exhibit 2048
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00396, IPR2015-00476, and IPR2015-00533, August
`19, 2015
`
`Exhibit 2049
`
`Certified English Translation of Japanese Unexamined Patent
`No. 2002-77357 to Ishihara et al. by Patent Translations, Inc.
`
`x
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`
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`I.
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`
`FACTUAL BACKGROUND
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`As detailed in the district-court complaint (ex. 2005), beginning in 2003,
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`a group of Massachusetts inventors led by Dr. Beth Marcus developed
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`interactive-design technologies for improving control of hand-held devices and
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`host devices (¶ 2). Among other advancements, Dr. Marcus and her team
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`deployed configurable input systems and elements on multiple surfaces of a
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`hand-held device, implementing unique combinations of and applications for
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`particular types of input elements (id.). The team also designed hand-held
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`accessory devices that would enable users to remotely operate (and play video
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`games on) cell phones and tablet devices (id.).
`
`Marcus and her team applied for patents on their inventions, and, after a
`
`thorough review, the United States Patent & Trademark Office (“USPTO”)
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`awarded them several patents, including, on May 15, 2007, the ’313 patent,
`
`titled “Human Interface System.” The ’313 patent claims a hand-held
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`electronic device as well as methods for providing an interface for use with
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`such a device. The claims (e.g., claims 1, 15, 21, 30, 35, 37, and 52) recite
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`arrangements that substantially optimize a biomechanical effect of a human
`
`user’s hand. 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 (claim 1). Some of the claimed embodiments
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`
`
`1
`
`
`
`
`
`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
`
`(claim 1). 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
`
`(claim 21).
`
`The ’313 patent was assigned to Dr. Marcus’ company, Zeemote, Inc., a
`
`Boston-area start-up, which sought to commercialize the technology. (Ex. 2005
`
`at ¶ 2.) Aplix, a Japanese operating company, later acquired Zeemote’s assets,
`
`including the ’313 patent. (Id.)
`
`
`II.
`
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`Patent Owner Aplix agrees with Petitioner’s proposed description of a
`
`person of ordinary skill in the art, with two tweaks. Such a person would not
`
`need to have the particular types of undergraduate degrees listed by Petitioner’s
`
`expert but could instead have a degree in mechanical, biomechanical, or
`
`industrial engineering. And such a person who also has a master’s degree could
`
`have only one year of experience, rather than two to four years as originally
`
`suggested by Petitioner. Petitioner’s expert agreed on cross-examination that it
`
`could be just one year.1
`
`
`1
`Ex. 2047 (Welch 7/28-29/15 depo) at 62:6-23.
`
`
`
`2
`
`
`
`
`
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`III. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`ANALOGOUS ART.
`
`
`
`Willner (US 5,874,906, ex. 1011) and Hedberg (WO 1999/18495,
`
`ex. 1012), two of the alleged prior-art references Petitioner has submitted, do
`
`not satisfy the threshold test of being analogous to the ’313 patent and therefore
`
`are not prior art that can be considered as part of an obviousness analysis.
`
`
`
`A claim is obvious if the differences between the claimed subject matter
`
`and the prior art are such that the claimed subject matter would have been
`
`obvious at the time the invention was made to a person having ordinary skill in
`
`the art. Graham v. John Deere Co., 383 U.S. 1, 14 (1966). Determining
`
`obviousness requires analysis of (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the claimed invention, (3) the level of
`
`ordinary skill in the field of the invention, and (4) any relevant objective
`
`considerations of nonobviousness. Id. at 17. This framework helps “guard
`
`against slipping into use of hindsight and [ ] resist the temptation to read into
`
`the prior art the teachings of the invention in issue.” Id. at 36 (internal citation
`
`omitted). While an analysis of any teaching, suggestion, or motivation to
`
`combine elements from different prior-art references is useful, the overall
`
`inquiry must be flexible. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
`
`
`
`3
`
`
`
`
`
`(U.S. 2007). “A factfinder should be aware, of course, of the distortion caused
`
`by hindsight bias. . . .” Id. at 421.
`
`
`
`Evaluating an obviousness contention requires a threshold determination
`
`on whether the proffered prior-art references are “analogous” to the ’313
`
`patent’s claimed invention. “A reference qualifies as prior art for an
`
`obviousness determination under § 103 only when it is analogous to the claimed
`
`invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
`
`added). “To go beyond analogous art in a § 103 analysis runs the risk of
`
`hindsight reconstruction of a claimed invention by merely finding each of its
`
`constituent elements somewhere in the prior art, without concern for whether a
`
`[person having ordinary skill in the art] would have reasonably considered that
`
`art.” Janice M. Mueller, Patent Law (4th ed. 2013), at 294.
`
`
`
`Prior art qualifies as “analogous [1] if it is from the same field of
`
`endeavor or [2] if it is reasonably pertinent to the particular problem the
`
`inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., No. 2015-1155,
`
`2015 WL 4903794, at *3 (Fed. Cir. July 28, 2015).
`
`
`
`
`
`
`
`▪
`
`Field of endeavor
`
`The appropriate field of endeavor is determined by “reference to
`
`explanations of the invention's subject matter in the patent application,
`
`including the embodiments, function, and structure of the claimed invention.”
`
`
`
`4
`
`
`
`
`
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Similarity in the structure
`
`and function of the invention and the prior art is indicative that the prior art is
`
`within the inventor’s field of endeavor.” State Contracting & Eng’g Corp. v.
`
`Condotte America, Inc., 346 F.3d 1057, 1069 (Fed. Cir. 2004).
`
`Courts have declined to construe “field of endeavor” broadly, particularly
`
`in the electronics context. In Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858
`
`(Fed. Cir. 1993), for example, the inventor was trying to create compact,
`
`modular memories for personal computers. Id. at 864. Reviewing a prior-art
`
`reference, the Federal Circuit emphasized that the art “[was] not in the same
`
`field of endeavor as the claimed subject matter merely because it relate[d] to
`
`memories.” Id. Because the reference concerned SRAM or ROM memory,
`
`rather than DRAM memory as used in the patent-at-issue, the Federal Circuit
`
`concluded that a reasonable jury could have found that the prior art was outside
`
`the claimed invention’s field of endeavor. Id.
`
`
`
`Similarly, in an extensively cited 1992 decision, the Federal Circuit
`
`specifically noted that inventions that are part of a common endeavor may
`
`nonetheless not be in the same “field of endeavor” for obviousness purposes. In
`
`re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). There, an invention relating to the
`
`extraction of crude petroleum was held not to be in the same field of endeavor
`
`as an invention relating to the storage of refined petroleum, even though both
`
`
`
`5
`
`
`
`
`
`“relate[d] to the petroleum industry” and both arguably sought to “maximize[e]
`
`withdrawal of petroleum stored in petroleum reservoirs.” Id.
`
`
`
`
`
`
`
`▪
`
`Reasonably pertinent
`
`A reference is “reasonably pertinent to the particular problem the
`
`inventor is trying to solve … only [ ] when it ‘logically would have
`
`commended itself to an inventor's attention in considering his problem.’”
`
`Circuit Check at *3 (citing Clay, 966 F.2d at 659 (emphasis added)). The
`
`Federal Circuit considers whether the prior art serves the same purpose, or
`
`attempts to solve the same problem, as the claimed invention:
`
`[T]he purposes of both the invention and the prior art
`
`are important in determining whether the reference is
`
`reasonably pertinent to the problem the invention
`
`attempts to solve. If a reference disclosure has the
`
`same purpose as the claimed invention, the reference
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`relates to the same problem, and that fact supports use
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`of that reference in an obviousness rejection. An
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`inventor may well have been motivated to consider
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`the reference when making his invention. If it is
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`directed to a different purpose, the inventor would
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`accordingly have had less motivation or occasion to
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`consider it.
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`Clay, 966 F.2d at 659 (emphasis added). Applying these principles, Clay held
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`that the problem that the prior-art reference was trying to solve—extracting oil
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`6
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`from rock—was not reasonably pertinent to the inventor’s problem, which was
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`storing oil and preventing its loss. Id.
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`What art is “reasonably pertinent” depends heavily on facts. In Wang,
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`for example, the Federal Circuit sustained a non-obviousness finding based in
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`significant part on expert testimony that a person of skill in the art trying to
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`solve the problem of compact, modular memories for personal computers would
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`not have considered art “developed for use in a controller of large industrial
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`machinery and [that] could not be used in a personal computer.” 993 F.2d at
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`864. The differences in the problems to be solved were dispositive. Because
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`Wang was trying to solve a compact, modular memory problem that the cited
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`prior art (dealing with large industrial machinery) did not need to address, the
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`Federal Circuit found sufficient evidence to support a finding that the art was
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`not reasonably pertinent. See id. at 865.
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`Likewise, in K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed.
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`Cir. 2012), the patent claimed a five-walled container for a blender. Its shape
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`created a vortex, blending liquid away from the central axis and toward a
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`truncated wall. This in turn created a flow pattern that reduced the container’s
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`cavitation, increasing the blending’s speed and efficiency. As part of its
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`obviousness case, the accused infringer cited container prior art from non-
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`blender applications such as food mixers. But the Federal Circuit affirmed the
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`7
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`district court’s finding that the accused infringer had not offered a sufficient
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`explanation as to why the inventor would have “consulted non-blending
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`containers or food mixers in order to solve the problems he encountered in
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`designing a new blending container.” Id. at 1375.
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`Finally, in Klein, the Federal Circuit held that the Board’s “conclusory
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`finding that [several pieces of prior art] are analogous” was not supported by
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`substantial evidence. 647 F.3d at 1350. There, a patent owner challenged the
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`Board’s obviousness determination regarding his invention—a mixing device to
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`prepare nectar for different types of birds and butterflies. Id. at 1345. The
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`Federal Circuit noted that the prior-art references cited by the Board were “each
`
`directed to a container designed to separate its contents, as opposed to one
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`designed to facilitate the mixing of those contents.” Id. at 1350 (emphasis in
`
`original). Thus, reasoned the Federal Circuit, “[a]n inventor considering the
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`problem of making a nectar feeder with a movable divider to prepare different
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`ratios of sugar and water for different animals, would not have been motivated
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`to consider any of these references when making his invention.” Id. (internal
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`citations omitted). The Federal Circuit expressly disapproved of the Board’s
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`attempt to “redefine the problem” in order to force an analogy. Id. at 1351 n.1.
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`8
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`A. Willner is not analogous art.
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`Willner is neither in the same field of endeavor as the ’313 patent’s
`
`claim 11 nor reasonably pertinent to the particular problem that claim 11 is
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`directed to solving.
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`Willner and the ’313 patent cannot be said to be analogous merely
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`because both pertain to the broad subject of electronic user interfaces. See
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`Wang, 993 F.2d at 864 (industrial computer memories not in the same field of
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`endeavor as compact modular memories); Clay, 966 F.2d at 659 (“Sydansk
`
`cannot be considered to be within Clay's field of endeavor merely because both
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`relate to the petroleum industry.”). To the contrary, each invention’s
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`“embodiments, functions, and structure” must be assessed to determine the
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`appropriate field of endeavor. Bigio, 381 F.3d at 1325. The devices of Willner
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`and the ’313 patent are in different product categories. (Ex. 2009, Lim ¶¶ 93-100.)
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`Specifically, the ’313 patent’s claim 11 addresses the problem of
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`controlling “game functions” in an integrated, portable, handheld electronic
`
`device such as the one depicted in Figure 4a:
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`9
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`
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`(Ex. 1001, Fig. 4a; see also 16:61.) In the prior art, such integrated devices
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`greatly limited the user’s ability to control game play because they were not
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`optimized for game control. (Ex. 1001, 4:8-9, 4:20-23.)
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`Willner addressed a different problem involving different embodiments,
`
`functions, and structure. (Ex. 2009, Lim ¶¶ 101-104.) Willner discloses a
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`conventional game controller modified to improve its suitability as a data-entry
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`device. Willner’s Figure 4 depicts its data-entry controller, which differs
`
`greatly from the ’313 device shown above:
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`10
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`
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`Willner’s device has the form of a conventional gaming-control peripheral with
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`the exception that it is modified to serve as an “ergonomic keyboard” system
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`“for providing data entry to one or more devices.” (Ex. 1011, 1:6-7.) It is not a
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`stand-alone device. It lacks essential components of a stand-alone device,
`
`including a processor and memory. (Compare ex. 1011 Fig. 6 (schematic
`
`showing Willner device connecting to a “game port”) with ex. 1001, Fig. 1
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`(’313 patent schematic showing processor, memory, ROM, storage, and
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`display).)
`
`In addition to occupying a different field of endeavor, Willner is also not
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`reasonably pertinent to the problem the ’313 patent’s inventors aimed to solve.
`
`Willner is clearly not attempting to solve the problem of providing a richer
`
`gaming interface on an integrated hand-held device. In fact, the opposite is
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`true. The premise of Willner’s invention is that gaming interfaces—already
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`well known in the art—could be modified to be used for data-entry purposes.
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`Willner proposed to take advantage of young gamers’ existing familiarity with
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`the game interface to provide a more natural interface for data entry:
`
`During the past decade there has been a tremendous
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`growth in the use and ownership of computer and
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`video games. As a result, children and young adults
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`have become very accustomed to handling and using
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`game controllers that incorporate multidirectional
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`11
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`
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`switches. This growing portion of the keyboard-using
`
`population is likely to adopt a keyboard format that is
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`arranged like a game controller . . . .
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`(Ex. 1011, 2:9-15.)
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`In addition, and unlike the invention described and claimed in the ’313
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`patent’s claim 11, Willner faced no substantial space constraints. (Ex. 2009,
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`Lim ¶¶ 101-104.) The ’313 patent addresses the problem of providing a gaming
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`user interface in a class of portable devices that shrinks year-by-year. (Ex.
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`1001, 1:19-22 (“the available space on the device’s surface for positioning input
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`elements, which are used for data input and/or device control, continues to
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`decrease”).) By contrast, Willner’s device was intended to serve as a peripheral
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`attaching via a “game port” to a personal computer or other gaming device.
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`(Ex. 1011 Fig. 6; 6:22-32 (detailing interface between disclosed device and
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`various ports on a “personal computer”); see also ex. 2009, Lim ¶ 139; ex. 2048
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`(Welch 8/19/15 depo) at 82:13-21 (Petitioner’s expert unable to identify an
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`embodiment or description of Willner device other than as a peripheral).) It
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`was, in other words, envisioned as a replacement for a full-size computer
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`keyboard; not a stand-alone portable device. Space was not at a substantial
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`premium in its design. (Ex. 2009, Lim ¶¶ 101-102.)
`
`
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`12
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`As a result of their different objectives and constraints, the ’313
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`inventors’ solutions were diametrically opposed to Willner’s. (Ex. 2009, Lim
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`¶ 104-111.) For instance, the ’313 patent provides for coordinated input on first
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`and second surfaces to achieve a richer interface with few keys:
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`Complex moves or mode shifts could be
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`accomplished by combining input elements 342 of the
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`first input assembly 340 with any delineated active
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`area of the second input assembly 350.
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`(Ex. 1001, 12:32-37.) Willner, by contrast, taught that such coordinated input
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`should be minimized so as to provide a more intuitive interface:
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`The likelihood of the instant invention being adopted
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`by a large segment of the keyboard-using public is
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`further enhanced by the fact that the instant invention
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`requires a minimal number of simultaneous
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`depression of keys.
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`(Ex. 1011, 2:18-22; see also 12:23-30.)
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`Nothing about Willner’s device shows the same sort of “embodiments,
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`functions, and structure” (Bigio) as the ’313 device. Nothing about Willner
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`would have “logically . . . commended” (Clay) itself to the attention of the ’313
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`inventors because they were not dealing with the problem that Willner was
`
`trying to solve. Just as art relating to separating contents is not analogous to an
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`invention to facilitate mixing contents for use in a bird feeder (Klein, 647 F.3d
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`
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`13
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`at 1350) and extracting oil from rock is not analogous to storing oil (Clay, 966
`
`F.2d at 659), art directed to using a traditional gaming controller to provide
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`data-entry functions for a (non-portable) personal computer is not analogous to
`
`an invention addressing how to provide gaming functions on a portable, hand-
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`held electronic device. (See ex. 2009, Lim ¶¶ 93-100.)
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`The whole point of the ’313 patent was to make a user interface designed
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`for data entry work in a less data-centric mode. A piece of prior art directed to
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`making a PC gaming user interface more data-centric is neither in the same
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`field of endeavor nor reasonably pertinent to the problem the ’313 inventors
`
`were trying to solve. Willner is not analogous art.
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`B. Hedberg is not analogous art.
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`Hedberg is neither in the same field of endeavor as the ’313 patent nor
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`reasonably pertinent to the particular problem the ’313 inventors were trying to
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`solve. First, as explained above, the ’313 patent addresses problems related to
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`human interfaces and input systems for hand-held electronic devices (ex. 1001,
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`1:5-7)—specifically, to enable efficient user input of information to a hand-held
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`device based on the ergonomics of the hand. (Ex. 2007, MacLean ¶ 163) By
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`contrast, Hedberg addresses only viewing rather than information entry.
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`(Ex. 2007, MacLean ¶ 131) In fact, Hedberg limits the scope of its field to a
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`very particular scenario for displaying on an electronic device “a complete or a
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`14
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`determined part of a screen image” (ex. 1012, 1:11-12; ex. 2007, MacLean
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`¶ 131). Again, the Board should resist any tempta
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