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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00396
`Patent 7,218,313
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2015-00396
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`Table of Contents
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`I. INTRODUCTION ............................................................................................... 1
`II. ARGUMENT ...................................................................................................... 2
`A. WILLNER AND HEDBERG ARE ANALOGOUS ART ........................................... 2
`1. Willner Is Analogous Art ....................................................................... 4
`2. Hedberg Is Analogous Art ...................................................................... 6
`B. ALL CHALLENGED CLAIMS ARE OBVIOUS .................................................... 7
`1. Pallakoff, Ishihara, and Martin Are Properly Combinable ..................... 8
`2. Pallakoff-Ishihara-Martin Renders Claims 1, 3, 5, 6, 8-10, and 12
`Obvious ................................................................................................ 13
`3. Pallakoff-Ishihara-Liebenow Renders Claim 4 Obvious ..................... 17
`4. Pallakoff-Ishihara-Armstrong Renders Claim 7 Obvious .................... 18
`5. Pallakoff-Ishihara-Willner Renders Claim 11 Obvious ....................... 19
`6. Pallakoff-Ishihara-Hedberg Renders Claims 13 and 14 Obvious ........ 21
`7. PO’s Assertions About Dr. Welch Are Unsupported ........................... 21
`C. SECONDARY CONSIDERATIONS FAIL TO SHOW NONOBVIOUSNESS .............. 23
`III. CONCLUSION ................................................................................................. 25
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`INTRODUCTION
`Most of the substantive positions advanced by PO in this proceeding are a
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`I.
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`criticism of how the teachings of a secondary reference would allegedly be
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`incorporated into the physical structure of a primary reference. PO resorts to vague
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`notions of design principles, reasoning that (in the view of PO and its experts) the
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`combinations would be physically subpar. Last week, the Federal Circuit rejected
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`exactly this type of reasoning, and reiterated the longstanding principle that “‘[t]he
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`test for obviousness is not whether the features of a secondary reference may be
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`bodily incorporated into the structure of the primary reference….’” MCM Portfolio
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`LLC v. Hewlett-Packard Co., --- F.3d ----, No. 2015-1091, 2015 WL 7755665, at *9-
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`10 (Fed. Cir. Dec. 2, 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981))
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`(citing In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012)). “Rather, the test is what
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`the combined teachings of the references would have suggested to those of ordinary
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`skill in the art.” Id. Even where physical incorporation of one technology into another
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`would have conflicted, there was no error in the determination that the claimed subject
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`matter would have been obvious. Id. For exactly the same reason, PO’s arguments are
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`fatally flawed, because PO focuses on combining one physical structure into another,
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`and overlooks what the combinations here would have suggested to a PHOSITA.
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`Another prominent and flawed theory in PO’s argument involves interpreting
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`prior art teachings. Without identifying any support for its approach, PO relies on a
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`1
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`form of hyper-rigid textualism. According to PO, a PHOSITA must consider only the
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`narrowest possible interpretation of language, blinding herself to other interpretations
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`or implications of prior art teachings. The Supreme Court and Federal Circuit have
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`instructed otherwise. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
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`(“A person of ordinary skill is also a person of ordinary creativity, not an
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`automaton.”); MCM Portfolio, 2015 WL 7755665, at *9-10 (no requirement “that the
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`claimed invention must be expressly suggested in any one or all of the references.”).
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`PO’s remaining positions involve reading limitations from the specification
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`into the claims, or excluding scope from the field of endeavor that the inventors of the
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`‘313 Patent explicitly included in the specification. These theories are rooted in
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`oversimplifications of the record and misapplications of the law. The Board should
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`consider the entire record, rather than the limited and oversimplified view that PO
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`promotes. When the correct legal principles for obviousness and claim interpretation
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`are applied, the Board should find that all Challenged Claims are unpatentable.
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`II. ARGUMENT
`A. Willner and Hedberg are Analogous Art
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`Without proposing a definition for the field of endeavor of the ‘313 Patent, and
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`without identifying any evidence to support a narrow definition, PO concludes that
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`Willner and Hedberg are not analogous. See Paper 15, Response at 3-17. Once the
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`field of endeavor is correctly defined, applying that definition to Willner and Hedberg
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`2
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`shows that both references are within the field of endeavor of the ‘313 Patent.
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`Support for defining the field of endeavor come from a patent’s “written
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`description and claims, including the structure and function of an invention.” In re
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`Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Like in the copending proceedings,
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`review of the written description and claims of the ‘313 Patent shows that the field of
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`endeavor should be defined to include: “hand-held electronic devices with one or
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`more input elements.” See, e.g., Ex. 1001, ‘313 Patent at Claims; Col. 1:5-11
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`(broadly defining relevant devices); 4:25-37; 6:16-20; 7:50-65; 8:31-52; Figs. 1-3a;
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`see also, e.g., In re Shaneour, 600 Fed. App’x. 734, 738 (Fed. Cir. 2015).
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`Like in the copending proceedings, no authority cited by the PO supports a
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`narrower definition for the ‘313 Patent’s field of endeavor. Clay limited the field of
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`endeavor to scope that was explicitly required by the claims and the context of the
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`specification, and Wang Labs. found no error where the field of endeavor excluded
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`scope that was explicitly distinguished by the patent. See In re Clay, 966 F.2d 656,
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`657-58 (Fed. Cir. 1992); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 863 (Fed.
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`Cir. 1993). PO’s proposition here is something different. PO would exclude from the
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`field of endeavor scope that is explicitly included by the ‘313 Patent. None of the
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`cases cited by PO supports PO’s view. Rather, these cases support the conclusion that
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`the field of endeavor should be construed as broadly as the patentee has described and
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`claimed it to be. See id.; see also In re Singhal, 602 Fed. App’x 826, 830 (Fed. Cir.
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`3
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`2015). Nearly 20 years after Clay and Wang Labs. the Federal Circuit rejected PO’s
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`position that courts generally decline to construe analogous art broadly, explaining
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`that the Supreme Court’s KSR decision “directs us to construe the scope of analogous
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`art broadly….’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
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`(quoting KSR, 550 U.S. at 420); Google Inc. v. Jongerius Panoramic Techs., LLC,
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`IPR2013-00191, Paper 70 at 25-27 (PTAB Aug. 12, 2014); Euro-Pro Operating LLC
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`v. Acorne Enterprises, LLC, IPR2014-00352, Paper 36 at 30-31 (PTAB Jul. 9, 2015).
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`1. Willner Is Analogous Art
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`Willner is within the field of endeavor of the ‘313 Patent, which should be
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`defined to include hand-held electronic devices with one or more input elements.
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`Willner describes a game controller (i.e., hand-held electronic device) with several
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`input elements, on multiple surfaces, associated with game and keyboard controls.
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`See generally Ex. 1011, Willner. Willner describes the field of its invention as
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`including “a data entry system which can function as a game controller and as an
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`ergonomic keyboard.” See, e.g., id. at Col. 1:7-10; Figs. 1-2. The Willner game
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`controller, and its functionality, are just like the remote control and game controller
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`embodiments described by the ‘313 Patent. See, e.g., Ex. 1001, ‘313 Patent at
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`5:61-6:4 (describing “the functionality of a high performance game controller” and
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`“the speed and accuracy of data input that can be obtained with the use of a
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`conventional standard QWERTY keyboard…..”); see also id. at 3:33-42.
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`4
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`PO asserts that claim 11 is limited to hand-held electronic devices that are
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`“integrated,” “portable,” and “stand-alone.” See Paper 15, Response at 9-11. None
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`of these concepts are required by the claims. See Ex. 1001, ‘313 Patent at Claims
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`1, 11. The claims recite “hand-held electronic device[s],” and even Mr. Lim agrees
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`that Willner discloses this. See Ex. 1038, 2nd Lim Tr. at 102:1-10; see also id. at
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`66:25-67:16 (claim 1 could include some game controllers); 62:11-19 (claims “not
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`necessarily” limited to “smart devices”); 105:7-107:11 (both the ‘313 Patent and
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`Willner are directed to ergonomic devices).
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`PO also asserts that “[n]othing about Willner would have [logically
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`commended] itself to the attention of the ‘313 inventors because they were not
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`dealing with the problem that Willner was trying to solve.” Paper 15, Response at
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`13. The record shows otherwise. The file history shows that the inventors of the
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`‘313 Patent submitted several prior art references during prosecution that involved
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`peripheral game controllers. See generally Ex. 1002, ‘313 Patent File History at 148-
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`155. Most relevant for the discussion here, an Information Disclosure Statement on
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`May 10, 2006, included the following two references: (1) USPN 6,512,511 to Willner
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`et al. entitled “Hand Grippable Combined Keyboard and Game Controller System”;
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`and (2) USPN 7,670,013 to Willner et al. entitled “Hand Held Gaming and Data Entry
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`System.” These two Willner patents submitted during prosecution of the ‘313 Patent
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`each claim priority to an earlier Willner patent (USPN 6,288,709), which in turn
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`5
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`claims priority to the Willner reference included in this proceeding (USPN
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`5,874,906). Not only would PO exclude from the field of endeavor devices that were
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`explicitly included in the specification, PO would also exclude from the field of
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`endeavor prior art that is an ancestor to prior art submitted by the applicants during
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`prosecution. Even the applicants do not agree with PO’s narrow view.
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`2.
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`Hedberg Is Analogous Art
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`Hedberg is also within the field of endeavor of the ‘313 Patent at least because
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`Hedberg describes and illustrates a hand-held device with several input elements. See
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`Ex. 1012, Hedberg at p. 3:6-11; Fig. 5; see also, e.g., Ex. 1040, 1st MacLean Tr. at
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`120:8-121:22 (“[Hedberg] teaches the use of a handheld data entry device for a
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`different purpose.”). According to PO’s own expert, a PHOSITA would have
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`recognized that the device described in Hedberg could be used for data entry and that
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`embodiments in the ‘313 Patent could include a display. See Ex. 1040, 1st MacLean
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`Tr. at 86:16-87:1, 88:7-21; 120:8-121:22; see also, e.g., Ex. 1012, Hedberg at p. 3:6-
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`11, Fig. 5; Ex.1001, ‘313 Patent at Fig. 3a. Indeed, the examples from Hedberg
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`identified by Dr. MacLean as being repurposed to implement the Hedberg invention
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`are explicitly included in the written description of the ‘313 Patent. See Ex. 1040, 1st
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`MacLean Tr. at 120:8-121:22; compare Ex. 1012, Hedberg at p. 3:20-25 with
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`Ex.1001, ‘313 Patent at 1:5-11. Put simply, Hedberg and the ‘313 Patent involve the
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`very same type of devices.
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`6
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`PO’s argument should also be rejected because PO and its expert conflate the
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`two separate analogous art inquiries, and assert that Hedberg must be outside the field
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`of endeavor because of the problems that it allegedly addresses. See Ex. 1040, 1st
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`MacLean Tr. at 119:14-23. This is irrelevant to the field of endeavor inquiry. See, e.g.,
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`Bigio, 381 F.3d at 1325. PO has not identified any evidence or any reason why the
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`field of endeavor here should be defined narrowly, or why Hedberg should not be
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`included. See Paper 15, Response at 5-14; see also Bigio, 381 F.3d at 1327.
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`In short, PO has not identified any support in the law or in the record for
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`narrowly defining the field of endeavor to exclude Willner or Hedberg. The Board
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`should define the field of endeavor to include hand-held electronic devices with one
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`or more input elements, and find that Willner and Hedberg are within that definition.
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`B. All Challenged Claims Are Obvious
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`Like in the copending proceedings, PO’s arguments misapply three legal
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`principles. First, PO focuses on alleged problems encountered when incorporating
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`features of a secondary reference into the physical structure of a primary reference,
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`which is the wrong analysis. MCM Portfolio, 2015 WL 7755665, at *9-10 (Fed. Cir.
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`Dec. 2, 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)); see also, e.g.,
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`Customplay, LLC v. Clearplay, Inc., IPR2014-00339, Paper 27 at 21 (PTAB Jul. 21,
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`2015). Second, PO improperly assumes that prior art teaches away from concepts that
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`are not disclosed, and that alleged inferiority of a combined device bars obviousness.
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`7
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`See In re Fulton, 391 F.3d 1195, 1200-01 (Fed. Cir. 2004); see also DePuy Spine, Inc.
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`v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); In re
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`Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Third, PO’s improperly reads
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`limitations from the specification into the claims. See, e.g., In re Van Geuns, 988
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`F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from
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`the specification.”); Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372-73
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`(Fed. Cir. 2014); see also, e.g., EMC Corp. v. Clouding Corp., IPR2014-01217, Paper
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`37 at 11, 16 (PTAB Oct. 22, 2015); Apple Inc. v. Arendi, IPR2014-00206, Paper 32 at
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`11 (PTAB Jun 9, 2015).
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`1.
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`Pallakoff, Ishihara, and Martin Are Properly Combinable1
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`It would have been obvious to a PHOSITA to combine Pallakoff, Ishihara,
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`and Martin in the manner proposed in the Petition, and even PO’s expert agrees
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`that this combination would have yielded predictable results. See Ex. 1037, 2nd
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`1 PO has submitted its own translation of Ishihara, but PO does not rely on that
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`document, and PO’s experts based their opinions on the version submitted by Petitioner.
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`See generally Paper 15, Response; see also Ex. 1038, 2nd Lim Tr. at 255:18-256:19;
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`Ex. 1037, 2nd MacLean Tr. at 181:14-183:17. Further, Dr. Welch has reviewed both
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`translations, and explained that there are no differences that are material to the
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`obviousness inquiry in this proceeding. See Ex. 1042, Welch Supp. Decl. at ¶ 24.
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`8
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`MacLean Tr. at 150:6-16. As outlined in the Petition, this combination simply
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`takes the touchpad like the one disclosed on the back of the device in Ishihara, and
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`includes that concept into hand-held devices like embodiments in Pallakoff. The
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`addition of Martin adds an explicit teaching of a D-Pad for claim 6, and tactile
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`feedback for claims 8 and 9. PO’s challenges to this combination are based on
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`flawed premises and focus on physically adding the pieces of the secondary
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`references to the bodily structure of Pallakoff.
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`First, PO asserts that there is no motivation in the record to combine
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`Pallakoff, Ishihara, and Martin. See Paper 15, Response at 20-21. This assertion is
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`not accurate. The Petition explains the specific combination of Pallakoff and
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`Ishihara in detail, and also separately explains the addition of Martin. See Paper 2,
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`Petition at 29-44, 47-50. Dr. Welch also provides extensive direct testimony about
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`this combination, including an explanation of why a PHOSITA would have been
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`motivated to combine the references in the manner proposed. See Ex. 1013, Welch
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`Decl. at ¶¶ 50-56, 63-65 (explaining, inter alia, how the combination would
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`improve Pallakoff by allowing for software configuration of buttons and also
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`discussing Martin’s D-Pad and tactile feedback).
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`Second, PO asserts that Pallakoff teaches away from the combination
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`because the reference discloses “modifier buttons on the side only.” Paper 15,
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`Response at 21 (emphasis in original). The claims do not require anything on the
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`9
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`front, back, or sides of a device. See, e.g., Ex. 1001, ‘313 Patent at Claim 1. The
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`claims just require input elements on a first surface and input elements on a second
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`surface, and even PO cannot contest that both Pallakoff and Ishihara teach this. See
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`id.; see also Paper 15, Response at 21-23; see also Paper 2, Petition at 29-44.
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`Moreover, PO’s characterizations of Pallakoff are not accurate. Despite PO’s
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`insistence that modifier buttons are only on the side, Pallakoff states that “[a]s with
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`every other face-key or side-button described in this patent, the exact position and
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`names of the face-keys or side-buttons can vary.” Ex. 1006, Pallakoff at [0200]
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`(emphasis added). In that same paragraph, Pallakoff notes that one place for keys is
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`“on the back of the device where the user could operate them using one or more
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`fingers.” See id. PO attempts to dismiss this teaching with textualism. Paper 15,
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`Response at 21-23. But PO’s improperly narrow view overlooks what the context
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`of the discussion would teach a PHOSITA, and also ignores other disclosures in
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`Pallakoff. See, e.g., Ex. 1006, Pallakoff at [0196] (“buttons can be added to the
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`face (or even the back) of the phone to allow users to switch between functions”);
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`[0323] (“[t]he modifier buttons can be placed in any appropriate location.”). Even
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`Dr. MacLean agrees that Pallakoff discloses modifier buttons that can be on
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`surfaces other than on the side. See Ex. 1037, 2nd MacLean Tr. at 125:6-25. PO’s
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`reasoning is flawed because the existence of a preferred embodiment should not be
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`understood to teach away from all other possible embodiments. See, e.g., Fulton,
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`10
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`391 F.3d at 1201. Furthermore, Pallakoff need not expressly identify modifier buttons
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`on the back in order for the combination with Ishihara to render the claimed invention
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`obvious to a PHOSITA. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10.
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`Third, PO asserts that the combination of Pallakoff and Ishihara would not
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`work because Pallakoff discloses pressing two or more modifier buttons at once. See
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`Paper 15, Response at 23-24. Notably, the claims in the ‘313 Patent have nothing to
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`do with pressing two modifier buttons at once. See, e.g., Ex. 1001, ‘313 Patent at
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`Claim 1. PO is simply criticizing the bodily incorporation of non-claimed features
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`from Ishihara into the structure of Pallakoff, which is once again precisely the type of
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`analysis that the Federal Circuit has rejected. See, e.g., MCM Portfolio, 2015 WL
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`7755665, at *9-10. Moreover, the whole premise of PO’s argument here—that multi-
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`touch was unknown to PHOSITAs in October 2003—is completely wrong. See Ex.
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`1038, 2nd Lim Tr. at 267:16-269:19 (multi-touch at least available in research
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`environments and demonstrations in Oct. 2003); Ex. 1037, 2nd MacLean Tr. at 250:4-
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`18 (declaration statement about availability of multi-touch was inaccurate), 262:14-21
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`(multi-touch sensing in handheld devices has been known since at least 1985); Ex.
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`1042, Welch Supp. Decl. at ¶¶ 2-16. As Dr. Welch explains, PO’s expert conflates
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`hardware’s ability to detect simultaneous touches with software’s ability to interpret
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`complex gestures. See id. Multi-touch sensing was known at least as early as the mid-
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`1980’s, and several references already of record show that this was well known at the
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`11
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`time of the ‘313 Patent. See id. (discussing Exs. 1004, 1008, and 1021). This basic
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`technology would have been well within the background knowledge of a PHOSITA,
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`and there would have been no difficulties in enabling Pallakoff to detect multiple
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`simultaneous touches using existing touch pad technology. See id.
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`Fourth, PO asserts that it “would not work well” to combine the touch panel
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`described in Ishihara with the Pallakoff device. See Paper 15, Response at 24-26.
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`Again, this argument ignores the claims of the ‘313 Patent and ignores what the
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`combination of Pallakoff and Ishihara would teach a PHOSITA. See id. Instead, PO is
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`searching to identify problems with including a feature from Ishihara into the structure
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`of Pallakoff, and this argument has no applicability to a proper obviousness analysis.
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`See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10. Indeed, the ‘313 Patent does
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`not claim any “fast typing purpose” or typing using “three fingers of the hand,” and it
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`is irrelevant whether Ishihara would “work well” to enable such purposes.
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`Fifth, PO asserts that there is no “evidence or explanation” in the record to
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`support a finding of obviousness for claim 6. See Paper 15, Response at 26-28. This
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`is not accurate. The Petition and Dr. Welch’s direct testimony explain that placing a d-
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`pad on the front, back, or side surface of a handheld device would be an obvious
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`design variation for a PHOSITA. See, e.g., Paper 2, Petition at 47-48; Ex. 1013,
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`Welch Decl. at ¶¶ 60-63. One basis for Dr. Welch’s opinion is that, during
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`prosecution, the applicants responded to a restriction requirement and emphasized that
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`any input element (including a d-pad) could be placed on the second surface, or
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`backside, of a device. See id; see also Ex. 1002, ‘313 FH at 140. The examiner found
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`that the claim that issued as claim 6 included “obvious differences, or variations of the
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`input elements disposed on the first and second assembly of the human interface
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`device of Figures 3a-3d, as admitted by applicant.” Ex. 1002, ‘313 FH at 115-16
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`(emphasis added). Petitioner and Dr. Welch agree with the examiner’s analysis. See,
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`e.g., Paper 2, Petition at 47-48; Ex. 1013, Welch Decl. at ¶¶ 60-63. PO takes the
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`opposite position to the applicants, and suggests there would be problems with a d-
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`pad on the back of a device. See Paper 15, Response at 26-28. But the observation
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`that Pallakoff teaches a preferred embodiment with cursor control on the front of a
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`device does not mean it would not have been obvious to a PHOSITA to include a d-
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`pad on the back, as the applicants admitted. See, e.g., Fulton, 391 F.3d at 1200-01;
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`MCM Portfolio, 2015 WL 7755665, at *9-10.
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`2.
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`Pallakoff-Ishihara-Martin Renders Claims 1, 3, 5, 6, 8-10, and
`12 Obvious
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`This combination renders these claims obvious as explained in detail in the
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`Petition. PO attempts to get around this straightforward application of the prior art
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`to the claims by asserting that the claims require more than what they say.
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`First, PO asserts that Pallakoff fails to teach application-specific functions of
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`the second surface input elements. See Paper 15, Response at 28-30. But the
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`claims do not require application-specific functions. See, e.g., Ex. 1001, ‘313
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`13
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`Patent at Claim 1. Instead, the claims just require functions that are “corresponding
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`to the selected one of the plurality of applications.” See id. The modifier buttons in
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`Pallakoff plainly correspond to applications. See, e.g., Ex. 1006, Pallakoff at
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`[0022] (discussing typing and a database application). Even assuming for argument
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`that application-specific functions are required, Pallakoff teaches that too. See, e.g.,
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`id. at [0178] (“a device’s software can change the interpretation of the pressing and
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`releasing of keys, modifier buttons and controls based on context.”), [0187]
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`(discussing examples “of changing the interpretation of keys and buttons to fit the
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`context,” and mentioning phone calls, email, text messaging, etc.), Claim 128.
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`The Pallakoff disclosure is such a straightforward fit with the claims (even
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`using PO’s improper interpretation) that it is difficult to imagine a distinction. The
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`rest of PO’s argument is confusing, and it is not clear what would satisfy PO that
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`its view of the claim requirements has been met. See Paper 15, Response at 28-30.
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`PO apparently believes that functions cannot “operate the same way across
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`applications.” See id. But this requirement is nowhere in the claims. Further,
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`Pallakoff discloses that functions can operate different ways across applications
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`(e.g., the keystrokes perform one function for email, and another function for other
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`text applications). See, e.g., Ex. 1006, Pallakoff at [0017]-[0019], [0322], Claim
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`128. Confronted with this, PO takes the remarkable position that this entire
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`teaching is useless because there are allegedly two different embodiments
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`involved. See Paper 15, Response at 28-30. This makes no sense. This disclosure
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`of different functions for different applications is precisely what PO seems to think
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`is required. See Paper 15, Response at 28-30. In any event, application-specific
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`functions are not required in the first place, so PO’s entire premise is flawed, and
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`none of PO’s analysis says anything about what Pallakoff would teach a PHOSITA
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`about the claimed invention. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10;
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`Van Geuns, 988 F.2d at 1184.
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`Second, PO asserts that claim 1 requires “different shapes and sizes of areas
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`[that] can be configured in software.” See Paper 15, Response at 30-31. PO does
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`not even attempt to identify any evidence or reasoning to support this position. See
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`id. The declaration statement from Dr. MacLean cited by PO says that there are
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`two interpretations of “selectively represent,” in her view. See Ex. 2007, MacLean
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`Decl. at ¶ 117. Neither of them requires different shapes and sizes. See id. PO’s
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`claim interpretation is wrong and should be rejected, similar to PO’s interpretation
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`offered in the copending ‘245 and ‘692 proceedings.
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`Third, PO asserts that Pallakoff cannot satisfy claim 3. See Paper 15,
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`Response at 31-32. This claim just requires that the processor receive signals
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`generated by the input elements. See Ex. 1001, ‘313 Patent at Claim 3. Pallakoff
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`discloses that “[w]hen a user presses any given button or key … then firmware on
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`the device sends a unique code corresponding to that button or key being pressed.”
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`Ex. 1006, Pallakoff at [0023]-[0024]. Pallakoff further explains that software
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`running on the processor receives and interprets these signals. See id. Apparently,
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`PO seems to think that sending signals to software running on a processor is
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`insufficient. See Paper 15, Response at 31-32. But there is no logical or technical
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`distinction between sending things to software running on a processor versus
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`sending things to a processor. See, e.g., Ex. 1038, 2nd Lim Tr. at 215:24-218:1
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`(claim 3 could include processor receiving signals “however way you want to
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`connect them.”). PO also seems to think that firmware operating between physical
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`buttons and a processor is unusual, but of course the fact that firmware may be
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`involved in sending the signals does not change that it is the input elements that
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`initiate them. See id. There is nothing in the intrinsic record that would support
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`PO’s view that claim 3 requires a processor operating without software, and input
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`elements operating without firmware. See id.; see also, e.g., Ex. 1001, ‘313 Patent
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`at 5:24-30 (sensing circuitry may receive signals generated by input assemblies to
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`convert the signals into a form suitable for a processor running software).
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`Fourth, PO asserts that the thumb-wheel in Pallakoff cannot be “on the back
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`surface, as required by claim 5.” See Paper 15, Response at 32-33. Of course,
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`claim 5 does not require anything on a back surface and, instead, only mentions a
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`“second input assembly” See Ex. 1001, ‘313 Patent at Claim 5. PO’s entire
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`argument here is premised on the assertion that, in the Petition, the second surface
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`can only be understood as the back of a device. See Paper 15, Response at 32-33.
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`PO’s premise is flawed. See id. In fact, the Petition identifies the “second surface”
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`as “the side or back of the device.” See Paper 2, Petition at 38 (emphasis added).
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`Even PO does not disagree that Pallakoff teaches a rotary sensor on the side of the
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`device, and the side of the device can be the place for the “second input assembly”
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`required by claim 5. See id.; see also Ex. 1006, Pallakoff at [0196], [0200] (the
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`various buttons can be on the back of the device); see also supra (d-pad).
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`Fifth, PO asserts that claim 12 requires communication “over a local
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`network to a host electronic device.” See Paper 15, Response at 34. But claim 12
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`just says “host electronic device,” and says nothing about a “local” host or
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`connecting over a local network. See Ex. 1001, ‘313 Patent at Claim 5. And even
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`PO’s expert agrees that “host” is broader than “local host,” and that a server is an
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`electronic device. Ex. 1037, 2nd MacLean Tr. at 142:10-14; see also Ex. 1001,
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`‘313 Patent at 13:66-14:24 (describing Internet).
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`3.
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`Pallakoff-Ishihara-Liebenow Renders Claim 4 Obvious
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`PO asserts that it would not have been obvious to include an input controller
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`into Pallakoff or Ishihara. See Paper 15, Response at 35-36. One flaw in PO’s
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`reasoning is that, once again, PO is focused on including functionality from a
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`secondary reference into the physical structure of a primary reference. As above,
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`this is improper. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10. Another
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`flaw in PO’s reasoning is that the premise that Liebenow is limited to PC-type
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`architecture is simply untrue. Liebenow explicitly teaches exemplary embodiments
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`including “electronic books, personal digital assistants (PDAs) and portable
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`information handing systems.” Ex. 1008, Liebenow at [0002]; see also Ex. 1042,
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`Welch Supp. Decl. at ¶¶ 17-18. Even Mr. Lim agrees that these devices would not
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`be limited to PC-type architecture and that input controllers were common with
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`input assemblies. See Ex. 1038, 2nd Lim Tr. at 283:15-284:8 (PDAs could include
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`other architecture), 226:13-228:5 (“most common way” for an input assembly to
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`communicate would be to “have a signal that can [be] receive[d] by [an] input
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`controller….”), 238:2-11 (Pallakoff firmware could be executed on an input
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`controller); see also Ex. 1042, Welch Supp. Decl. at ¶¶ 19-21 (processors
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`supported input controllers for handheld devices for years prior to the ‘313 Patent,
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`and the input controller of Liebenow would have been compatible with the devices
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`described in Pallakoff and Ishihara). Focusing the obviousness inquiry on the right
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`analysis, it would have been obvious to combine Liebenow’s input controller into
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`the teachings of Pallakoff and Ishihara, and a PHOSITA would have been
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`motivated to do so. Ex. 1013, Welch Decl. at ¶ 59.
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`4.
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`Pallakoff-Ishihara-Armstrong Renders Claim 7 Obvious
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`Claim 7 is obvious for the reasons set forth in the Petition and supporting
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`evidence, and also as laid out supra at II.B.1-2.
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`Pallakoff-Ishihara-Willner Renders Claim 11 Obvious
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`5.
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`PO asserts that it would have been improper to combine Pallakoff, Ishihara,
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`and Willner, and that the combination would not have disclosed claim 11. PO’s
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`analysis misrepresents the facts, misapplies the law, and should be rejected.
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`First, PO asserts that Pallakoff and Willner teach interfaces for different
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`types of devices. See Paper 15, Response at 37-40. PO focuses on form factors,
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`size constraints, and design issues. See id. Claim 11 has no such requirements, and
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`just adds a game application to the inputs on the first and seco