`
`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. IPR2015‐00476
`
`Patent No. 7,218,313
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
` Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313‐145
`
`
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`TABLE OF CONTENTS
`
`
`
`
`
`
` Page
`
`
`
`
`
` TABLE OF AUTHORITIES ............................................................................. iii
` EXHIBIT LIST ................................................................................................. v
` I.
`INTRODUCTION .................................................................................. 1
` II.
`OVERVIEW OF THE ’313 PATENT ..................................................... 2
` III. THE PETITION FAILS TO SET FORTH ANY EVIDENCE
`
`SUPPORTING MULTIPLE GROUNDS ................................................. 5
` IV.
`THE PETITION’S REDUNDANT GROUNDS ARE NOT
`
`ENTITLED TO CONSIDERATION ....................................................... 7
` V.
`THE PETITION IMPROPERLY RELIES ON ARGUMENTS
`
`PRESENTED IN AN EXPERT DECLARATION AND
`
`CLAIM CHARTS ................................................................................. 19
` VI.
`CLAIM CONSTRUCTION ................................................................... 24
` VII. APLIX RESERVES ALL RIGHTS TO RESPOND
`
`FURTHER ........................................................................................... 31
` VIII. CONCLUSION AND STATEMENT OF PRECISE
`
`RELIEF REQUESTED ......................................................................... 31
`
`
`
`
`
`
`
`
`ii
`
`
`
`U.S. Patent No. 7,218,313
`TABLE OF AUTHORITIES
`
`
`
`
`
`
`
`
`
`Cases
`
`
`IPR2015‐00476
`
` Page
`
`
`
`BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheeta Omni, LLC
`IPR2013-00175 ............................................................................. 19, 21
`
`
`Cisco Sys. Inc. v. C-Cation Techs.
`IPR2014-00454 ................................................................................... 19
`
`
`Google Inc. v. Everymd.com LLC
`IPR2014-00347 ..................................................................................... 5
`
`
`Google Inc. v. Visual Real Estate, Inc.
` IPR2014-01338 .................................................................................. 21
`
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.
`CBM2012-00003 ...................................................... 8, 9, 10, 13, 14, 18
`
`
`Oracle Corp. v. Clouding IP, LLC
`
`IPR2013-00075 ................................................................................... 10
`
`Petroleum Geo-Servs., Inc. v. WesternGeco LLC
`IPR2014-00689 ................................................................................... 24
`
`
`Raymarine, Inc. v. Navico Holding AS
`
`IPR2013-00355 ................................................................................. 8, 9
`
`Samsung Electronics Co. v. Black Hills Media, LLC
`
`IPR2014-00740 ................................................................................... 24
`
`Ultratec, Inc. v. Sorenson Commcn’s, Inc.
`IPR2013-00288 ........................................................................... 8, 9, 17
`
`
`VMware, Inc. v. Elecs. & Telecommcn’s. Research Inst.
`IPR 2014-00901 .................................................................................. 22
`
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.
`IPR2013-00054 ..................................................................................... 5
`
`
`
`
`
`iii
`
`
`
`U.S. Patent No. 7,218,313
`
`IPR2015‐00476
`
`
`Statutes
`
`35 U.S.C. § 326 ............................................................................................... 7
`
`
`Regulations
`
`37 C.F.R. § 42.1 .............................................................................................. 8
`
`37 C.F.R. § 42.6 ............................................................................................ 19
`
`37 C.F.R. § 42.22 ........................................................................................ 6, 7
`
`37 C.F.R. § 42.104 .......................................................................................... 5
`
`
`37 C.F.R. § 42.107 .......................................................................................... 1
`
`
`
`
`
`iv
`
`
`
`IPR2015‐00476
`
`
`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`U.S. Patent No. 7,218,313
`Exhibit 1001
`U.S. Patent 7,218,313
`Exhibit 1002
`File History of U.S. Patent No. 7,218,313
`Exhibit 1009
`Expert Declaration of Dr. Gregory Francis Welch
`
`
`EXHIBITS FILED BY APLIX IP HOLDINGS CORPORATION
`Exhibit 2005
`Amended Complaint in Aplix IP Holdings Corporation v.
`Entertainment America LLC, Case No. 1:14‐cv‐12745
`
`
`EXHIBIT LIST
`
`Sony Computer Entertainment Inc. and Sony Computer
`
`
`
`v
`
`
`
`I.
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`INTRODUCTION
`Patent Owner Aplix IP Holdings Corporation (“Aplix”) submits this
`preliminary response, under 37 C.F.R. § 42.107, to Petitioner Sony
`Computer Entertainment America LLC’s (“Petitioner’s”) petition for inter
`partes review.
`Petitioner has failed to meet its burden of demonstrating that trial is
`required on each of the multiple grounds it raises per claim. In fact, for
`several proposed grounds, Petitioner fails to support its assertions with
`any reference to the cited prior art. Aplix respectfully suggests that the
`Board should not institute a review of the many redundant and
`unsupported grounds offered in the petition or pursuant to improper
`arguments asserted in Petitioner’s claim charts and incorporated via the
`expert declaration submitted with the petition. Finally, and in the
`alternative, to the extent that the Board institutes any review of U.S. Patent
`No. 7,218,313 (“the ’313 patent”) it should decline to construe the claim
`limitations that Petitioner proposes for construction.
`
`
`
`
`1
`
`
`
`II.
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`OVERVIEW OF THE ’313 PATENT
`Beginning in 2003, a group of Massachusetts inventors led by Dr.
`Beth Marcus, developed interactive‐design technologies for improving data
`entry, control, and game‐play on hand‐held devices and host devices.1
`Among other advancements, Dr. Marcus and her team deployed
`configurable input systems and elements on multiple surfaces of a hand‐
`held device, implementing unique combinations of and applications for
`particular types of input elements.2 The team also designed hand‐held
`accessory devices that would enable users to remotely operate (and play
`video games on) cell phones and tablet devices.3
`Marcus and her team applied for patents on their inventions, and,
`after a thorough review, the United States Patent & Trademark Office
`awarded them several patents, including, on May 15, 2007, the ’313 patent,
`titled “Human Interface System.”4 The ’313 patent claims a hand‐held
`electronic device as well as methods for providing an interface for use with
`
`1
`Ex. 2005 at ¶ 2.
`2
`Ex. 2005 at ¶ 2.
`3
`Ex. 2005 at ¶ 2.
`4
`Ex. 2005 at ¶ 12.
`
`
`
`2
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`such a device. The claims recite arrangements that substantially optimize a
`biomechanical effect of a human user’s hand.5 In some of the claimed
`embodiments, input elements are configured to be selectively mapped to
`one or more input functions of a selected one of a plurality of applications.6
`Some of the claimed embodiments can be configured so that manipulation
`of a second‐surface input element causes an input function mapped to a
`first‐surface input element to change.7 In some of the claimed
`embodiments, a first‐surface input element is configured to be mapped to
`more than one function of a selected application.8
`The USPTO considered 144 references during examination of the
`application for the ’313 patent. In its Office Action dated October 5, 2006,
`the USPTO discussed the Liebenow reference in detail and found that
`neither it nor the other considered references, alone or in combination,
`disclosed “wherein at least one of the input elements of the second input
`assembly is a selectively configurable sensing surface so as to provide a
`
`5
`Ex. 1001 at claims 1, 15, 21, 30, 35, 37, and 52.
`6
`See, e.g., Ex. 1001 at claim 1.
`7
`See, e.g., Ex. 1001 at claim 1.
`8
`See, e.g., Ex. 1001 at claim 21.
`
`
`
`3
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`plurality of delineated active areas, further wherein one or more of the
`delineated active areas is mapped to one or more functions associated with
`the selected application.”9 In the Notice of Allowance dated March 1, 2007,
`the USPTO found that several other claimed limitations were also missing
`from the prior art, including, inter alia, that “at least one of the input
`elements of the first input assembly is further configured to map to more
`than one input function associated with a selected one of the plurality of
`applications.”10
`This patent was assigned to Dr. Marcus’ company, Zeemote, Inc., a
`Boston‐area start‐up, which sought to commercialize the technology.11
`Aplix, a Japanese operating company, later acquired Zeemote’s assets,
`including the ’313 patent.12
`
`
`9
`Ex. 1002 at 116.
`10
`Ex. 1002 at 44.
`11
`Ex. 2005 at ¶ 2.
`12
`Ex. 2005 at ¶ 2.
`
`
`
`4
`
`
`
`
`
`III. THE PETITION FAILS TO SET FORTH ANY EVIDENCE SUPPORTING
`MULTIPLE GROUNDS.
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`At the threshold, Petitioner fails to set forth evidence or argument
`commensurate with its assertions. In particular, several proposed grounds
`are not supported by any evidence in the petition’s claim charts. In this
`manner, Petitioner improperly places the burden on the Board and Aplix to
`guess how asserted references are being applied by Petitioner in each
`ground. See 37 C.F.R. § 42.104(b)(2)(4); Google Inc. v. Everymd.com LLC,
`IPR2014‐00347, Paper 9 at 24‐25; Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013‐00054, Paper 12 at 10‐11.
`This problem pervades the petition’s claim charts. For example, the
`petition asserts that Griffin in view of Liebenow and Pallakoff in view of
`Liebenow render claims 21, 22, 52, 53, and 54 obvious.13 The petition,
`however, does not map any part of Liebenow to any of these claims.
`Rather, it simply asks that evidence from Griffin and/or Pallakoff alone be
`used to reject these claims over the combinations of Griffin and Liebenow
`and Pallakoff and Liebenow. 14 There are several other instances of
`similarly unsupported combinations:
`
`13
`Paper No. 2 (petition) at 37.
`14
`Paper No. 2 (petition) at 41‐46.
`
`
`
`
`5
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
` The petition asserts that Griffin in view of Rekimoto renders
`claims 21, 22, 52, 53, and 54 obvious, but presents no evidence
`mapping any part of Rekimoto to these claims.15
` The petition asserts that Pallakoff in view of Rekimoto renders
`claims 21, 22, 52, 53, and 54 obvious, but presents no evidence
`mapping any part of Rekimoto to these claims.16
` The petition asserts that Griffin in view of Armstrong renders
`claims 21 and 22 obvious, but presents no evidence mapping
`any part of Armstrong to these claims.17
` The petition asserts that Pallakoff in view of Armstrong renders
`claims 21 and 22 obvious, but presents no evidence mapping
`any part of Armstrong to these claims.18
` The petition asserts that Griffin in view of Hedberg renders
`claims 21, 22, 52, 53, and 54 obvious, but presents no evidence
`mapping any part of Hedberg to these claims.19
`
`Paper No. 2 (petition) at 49‐52.
`15
`Paper No. 2 (petition) at 49‐52.
`16
`17
`Paper No. 2 (petition) at 54‐55.
`18
`Paper No. 2 (petition) at 54‐55.
`
`
`
`6
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
` The petition asserts that Pallakoff in view of Hedberg renders
`claims 21, 22, 52, 53, 54, and 58 obvious, but presents no
`evidence mapping any part of Hedberg to these claims.20
`
`Making these assertions without evidence or explanation
`improperly shifts Petitioner’s burden onto Aplix to guess how the asserted
`references are being applied by Petitioner. Beyond this dispositive failure
`to present evidence, this approach also highlights the petition’s extensive
`redundancies, detailed in the next section.
`Congress has directed the Board to consider “the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings . . . .” 35 U.S.C. § 326(b). Pursuant to this congressional
`mandate, and to promote efficiency, the Board has promulgated
`regulations, one of which requires petitioners to provide “[a] full statement
`of the reasons for the relief requested, including a detailed explanation of
`
`19
`Paper No. 2 (petition) at 57‐59.
`20
`Paper No. 2 (petition) at 57‐59.
`
`
`IV. THE PETITION’S REDUNDANT GROUNDS ARE NOT ENTITLED TO
`CONSIDERATION.
`
`
`
`
`
`7
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`the significance of the evidence including material facts, and the governing
`law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2).
`Here, Petitioner asks the Board to review 16 claims pursuant to 77
`distinct grounds, raising as many as ten separate grounds per claim. Yet
`Petitioner fails to discharge its obligation to explain, with detailed
`argument, why the “just, speedy, and inexpensive resolution” of this
`proceeding requires trial on each of several the grounds it raises per claim,
`as required by 37 C.F.R. § 42.1(b).
`The Board has concluded that “multiple grounds, which are
`presented in a redundant manner by a petitioner who makes no
`meaningful distinction between them, are contrary to the regulatory and
`statutory mandates, and therefore are not all entitled to consideration.”
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012‐00003, Paper 7 at
`2. To assess this issue, the Board has emphasized that “[t]he proper focus
`of a redundancy designation is on whether Petitioner articulates a
`meaningful distinction in terms of relative strength and weaknesses with
`respect to the application of the prior art disclosures to one or more claim
`limitations,” Ultratec, Inc. v. Sorenson Commc’ns, Inc., IPR2013‐00288,
`Paper 23 at 4, and “not on whether the applied prior art disclosures have
`differences, for it is rarely the case that the disclosures of different prior art
`
`
`
`8
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`references will be literally identical,” Raymarine, Inc. v. Navico Holding AS,
`IPR2013‐00355, Paper 21 at 3 (emphasis added). Applying these
`principles, the Board has refused to consider grounds when a petitioner
`fails to explain “why the grounds of unpatentability based, in whole or in
`part,” on one piece of prior art are “stronger or weaker than the grounds of
`unpatentability on” other pieces. Ultratec, Inc., IPR2013‐00288, Paper 23
`at 4. The Board has identified two types of redundancies, both of which
`are improper and both of which are present in the petition. The first
`type—vertical redundancy—involves more than one piece of prior art
`applied both in partial combination and in full combination to invalidate a
`claim, when a single piece of prior art would be sufficient. Liberty Mut.,
`CBM2012‐00003, Paper 7 at 3. The second—horizontal redundancy—
`“involves a plurality of prior‐art references applied not in combination to
`complement each other but as distinct and separate alternatives,” again
`when a single piece of prior art would be sufficient. Id. Petitioner’s
`proposed grounds are redundant in both ways.
`
`
`
`9
`
`
`
`A.
`
`The petition improperly presents vertically redundant
`grounds.
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`
`Petitioner asserts at least 37 vertically redundant grounds for
`review. Vertical redundancy exists when additional references are added
`to a base reference or combination of references without any apparent or
`explained need for the addition (i.e., the base reference or combination of
`references is already alleged to disclose all elements of the claim, and no
`weaknesses are identified for the base reference or combination of
`references). See, e.g., Liberty Mut., CBM2012‐00003, Paper No. 7 at 12.
`When a petition asserts vertically redundant grounds, it must explain “why
`the reliance in part may be the stronger assertion as applied in certain
`circumstances and why the reliance in whole may also be the stronger
`assertion in other instances.” Id. at 3 (emphasis in original).
`The Board has specifically ruled that when both anticipation and
`obviousness grounds are alleged, the obviousness ground is redundant and
`should be dismissed. See, e.g., Oracle Corp. v. Clouding IP, LLC, IPR2013‐
`00075, Paper 8 at 13‐14 (finding that obviousness grounds involving the
`combination of the Schilit reference with one or more additional references
`were redundant in view of anticipation grounds based on the Schilit
`reference alone).
`
`
`
`10
`
`
`
`Claim Anticipation ground
`
`Obviousness grounds
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`The petition alleges vertically redundant grounds of both
`anticipation and obviousness for claims as reflected in the chart below:
`Griffin in view of Liebenow;
`Griffin
`Griffin in view of Rekimoto;
`Griffin in view of Armstrong;
`Griffin in view of Hedburg
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Pallakoff in view of Armstrong;
`Pallakoff in view of Hedburg
`Griffin in view of Liebenow;
`Griffin in view of Rekimoto;
`Griffin in view of Armstrong;
`Griffin in view of Hedburg
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Pallakoff in view of Armstrong;
`Pallakoff in view of Hedburg
`
`21
`
`22
`
` ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff
`
`Griffin
` ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff
`
`
`
`
`11
`
`
`
`52
`
`53
`
`Claim Anticipation ground
`
`U.S. Patent No. 7,218,313
`Griffin
` ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff
`
`Griffin
` ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff
`
`
`Obviousness grounds
`
`IPR2015‐00476
`Griffin in view of Liebenow;
`Griffin in view of Rekimoto;
`Griffin in view of Hedburg
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Pallakoff in view of Hedburg
`Griffin in view of Liebenow;
`Griffin in view of Rekimoto;
`Griffin in view of Hedburg
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Pallakoff in view of Hedburg
`
`
`
`12
`
`
`
`54
`
`58
`
`Claim Anticipation ground
`
`Obviousness grounds
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`Griffin in view of Liebenow;
`Griffin
`Griffin in view of Rekimoto;
` ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Griffin in view of Hedburg
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`Pallakoff in view of Liebenow;
`Pallakoff
`Pallakoff in view of Rekimoto;
`
`Pallakoff in view of Hedburg
`Pallakoff in view of Liebenow;
`Pallakoff
`Pallakoff in view of Rekimoto;
`
`Pallakoff in view of Hedburg
`
`As the Board’s decisions discussed above make clear, if the petition is
`going to assert that Griffin anticipates claims 21, 22, 52, 53, and 54 (as it
`does), and then also argue that those claims are obvious in light of various
`combinations of references (as it does), then the petition must explain the
`relative merits of these arguments. Indeed, to support each of these claims,
`Petitioner must explain, “why the reliance in part may be the stronger
`assertion as applied in certain circumstances and why the reliance in
`whole may also be the stronger assertion in other instances.” Liberty Mut.,
`
`
`
`13
`
`
`
`B.
`
`The petition improperly presents horizontally redundant
`grounds.
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`CBM2012‐00003, Paper No. 7 at 3 (emphasis in original). This the petition
`does not do. It makes no effort to explain why the Board should expend
`finite resources to adjudicate its obviousness arguments, given its
`anticipation arguments. For this reason, the Board should decline to
`consider Petitioner’s grounds C, D, E, and F21 with respect to these claims.
`
`Petitioner’s claimed grounds are horizontally redundant with respect
`to claims 21, 22, 23, 24, 26, 27, 28, 29, 52, 53, 54, 55, 56, 58, 59, and 60.
`Horizontal redundancy occurs when multiple references are relied upon to
`“provide essentially the same teaching to meet the same claim limitation,
`and the associated arguments do not explain why one reference more
`closely satisfies the claim limitation at issue in some respects than another
`reference, and vice versa.” Liberty Mut., CBM2012‐00003, Paper 7 at 3
`(emphasis in original). The Board’s instructions are clear—if one
`alternative ground is better from all perspectives, then the petition should
`not burden the Patent Owner and the Board with the weaker ground. And
`if there is no difference in the grounds, the petition should assert only one
`of the grounds. Id. at 12. “Only if the Petitioner reasonably articulates why
`
`21
`Paper No. 2 (petition) at 37‐59 (sections IV.C ‐ IV.F).
`
`
`
`14
`
`
`
`Claim
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`each ground has strength and weakness relative to the other should both
`grounds be asserted for consideration.” Id.
`Here, Petitioner proposes the rejection of claims 21‐24, 26‐29, 52‐56,
`and 58‐ 60 in two ways:
`i)
`using Griffin as the primary reference; and
`ii)
`using Pallakoff as the primary reference.
`The chart below demonstrates this overlap:
`Pallakoff;
`21 Griffin;
`Pallakoff in view of Liebenow;
`Griffin in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Griffin in view of Rekimoto;
`Pallakoff in view of Armstrong
`Griffin in view of Armstrong;
`Pallakoff in view of Hedburg
`Griffin in view of Hedburg
`Pallakoff;
`22 Griffin;
`Pallakoff in view of Liebenow;
`Griffin in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Griffin in view of Rekimoto;
`Pallakoff in view of Armstrong
`Griffin in view of Armstrong;
`Pallakoff in view of Hedburg
`Griffin in view of Hedburg
`
`Ground
`(Griffin as the
`primary reference)
`
`Ground
`(Pallakoff as the primary
`reference)
`
`
`
`15
`
`
`
`Ground
`(Griffin as the
`primary reference)
`
`Ground
`(Pallakoff as the primary
`reference)
`
`Claim
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`Pallakoff in view of Liebenow;
`23 Griffin in view of Liebenow;
`Pallakoff in view of Rekimoto
`Griffin in view of Rekimoto
`Pallakoff in view of Liebenow;
`24 Griffin in view of Liebenow;
`Pallakoff in view of Rekimoto
`Griffin in view of Rekimoto
`Pallakoff in view of Liebenow
`26 Griffin in view of Liebenow
`27 Griffin in view of Armstrong Pallakoff in view of Armstrong
`28 Griffin in view of Hedburg
`Pallakoff in view of Hedburg
`29 Griffin in view of Hedburg
`Pallakoff in view of Hedburg
`Pallakoff;
`52 Griffin;
`Pallakoff in view of Liebenow;
`Griffin in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Griffin in view of Rekimoto;
`Pallakoff in view of Hedburg
`Griffin in view of Hedburg
`Pallakoff;
`53 Griffin;
`Pallakoff in view of Liebenow;
`Griffin in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Griffin in view of Rekimoto;
`Pallakoff in view of Hedburg
`Griffin in view of Hedburg
`
`
`
`16
`
`
`
`Claim
`
`Ground
`(Griffin as the
`primary reference)
`
`U.S. Patent No. 7,218,313
`54 Griffin;
`Griffin in view of Liebenow;
`Griffin in view of Rekimoto;
`Griffin in view of Hedburg
`55 Griffin in view of Liebenow;
`Griffin in view of Rekimoto
`56 Griffin in view of Liebenow;
`Griffin in view of Rekimoto
`58 Griffin in view of Liebenow
`
`IPR2015‐00476
`
`Ground
`(Pallakoff as the primary
`reference)
`
`Pallakoff;
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Pallakoff in view of Hedburg
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto
`Pallakoff;
`Pallakoff in view of Liebenow;
`Pallakoff in view of Rekimoto;
`Pallakoff in view of Hedburg
`Pallakoff in view of Hedburg
`59 Griffin in view of Hedburg
`Pallakoff in view of Hedburg
`60 Griffin in view of Hedburg
`
`The petition does not explain “the relative strengths or weaknesses
`between the applied prior art references.” Ultratec, Inc., IPR2013‐00288,
`Paper 23 at 4. Nor does the petition explain why any of the multiple
`
`
`
`17
`
`
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`IPR2015‐00476
`U.S. Patent No. 7,218,313
`references is a “better reference than the other two references.” Liberty
`Mut., CBM2012‐00003, at 9. In fact, the petition makes only a token
`attempt to articulate any distinction between the two primary references,
`explaining “Pallakoff is not redundant to Griffin as described in Section IV.A
`at least because Pallakoff also discloses interfacing ‘with a host electronic
`device’ as recited Claim 58.”22 Claim 58, however, is only one of 16 claims
`for which Petitioner argues that Griffin and Pallakoff (by themselves or in
`conjunction with additional prior art) invalidate a claim of the ’313 patent.
`Yet Petitioner makes no attempt to distinguish any redundancies in its
`arguments relating to the 15 additional claims. Adding Liebenow,
`Rekimoto, Armstrong, and Hedberg to both Griffin and Pallakoff adds still
`additional layers of repetition. In these circumstances, Petitioner has not
`met its burden to distinguish overlapping prior‐art references. To the
`contrary, Petitioner relies on the same justifications to assert separate and
`distinct grounds. For these reasons, the Board should decline to consider
`the petition’s horizontally redundant grounds for claims 21, 22, 23, 24, 26,
`27, 28, 29, 52, 53, 54, 55, 56, 58, 59 and 60.23
`
`22 Paper No. 2 (petition) at 26.
`23
`Paper No. 2 (petition) at 12‐59 (sections IV.A ‐ IV.F).
`
`
`
`18
`
`
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`U.S. Patent No. 7,218,313
`
`
`IPR2015‐00476
`
`V. THE PETITION IMPROPERLY RELIES ON ARGUMENTS
`PRESENTED IN AN EXPERT DECLARATION AND CLAIM CHARTS.
`
`
`
`
`
`A.
`
`The petition improperly relies on arguments presented in
`an expert declaration.
`
`It is improper to incorporate by reference arguments from one
`document into another document. 37 C.F.R. § 42.6(a)(3). For this reason,
`the Board has clarified that “a party may not make its case within the
`declaration of an expert” and “[i]t is improper for any argument to be fully
`developed and presented, not in the party’s paper itself, but in the
`declaration of an expert.” BAE Sys. Info. and Elec. Sys. Integration, Inc. v.
`Cheeta Omni, LLC, IPR2013‐00175, Paper 45 at 23; see also Cisco Sys. Inc. v.
`C‐Cation Techs., IPR2014‐00454, Paper 12 at 8 (emphasizing that the
`practice of citing to “large portions of another document, without sufficient
`explanation of those portions, amounts to incorporation by reference”).
`Ignoring these directives, the petition repeatedly incorporates the
`declaration of Petitioner’s proffered expert by reference, Dr. Gregory
`Welch, and directs the Board to declaration paragraphs presenting much
`more expansive explanation and argument.
`For example, Petitioner asserts that “[u]pon reading the disclosure of
`Liebenow, a person having ordinary skill in the art would have also
`
`
`
`19
`
`
`
`IPR2015‐00476
`U.S. Patent No. 7,218,313
`recognized the advantages of incorporating the touch panels of Liebenow
`onto the back surface of the handheld device taught by Griffin.”24 For this
`conclusion, the petition cites Dr. Welch’s declaration, paragraphs 43‐45.25
`A reader turning to these paragraphs uncovers a one and a half page
`explanation for this single sentence, including a reference to the
`declaration’s 7‐page “Background of the Technology,” section.26 Thus for
`one sentence of treatment relating to the obviousness of incorporating
`Liebenow with Griffin, the petition incorporates three paragraphs from the
`expert’s declaration and the declaration’s “Background of the
`Technology.”27
`The petition mirrors this approach throughout.28 Indeed, the
`expert’s declaration dedicates 10 paragraphs (over eight pages) to the
`general proposition that it would be “[o]bvious to combine Griffin and
`
`24
`Paper No. 2 (petition) at 39.
`25
`Paper No. 2 (petition) at 39 (citing Welch Dec. ¶¶ 43‐45).
`26
`Ex. 1009 (Welch Decl.) at 24‐25.
`27
`Paper No. 2 (petition) at 38 (citing Welch Dec. ¶¶ 43‐45).
`28
`See, e.g., Paper No. 2 (petition) at 37‐41, 46‐49, 52‐54, and 55‐
`
`57.
`
`
`
`20
`
`
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`IPR2015‐00476
`U.S. Patent No. 7,218,313
`Liebenow.”29 The petition itself, however, includes just two pages making
`this argument.30 In addition, the expert declaration dedicates six pages to
`the proposition that it would be “obvious to combine Pallakoff and
`Liebenow,”31 while the petition dedicates just three paragraphs to this
`issue.32 Plainly, the argument is “fully developed and presented, not in the
`party’s paper itself, but in the declaration of an expert,” which the Board’s
`BAE decision recognized is improper. In such circumstances, the Board has
`not hesitated to find that a petitioner has failed to meet its burden in an
`appropriate manner. See, e.g., BAE Sys. Info., IPR2013‐00175, Paper 45 at
`24.
` The Board has clarified that “[c]laim charts should only be used to
`provide an element‐by‐element showing as to how the prior art teaches the
`limitations of a claim.” Google Inc. v. Visual Real Estate, Inc., IPR2014‐
`01338, Paper No. 3 at 2. To this end, claim charts “may not include
`
`29
`Ex. 1009 (Welch Decl.) at 20‐27.
`30
`Paper No. 2 (petition) at 38‐40.
`31
`Ex. 1009 (Welch Decl.) at 27‐32.
`32
`Paper No. 2 (petition) at 40‐41.
`
`The petition improperly relies on arguments presented in
`claim charts.
`
`B.
`
`
`
`21
`
`
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`IPR2015‐00476
`U.S. Patent No. 7,218,313
`arguments, claim construction, statements of the law, or detailed
`explanations as to why a claim limitation is taught or rendered obvious by
`the prior art.” Id. “Explanations, characterizations, conclusions, or
`inferences drawn from the references are improper in a claim chart.”
`VMware, Inc. v. Elecs. & Telecomms. Research Inst., IPR 2014‐00901, Paper
`No. 7 at 2. “If there is any need to explain how a reference discloses or
`teaches a limitation, that explanation must be elsewhere in the petition—
`not in a claim chart.” Id. at 2‐3 (emphasis in original).
`Petitioner’s claim charts violate these directives, including repeated
`characterizations, conclusions, and inferences drawn from the cited prior
`art. Indeed, the first paragraph of almost every claim includes the very
`conclusions that Petitioner asks the Board to draw from its evidence. For
`example, Petitioner’s claim chart asserts the following:
`Pallakoff embodies a method of configuring a
`human interface and input system for use with a
`handheld electronic device that is configured to
`run software processes (i.e., “applications”)
`including email, instant messaging, calculator, and
`web browsing applications. Each application is
`associated with functions.33
`
`Paper No. 2 (petition) at 26.
`33
`
`
`
`22
`
`
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`IPR2015‐00476
`U.S. Patent No. 7,218,313
` This assertion contains no citation, but tautologically parrots the
`limitations of the ’313 patent’s claim 21. This approach is maintained
`throughout, with the petition offering self‐serving summaries of its cited
`prior art.34 Beyond occasionally asking the reader to extrapolate from a
`Figure, Petitioner’s summaries offer neither citations to nor quotations
`from the actual references. Without such support, these summaries are
`nothing more than Petitioner’s characterization of the prior art. In these
`circumstances, Petitioner fails to meet its burden for institution of trial.
`
`
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