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
` ____________
`
`
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,218,313
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`
`
`(b)
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS  ....................................................................................................................................  1  
`I.  
`INTRODUCTION  ........................................................................................................................................  1  
`II.   SUMMARY OF THE ‘313 PATENT  ........................................................................................................  1  
`A.   DESCRIPTION OF THE ALLEGED INVENTION OF THE ‘313 PATENT  ............................................................  1  
`B.   SUMMARY OF THE PROSECUTION HISTORY OF THE ‘313 PATENT  .................................................................  3  
`III.   REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104  ....................  4  
`A.   GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)  .................................................................................  4  
`B.  
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED  .................  4  
`1.   The Grounds For Challenge (37 C.F.R. § 42.104(b)(2)) ..................................................... 4  
`2.   Claim Construction Under 37 C.F.R. § 42.104(b)(3) .......................................................... 6  
`   “delineated active areas” ............................................................................................... 6  
`(a)   “substantially optimize a biomechanical effect of the human user’s hand” ................... 7  
`3.   Level of Skill of a Person Having Ordinary Skill in the Art .............................................. 10  
`IV.   THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF
`THE ‘313 PATENT ARE UNPATENTABLE  .............................................................................................  11  
`A.   GRIFFIN  IN  VIEW  OF  REKIMOTO  RENDERS  CLAIMS  1,  3,  8-­‐10,  AND  12  OBVIOUS  UNDER  35  U.S.C.  §  
`103(A)  .....................................................................................................................................................................................  11  
`B.   GRIFFIN  IN  VIEW  OF  REKIMOTO  IN  FURTHER  VIEW  OF  PIRKOLA  RENDERS  CLAIMS  1,  3,  5,  8-­‐10,  AND  12  
`OBVIOUS  ...................................................................................................................................................................................  27  
`C.   PALLAKOFF  IN  VIEW  OF  ISHIHARA  RENDERS  CLAIMS  1,  3,  5,  10,  AND  12  OBVIOUS  UNDER  35  U.S.C.  §  
`103(A)  .....................................................................................................................................................................................  29  
`D.   GRIFFIN  IN  VIEW  OF  REKIMOTO  IN  FURTHER  VIEW  OF  LIEBENOW  RENDERS  CLAIMS  1,  3-­‐4,  8-­‐10,  AND  12  
`OBVIOUS  AND  PALLAKOFF  IN  VIEW  OF  ISHIHARA  IN  FURTHER  VIEW  OF  LIEBENOW  RENDERS  CLAIMS  1,  3-­‐5,  10,  
`AND  12  OBVIOUS  ....................................................................................................................................................................  44  
`E.   GRIFFIN  IN  VIEW  OF  REKIMOTO  IN  FURTHER  VIEW  OF  MARTIN  RENDERS  CLAIMS  1,  3,  6,  8-­‐10,  AND  12  
`OBVIOUS  AND  PALLAKOFF  IN  VIEW  OF  ISHIHARA  IN  FURTHER  VIEW  OF  MARTIN  RENDERS  CLAIMS  1,  3,  5,  6,  8-­‐
`10,  AND  12  OBVIOUS  .............................................................................................................................................................  46  
`F.   GRIFFIN  IN  VIEW  OF  REKIMOTO  IN  FURTHER  VIEW  OF  ARMSTRONG  RENDERS  CLAIMS  1,  3,  7-­‐10,  AND  12  
`OBVIOUS  AND  PALLAKOFF  IN  VIEW  OF  ISHIHARA  IN  FURTHER  VIEW  OF  ARMSTRONG  RENDERS  CLAIMS  1,  3,  5,  7,  
`10,  AND  12  OBVIOUS  .............................................................................................................................................................  50  
`G.   GRIFFIN  IN  VIEW  OF  REKIMOTO  IN  FURTHER  VIEW  OF  WILLNER  RENDERS  CLAIMS  1,  3,  AND  8-­‐12  
`OBVIOUS  AND  PALLAKOFF  IN  VIEW  OF  ISHIHARA  IN  FURTHER  VIEW  OF  WILLNER  RENDERS  CLAIMS  1,  3,  5,  AND  
`10-­‐12  OBVIOUS  ......................................................................................................................................................................  53  
`H.   GRIFFIN  IN  VIEW  OF  REKIMOTO  IN  FURTHER  VIEW  OF  HEDBURG  RENDERS  CLAIMS  1,  3,  8-­‐10,  AND  12-­‐14  
`OBVIOUS  AND  PALLAKOFF  IN  VIEW  OF  ISHIHARA  IN  FURTHER  VIEW  OF  HEDBURG  RENDERS  CLAIMS  1,  3,  5,  10,  
`AND  12-­‐14  OBVIOUS  .............................................................................................................................................................  56  
`V.   MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)  .............................................................  59  
`A.   REAL PARTIES-IN-INTEREST AND RELATED MATTERS  .................................................................................  59  
`B.   LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3)  .....................................................................  59  
`C.   PAYMENT OF FEES UNDER 37 C.F.R. § 42.103  ..................................................................................................  60  
`VI.   CONCLUSION  .........................................................................................................................................  60  
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`I.
`
`INTRODUCTION
`
`Petitioner Sony Computer Entertainment America LLC requests an Inter Partes
`
`Review (“IPR”) of claims 1 and 3-14 (collectively, the “Challenged Claims”) of U.S.
`
`Patent No. 7,218,313 (“the ‘313 Patent”) issued on May 15, 2007 to Beth Marcus et al.
`
`(“Applicants”). Exhibit 1001, ‘313 Patent.
`
`II.
`
`SUMMARY OF THE ‘313 PATENT
`A. Description of the Alleged Invention of the ‘313 Patent
`
`The ‘313 Patent describes a user interface and input mechanisms for hand-held
`
`electronic devices, such as cell phones and Personal Digital Assistants (PDAs). Ex.
`
`1001 at 1:5-11; 7:7-11. The ‘313 Patent discloses an electronic device 100 having
`
`embedded software applications that require input from the user in order to perform
`
`various functions. Id. at 7:12-19, 7:66-8:16. The applications may include, for example,
`
`word processing, e-mail, or game applications. Id. at 5:39-49; 7:12-19, 7:66-8:16. The
`
`user provides inputs via input elements such as keys, buttons, pressure sensor pads,
`
`touch pads, or other elements. Id. at 7:56-61; see also, id. at 9:5-13; 15:24-28. One or
`
`more input elements are grouped together in “input assemblies.” Id. at 7:52-56. In one
`
`embodiment, the electronic device has a first and second input assembly with each
`
`input assembly having associated input elements. Id. at 8:47-62; Figs. 3A-3B. As
`
`shown in the figure below, the electronic device also includes an input controller 216
`
`that receives raw electronic signals from the input elements associated with input
`
`assemblies 206 and 208 and converts them “into a form suitable to be received and
`
`
`
` 1
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`interpreted by processor 104.” Id. at 7:61-65; see also, id. at Fig. 2. A processor 104
`
`subsequently interprets the signals output by the input controller 216 as specific input
`
`commands for a particular application. Id. at 7:66-8:16. For example, if a text
`
`application is running, then the input controller may map a key input to a particular
`
`character, or if a game application is running, then the key input may be mapped to a
`
`particular game function. Id. The input controller 216 also may map one or more of
`
`the input elements to functions specific to a particular application. Id. at 8:6-25.
`
`Additionally, the input functions of input elements may change depending on the
`
`application that is being executed. Id.
`
`The ’313 Patent discloses arranging the input assemblies in a way that increases
`
`data input efficiency based on thumb-finger opposition arrangement of the human
`
`user's hand. For example, in one disclosed embodiment, the first input assembly 340,
`
`which includes input elements such as keys or buttons 342 to be actuated by the user’s
`
`thumbs, is located on the front-side surface of the device 312 and the second input
`
`assembly 350, which includes input elements such as a pressure sensor pad 354 to be
`
`actuated by the user’s fingers, is located on the back-side surface of the device 314. Id.
`
`at Figs. 3A, 3B.
`
`The pressure sensor pad 354 on the back-side surface 314 is divided into one
`
`or more “delineated active areas,” which may be configured in the software to
`
`correspond to different programmable functions depending on the selected
`
`application. Id. at 9:24-40; Fig. 3d. The ‘313 Patent specification discloses that an
`
`
`
` 2
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`active area can be “delineated” either because it is physically delineated from other
`
`active areas (e.g., the areas physically appear as rectangular, oblong, or other shapes)
`
`or the user is able to use their fingers to tactilely discriminate between the delineated
`
`active areas. Id. at 9:58-10:11. Use of a delineated active area on the back-side surface
`
`314 may change the input function of an input element on the front-side surface 312.
`
`Id. at 10:50-11:28. For example, pressing a delineated active area corresponding to a
`
`“Shift” key on the back-side surface may cause a key press on the front-side surface
`
`312 to result in an uppercase letter or a different symbol, for example. Id.
`
`B.
`
`Summary of the Prosecution History of the ‘313 Patent
`
`The U.S. Patent Application that resulted in the ‘313 Patent was filed on
`
`October 31, 2003. See Exhibit 1002, ‘313 Patent File History at pp. 274-318. For purposes
`
`of this proceeding, Petitioner assumes a priority date of October 31, 2003 for the
`
`Challenged Claims. The first substantive office action issued on October 5, 2006
`
`rejecting claims 1 and 5-19 as anticipated by U.S. Patent No. 6,909,424 to Liebenow et
`
`al. and objected to dependent claims 3 and 4 as allowable if written in independent
`
`form. Id. at pp. 109-117. Applicants filed an amendment on February 2, 2007
`
`amending as-filed claim 1 to include the allowable limitation of claim 3:
`
`wherein at least one of the input elements of the second input assembly
`
`is a sensor pad configured to selectively represent a plurality of
`
`delineated active areas, where in manipulation of a delineated active area
`
`causes the input function of one or more input elements of the first
`
`
`
` 3
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`input assembly to change.
`
`Id. at pp. 50-52. The ‘313 Patent subsequently issued on May 15, 2007. Ex. 1001.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘313 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of the
`
`‘313 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the ‘313
`
`Patent; (2) Petitioner has not filed a civil action challenging the validity of any claim of
`
`the ‘313 Patent; and (3) this Petition is filed less than one year after the Petitioner was
`
`served with a complaint alleging infringement of the ‘313 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, claims 1 and 3-14 of the
`
`‘313 Patent are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
`
`1.
`
`The Grounds For Challenge (37 C.F.R. § 42.104(b)(2))
`
`Proposed Statutory Rejections for the ‘313 Patent
`Claims 1, 3, 8-10, and 12 are obvious under § 103(a) over Griffin in
`view of U.S. Patent No. 7,088,342 to Rekimoto et al. (“Rekimoto”).
`Claims 1, 3, 5, 8-10, and 12 are obvious under § 103(a) over Griffin in
`view of Rekimoto in further view of U.S. Patent Publication No.
`2001/0041599 to Pirkola et al. (“Pirkola”).
`Claims 1, 3, 5, 10, and 12 are obvious under § 103(a) over U.S. Patent
`Publication No. 2002/0163504 to Pallakoff (“Pallakoff”) in view of
`
`Exhibit No.
`1003 and
`1004
`
`1003, 1004,
`and 1005
`
`1006 and
`1007
`
`
`
` 4
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`Proposed Statutory Rejections for the ‘313 Patent
`Exhibit No.
`Japanese Unexamined Patent No. 2002-77357 to Ishihara et al.
`(“Ishihara”).
`Claims 1, 3-4, 8-10, and 12 are obvious under § 103(a) over Griffin in
`view of Rekimoto in further view of U.S. Patent Application
`Publication No. 2002/0118175 to Liebenow et al. (“Liebenow”).
`Claims 1, 3-5, 10, and 12 are obvious under § 103(a) over Pallakoff in
`view of Ishihara in further view of Liebenow.
`Claims 1, 3, 6, 8-10, and 12 are obvious under § 103(a) over Griffin in
`view of Rekimoto in further view of U.S. Patent No. 6,563,487 to
`Martin et al. (“Martin”).
`Claims 1, 3, 5, 6, 8-10, and 12 are obvious under § 103(a) over
`Pallakoff in view of Ishihara in further view of Martin.
`Claims 1, 3, 7-10, and 12 are obvious under § 103(a) over Griffin in
`view of Rekimoto in further view of U.S. Patent No. 6,469,691 to
`Armstrong (“Armstrong”).
`Claims 1, 3, 5, 7, 10, and 12 are obvious under § 103(a) over Pallakoff
`in view of Ishihara in further view of Armstrong.
`Claims 1, 3, and 8-12 are obvious under § 103(a) over Griffin in view
`of Rekimoto in further view of U.S. Patent No. 5,874,906 to Willner et
`al. (“Willner”).
`Claims 1, 3, 5, and 10-12 are obvious under § 103(a) over Pallakoff in
`view of Ishihara in further view of Willner.
`Claims 1, 3, 8-10, and 12-14 are obvious under § 103(a) over Griffin
`in view of Rekimoto in further view of International Publication No.
`WO 1999/18495 to Hedberg (“Hedberg”).
`
`1003, 1004,
`and 1008
`
`1006, 1007,
`and 1008
`
`1003, 1004,
`and 1009
`
`1006, 1007,
`and 1009
`
`1003, 1004,
`and 1010
`
`1006, 1007,
`and 1010
`
`1003, 1004,
`and 1011
`
`1006, 1007,
`and 1011
`
`1003, 1004,
`and 1012
`
`
`
` 5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`Proposed Statutory Rejections for the ‘313 Patent
`Exhibit No.
`Claims 1, 3, 5, 10, and 12-14 are obvious under § 103(a) over Pallakoff
`1006, 1007,
`in view of Ishihara in further view of Hedburg.
`and 1012
`
`
`Section IV identifies where each element of the Challenged Claims is found in the
`
`prior art patents. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the relevance
`
`of the evidence to the challenges raised are provided in Section IV. 37 C.F.R.
`
`§ 42.104(b)(5). Exhibits 1001 – 1025 are also attached.
`
`2.
`
`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`In this proceeding, claim terms should be given their broadest reasonable
`
`interpretations consistent with the specification (which may be different from the
`
`constructions in court). 37 C.F.R. § 42.100(b). Adherence to the rules of construction
`
`is not a waiver of any argument, in any litigation, that claim terms in the ‘313 Patent
`
`should not be construed differently or are otherwise invalid (including under 35
`
`U.S.C. § 112).
`
`
`
` “delineated active areas” (a)
`
`
`
`Claim 1 requires the sensor pad to have “a plurality of delineated active areas.”
`
`To assist the user in locating where the delineated areas of the pad are positioned, the
`
`active areas of the sensor pad are delineated from each other in several different ways.
`
`First, they can be delineated by physically depicting the areas to the user (e.g., Ex.
`
`1001 at 9:63-10:3). In one example, delineated active areas include oblong shaped
`
`
`
` 6
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`buttons (see id. at elements 372 of Fig. 3d, labeled 1-5, 9:24-40). Alternatively, the
`
`active areas can be physically depicted on the display of the handheld device in order
`
`to assist the user in locating the different active areas of the pad. Id. at 10:3-8. Second,
`
`the active areas may be delineated tactilely. For example, the ‘313 Patent specification
`
`discloses that a pressure sensor pad may include a shape changing media or a shape
`
`memory metal array, which allow the user to tactilely discriminate between the one or
`
`more delineated active areas with their fingers. Id. at 9:63-10:3. Thus, under the
`
`broadest reasonable interpretation “delineated active areas” must at least include areas
`
`that are differentiated from each other either physically or tactilely to assist the user in
`
`locating the position on the sensor pad of the active areas.
`
`
` “substantially optimize a biomechanical effect of the human (b)
`user’s hand”
`
`
`
`Claim 1 requires that the input elements on the first and second surfaces be
`
`arranged so as to “substantially optimize a biomechanical effect of the human user’s
`
`hand.” The ‘313 Patent specification describes arranging input elements in order to
`
`“take advantage of the biomechanics of the hand,” including by utilizing the
`
`opposition of the thumb and fingers. Ex. 1001 at 10:16-17; see also id at Abstract, 3:46-
`
`56, 4:24-33, 5:20-24, 5:31-34, 6:52-7:5, 8:53-59, 15:6-14. The specification does not,
`
`however, explain what
`
`(besides
`
`thumb-finger opposition) could constitute
`
`“biomechanical effects,” nor does it describe what it means to “optimize a
`
`
`
` 7
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`biomechanical effect of the human user’s hand” – let alone what it means to
`
`“substantially optimize.”1
`
`During prosecution of the ‘313 Patent, Applicants took positions inconsistent
`
`with the patent’s specification in an attempt to distinguish over the prior art.
`
`Applicants argued that a prior art reference “Liebenow teaches use of discrete keys
`
`(even when using a sensor pad) designed to be manipulated by rigid tapping or
`
`pushing motions of the fingers” but “does not optimize the biomechanical effects of
`
`the human user’s hand since combining tapping motion with the thumb and the
`
`fingers as taught in Liebenow is difficult and inefficient to accomplish.” Ex. 1002 at p.
`
`70. In support, Applicants pointed to a single embodiment in the ‘313 Patent
`
`specification describing “a selectable active area on the second surface configured to
`
`be manipulated by the user’s fingers through a sliding motion” Id. Thus, Applicant
`
`attempts to limit the scope of the claims by limiting the types of motions of the
`
`fingers and thumbs that purportedly “substantially optimize a biomechanical effect of
`
`the human user’s hand.”
`
`Applicants’ arguments conflict with the ‘313 Patent specification and do not
`
`account for other embodiments that describe additional motions to be used with the
`
`input elements, such as pressing and tapping. See e.g., Ex. 1001 at 10:50-11:5
`
`
`1 Petitioner will argue in litigation that this term is invalid under 35 U.S.C. § 112, including
`
`because it is indefinite.
`
`
`
` 8
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`(describing embodiment where user presses input elements); 11:12-18 (“Generally, it
`
`is easier to tap both the fingers and thumbs or leave either the thumb or fingers in
`
`contact with an input element or delineated active area while moving the other. For
`
`example, a user’s finger may press an oblong-shaped active area 372 at the same time
`
`or nearly the same time the user’s thumb taps an input element 342 in the first input
`
`assembly”) (emphasis added). Figure 3a of the ‘313 Patent depicts the front-side
`
`surface 312 of the handheld electronic device having a keypad 342 (i.e., a first input
`
`assembly) to be actuated by the user’s thumbs, and Figure 3d depicts the back surface
`
`sensor pad 354 with delineated active areas 372 (i.e., a second input assembly) to be
`
`“actuated by one or more of the user’s fingers, such as by applying pressure against
`
`the delineated active areas of the pad 354.” Id. at 9:58-62 (emphasis added); see also, id.
`
`at 8:33-40, 8:47-52; Figs. 3a, 3d. This embodiment requires the same “combining
`
`tapping motion with the thumb and the fingers” as Liebenow, the prior art reference
`
`that Applicants attempted to distinguish. The ‘313 Patent further states that “it is
`
`easier to tap both the fingers and thumbs” and “[b]y using the fingers and thumb in
`
`concert, the number of taps and time needed to accomplish a given function is
`
`reduced. . . .” Ex. 1001 at 11:12-13; 15:10-12 (emphasis added). Therefore,
`
`embodiments described in the ‘313 Patent advocate tapping the fingers and thumb in
`
`concert to optimize user input, and contrary to Applicants’ arguments, nothing in the
`
`Challenged Claims or the ‘313 Patent specification limits the type of motions to be
`
`used with the input elements. The ‘313 Patent broadly discloses “hand-held electronic
`
`
`
` 9
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`devices (whether one handed or two handed) that utilize the opposed thumb and
`
`finger ergonomics inherent in the hand . . . to accomplish data input, device
`
`control and game control in a timely, efficient, comfortable and intuitive manner.” Id.
`
`at 4:24-31 (emphasis added). To utilize the aforementioned “opposed thumb and
`
`finger ergonomics,” the ‘313 Patent discloses placing a first input assembly to be
`
`actuated by the user’s thumbs on a front-side surface and a second input assembly to
`
`be actuated by the user’s fingers on the back-side surface, left-side surface, or right-
`
`side surface Id. at 8:33-59. Accordingly, under the broadest reasonable constructions
`
`standard, the phrase “substantially optimize a biomechanical effect of the human
`
`user’s hand,” must include any configuration designed to take advantage of any
`
`biomechanical effect,
`
`including at
`
`least all configurations described
`
`in the
`
`specification, such as those that facilitate opposed tapping of the thumb and fingers
`
`when using the first and second input elements.
`
`3.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`A person having ordinary skill in the art at the time of the ‘313 Patent would be
`
`a person with (1) an undergraduate degree in computer science, computer
`
`engineering, electrical engineering, or similar technical fields; (2) a working knowledge
`
`of computers - including handheld computing devices, and their processing, storage,
`
`hardware—including input devices, and software; (3) two to four years of experience
`
`(or, with a graduate degree in the above-stated fields, one to two years of experience)
`
`with designing and developing human-computer interfaces and the associated
`
`
`
` 10
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`technologies. See Exhibit 1013, Welch Declaration, at ¶ 36.
`
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ‘313 PATENT ARE
`UNPATENTABLE
`A. Griffin in view of Rekimoto Renders Claims 1, 3, 8-10, and 12
`Obvious Under 35 U.S.C. § 103(a)
`
`U.S. Patent Application Publication No. 2003/0020692 to Griffin et al.
`
`(“Griffin”), which published on January 30, 2003, was filed on July 25, 2002. Exhibit
`
`1003, Griffin. Griffin therefore qualifies as prior art with regard to the ‘313 Patent
`
`under 35 U.S.C. §§ 102(a) and (e). Griffin discloses a handheld electronic device with
`
`a keyboard and thumbwheel optimized for use by the user’s thumbs on the front
`
`surface and special function keys, such as “Shift” and “Alt” keys, for use by the user’s
`
`fingers on the back surface. Ex. 1003 at Abstract, [0030], [0057], Figs. 2, 14a, 14b. The
`
`handheld device has embedded software applications such as e-mail, address book,
`
`and calendar applications. Id. at [0027], [0029]. Griffin also discloses that operation of
`
`the “Alt” and “Shift” buttons on the back surface cause input functions of the keys
`
`on the front surface to change. Id. at [0049] (“[O]peration of the ‘Q’ key will normally
`
`cause a lowercase ‘q’ to be input to the device. The number ‘1’ may be input when the
`
`‘Q’ key is operated while or after the alt key 902 is operated. Similarly, an uppercase
`
`‘Q’ could be entered when the ‘Q’ key is depressed while the shift key 902a is
`
`depressed or immediately after the shift key has been depressed.”). Thus, the
`
`disclosure of Griffin tracks the disclosure of the ‘313 Patent, which states that
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`pressing a delineated active area corresponding to a “Shift” key on the back-side
`
`surface of the device causes a key press on the front-side surface to result in an
`
`uppercase letter or a different symbol. Ex. 1001 at 10:50-11:5.
`
`U.S. Patent No. 7,088,342 to Rekimoto et al. (“Rekimoto”) was filed on May
`
`14, 2003 and therefore qualifies as prior art with regard to the ‘313 Patent at least
`
`under 35 U.S.C. § 102(e). Exhibit 1004, Rekimoto. Like the ‘313 Patent, Rekimoto also
`
`teaches input methods and input devices for operating a portable electronic apparatus
`
`such as PDAs. Id. at 1:6-8. The PDA described by Rekimoto have has multiple input
`
`assemblies arranged on the front and back surfaces. Id. at 8:60-9:3. As shown in the
`
`figure below, the front surface includes a touch-sensitive display screen, which is
`
`manipulated by the user’s thumb and the back surface includes a touch sensor
`
`substantially equal in size to the display screen on the front surface, which is
`
`manipulated by the user’s fingers:
`
`Id. at Fig. 10; see also, id. at 8:60-9:29. Rekimoto teaches that a controller receives
`
`signals generated in response to manipulation of the back-surface touch sensor. Id. at
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`5:26-46; Fig. 3. The controller determines if the user’s fingers overlap one or more of
`
`the “operation buttons 111.” Id. at 7:14-22. The operation buttons correspond to
`
`specific active areas on the back-surface touch sensor and are visually represented on
`
`the display 110 to aid the user in locating the positions of the buttons. Id. at 2:12-20,
`
`6:58-7:3, 7:56-8:6; Figs. 1, 2, 6, 7A-C, 8, 10, 11. Activation of an operation button
`
`causes the controller to perform an input process. Id. at 2:12-20. Rekimoto also
`
`teaches “an actuator for temporarily vibrating the casing” of the PDA. Id. at 3:4-16.
`
`When the user manipulates the back-surface touch sensor, for example, the vibration
`
`provides tactile feedback in order to inform the user that an input process has been
`
`performed. Id.
`
`Upon reading the disclosure of Rekimoto, a person having ordinary skill in the
`
`art at the time of the ‘313 Patent would have recognized that the handheld device of
`
`Griffin could be improved by incorporating a touch sensor on the back surface
`
`substantially equal in size to the display screen on the front surface. Ex. 1013 at ¶¶ 38-
`
`44. Additionally, a skilled artisan would have recognized that the “Alt” and “Shift”
`
`buttons of Griffin could be implemented as operation buttons as described by
`
`Rekimoto and could similarly be delineated on the display of Griffin. Id. at ¶ 45. A
`
`person of ordinary skill would have also realized the benefits of incorporating an
`
`actuator into the device of Griffin in order to provide vibrational feedback to the user
`
`as suggested by Rekimoto. Id. at ¶¶ 46-47. Such improvements would not have
`
`rendered the device of Griffin inoperable. Id. at ¶ 45. Indeed, combining the PDA of
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`Griffin and the PDA of Rekimoto according to known methods would have yielded
`
`predictable results. Id. at ¶¶ 43, 47. Therefore, claims 1, 3, 8-10, and 12 of the ‘313
`
`Patent should be rejected under § 103(a) as being obvious over Griffin in view of
`
`Rekimoto.
`
`1. A hand-
`held electronic
`device
`comprising:
`
`a
`
`[1(a)]
`memory
`configured to
`store
`a
`plurality
`of
`applications,
`wherein each
`application
`is
`associated
`with a set of
`functions;
`
`Obvious over Griffin in view of Rekimoto
`Griffin discloses “[t]he arrangements described herein are directed
`toward the field of small, hand-held electronic devices such as
`personal data assistants (PDAs), personal information managers
`(PIMs), two-way pagers and the like.” Ex. 1003 at [0002] (emphasis
`added); see also, id. at Abstract, [0032]; Fig. 2.
`Griffin discloses that “application software resid[es] in either FLASH
`600 or RAM 700.” Id. at [0038]. Examples of application software
`include e-mail and address book applications (i.e., “a plurality of
`applications”). Each application is associated with a set of functions.
`For example, the e-mail application includes functions such as
`displaying messages, replying to messages, inserting text into a
`message, and sending messages.
`
`“The exemplary messaging device shown in FIG. 1 includes . . .
`FLASH memory 600, RAM 700, serial port 800, keyboard 900,
`thumb-wheel 1000 and thumb-wheel control logic 1010.” Id. at
`[0026] (emphasis added).
`
`“If the message is an email message, then the user may choose to
`respond to the email by selecting “Reply” from a menu presented on
`the display through interaction via thumb-wheel 1000 or via menu
`selection from keyboard 900. In typing the reply, the user can use
`keyboard 900 to type full text message replies, or insert pre-
`determined or “canned” responses by using either a particular
`keystroke pattern or through pulling down pre-determined text
`strings from a menu of items presented on display 500 through the
`use of thumb-wheel 1000.” Id. at [0027].
`
`“In addition, the keyboard 900 and thumb-wheel 1000 can be used to
`permit data entry to an address book resident on the messaging
`device, or an electronic calendar or log book, or any other
`function on the messaging device requiring data entry.” Id. at [0029]
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`a
`
`[1(b)]
`processor
`configured to
`process
`a
`selected one
`of the plurality
`of
`applications;
`
`(emphasis added); see also, id. at Fig. 1.
`Griffin discloses a microprocessor 400, “which controls the
`operation of the messaging device” and processes the e-mail
`application (i.e., “a selected one of the plurality of applications”). Id.
`at [0026].
`
`“The exemplary messaging device shown in FIG. 1 includes a
`wireless radio transmitter/receiver subsystem 100 connected to a
`DSP 200 for digital signal processing of the incoming and outgoing
`data transmissions, power supply and management subsystem 300,
`which supplies and manages power to the overall messaging device
`components, microprocessor 400, which is preferably an X86
`architecture processor, which controls the operation of the
`messaging device, display 500, which is preferably a full graphic
`LCD, FLASH memory 600, RAM 700, serial port 800, keyboard 900,
`thumb-wheel 1000 and thumb-wheel control logic 1008.” Id. at
`[0026] (emphasis added); see also, id. at Abstract, [0008]; [0029]; Fig. 1.
`[1(c)(i)] a first
`Griffin discloses that the device includes a front surface (i.e., “first
`input assembly
`surface”) having an input assembly with a thumbwheel 1000, a
`having
`a
`keyboard 900 with lett