`571-272-7822
`
`Date Entered: June 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00476
`Patent 7,218,313 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 21–24, 26–29, 52–56
`and 58–60 of U.S. Patent No. 7,218,313 B2 are unpatentable.
`
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`A. Procedural History
`Petitioner, Sony Computer Entertainment America LLC, filed a
`Petition requesting an inter partes review of claims 21–24, 26–29, 52–56,
`and 58–60 of U.S. Patent No. 7,218,313 B2 (Ex. 1001, “the ’313 patent”).
`Paper 2 (“Pet.”). Patent Owner, Aplix Holdings Corporation, filed a
`Preliminary Response. Paper 10 (“Prelim. Resp.”). Upon consideration of
`the Petition and Preliminary Response, on June 22, 2015, we instituted an
`inter partes review of claims 21–24, 26–29, 52–56, and 58–60 pursuant to
`35 U.S.C. § 314. Paper 11 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 15 (“PO Resp.”)) and Petitioner filed a Reply (Paper 21
`(“Pet. Reply”)). Patent Owner filed a Motion for Observations (Paper 25)
`and Petitioner filed a Response to the Observations (Paper 29). An oral
`hearing was held on January 19, 2016, and a transcript of the hearing is
`included in the record (Paper 31 (“Tr.”)).
`B. Related Proceedings
`The ’313 patent is involved in the following lawsuit: Aplix IP
`Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
`(MLW) (D. Mass.). Pet. 59–60.
`C. The ’313 Patent
`The ’313 patent relates to hand-held electronic devices, such as cell
`phones, personal digital assistants (“PDAs”), pocket personal computers,
`smart phones, hand-held game devices, bar-code readers, remote controls
`having a keypad or one or more input elements. Ex. 1001, 1:5–11, 7:7–11.
`The hand-held device includes, on one surface, one or more software
`configurable input elements that can be manipulated by a user’s thumb(s) or
`
`2
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`stylus, and on the other surface, one or more software configurable selection
`elements that can be manipulated by a user’s finger(s). Id. at Abstract.
`D. Illustrative Claim
`Of the challenged claims, claims 21 and 52 are the only independent
`claims. Claims 22–24 and 26–29 directly or indirectly depend either from
`claim 21 and claims 53–56 and 58–60 directly or indirectly depend from
`claim 52.
`Claim 21, reproduced below, is illustrative.
`21. A method for configuring a human interface and input system
`for use with a hand-held electronic device configured to run a
`plurality of applications, each application associated with a set of
`functions, the method comprising:
`disposing on a first surface a first input assembly having a
`plurality of input elements configured to receive input from a
`human user through manipulation of the plurality of input
`elements, wherein 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;
`disposing on a second surface a second input assembly
`having one or more input elements configured to be manipulated
`by one or more of the human user’s fingers, wherein at least one
`of the input elements of the second input assembly is further
`configured to selectively map to one or more input functions
`associated with the selected application; and
`arranging the plurality of input elements of the first input
`assembly and the one or more input elements of the second input
`assembly to substantially optimize a biomechanical effect of the
`human user’s hand.
`Ex. 1001, 17:50–18:6.
`
`3
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 21–24, 26–29, 52–56,
`and 58–60 on the following grounds:
`
`
`
`Claims
`21–24, 26, 52–56, and
`58
`
`Basis
`
`References
`
`§ 103(a)
`
`Pallakoff1 and Liebenow2
`
`27
`
`§ 103(a)
`
`Pallakoff and Armstrong3
`
`28, 29, 59, and 60
`
`
`§ 103(a)
`
`Pallakoff and Hedberg4
`
`II. ANALYSIS
`A. Level of Skill of Person in the Art
`We find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`B. Claim Interpretation
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). Consistent with the broadest reasonable construction,
`
`
`1 US 2002/0163504 A1, Nov. 7, 2002 (Ex. 1004).
`2 US 2002/0118175 A1, Aug. 29, 2002 (Ex. 1005).
`3 US 6,469,691, Oct. 22, 2002 (Ex. 1007).
`4 WO 99/18495, Apr. 15, 1999 (Ex. 1008).
`4
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`claim terms are presumed to have their ordinary and customary meaning as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Also, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“limitations are not to be read into the claims from the
`specification”). However, an inventor may provide a meaning for a term
`that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following claim terms: “a
`plurality of delineated active areas” (claims 24 and 56) and “substantially
`optimize a biomechanical effect of the human user’s hand” (claims 21 and
`52). Pet. 6–10. In our Decision to Institute, we determined that it was not
`necessary to construe “a plurality of delineated active areas” and
`“substantially optimize a biomechanical effect of the human user’s hand.”
`Dec. 6–7. Neither party has indicated that our determination in that regard
`was improper and we do not perceive any reason or evidence that now
`compels any deviation from our initial determination. Additionally, no other
`terms need to be construed explicitly for the purpose of this Decision.
`C. Obviousness Over Pallakoff and Liebenow
`Petitioner asserts that claims 21–24, 26, 52–56, and 58 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Pallakoff and Liebenow. Pet. 37. To support its contentions, Petitioner
`provides detailed explanations as to how the prior art meets each claim
`
`5
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`limitation. Id. at 23–36, 40–46. Petitioner also relies upon a Declaration of
`Dr. Gregory F. Welch, who has been retained by Petitioner for the instant
`proceeding. Ex. 1009.
`Pallakoff teaches a handheld electronic device having “face keys” on
`the front surface and “modifier buttons,” which are also referred to as “side-
`buttons,” on the side or back. Ex. 1004, Abstract, ¶¶ 15, 196, Fig. 1. The
`primary embodiment taught in Pallakoff relates to a cellular telephone;
`however, Pallakoff also teaches that the invention could also be applied to a
`PDA or handheld computer. Id. at Abstract, ¶ 16. The handheld device
`includes a processor that runs email, instant messaging, calculator, and web
`browsing applications. Id. ¶¶ 24, 208.
`Figure 3 of Pallakoff is reproduced below.
`
`6
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`
`
`
`
`As shown in Figure 3 above and taught in Pallakoff, the user types
`characters or invokes functions by pressing the keys on the front surface
`while simultaneously holding one or more modifier buttons with his or her
`fingers. Ex. 1004 at Abstract. For example, pressing the “2” key alone
`results in a lowercase “a” being input into an application. Id. ¶¶ 17–19, Fig.
`1. Similarly, pressing the “2” key in addition to the “Shift” modifier button
`101 results in an uppercase “A,” pressing the “2” key in addition to the “2nd
`Letter” modifier button 102 results in a lowercase “b,” etc. Id.
`
`7
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`Additionally, Pallakoff teaches that the user holds the device in one
`hand and manipulates the modifier buttons with the fingers of the hand
`holding the device. Id. at Abstract, ¶ 193. In one arrangement, fingers of
`the other hand manipulate the face keys. Id. However, Pallakoff also
`suggests that the user may use the thumb or fingers to manipulate the input
`elements to enable one-handed operation. Id. ¶ 193.
`Pallakoff teaches that specific keys may be mapped to more than one
`function of a particular application. Id. ¶ 322. For example, Pallakoff
`teaches that the “a” face key on the front surface may be mapped to up to
`eight different functions of an e-mail application. Id.
`Liebenow teaches an electronic hand-held information appliance
`having a display disposed on a first surface and an input device disposed on
`a second surface opposed to the first surface for inputting information. Ex.
`1005, Abstract. Figure 1 of Liebenow is reproduced below.
`
`8
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`
`
`
`
`
`
`As shown in Figure 1 of Liebenow, digital information appliance 100
`is sized and shaped to be held by a user in both hands. Housing 102 includes
`front surface 104 and back surface 106. Id. ¶ 25. One or more function keys
`such as 150, 152, and 154 may be mounted on front surface 104 and may be
`manipulated by a user’s thumb. Display 116 may be a touch-screen for
`touch or pen input of information and data. Id. ¶¶ 26, 33. Figure 5 of
`Liebenow is reproduced below.
`
`
`9
`
`
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`
`
`
`As shown in Figure 5, back surface may be comprised of one or more
`touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
`defined as keys of a keyboard (emulated as an electromechanical keyboard
`seen in Figure 2) so that a user touching the panel (with the user’s fingers,
`for example) within such an area would accomplish actuation of a key. Id.
`In particular, panel 140 may be divided into left and right key ranges 142
`and 144, such that fingers of a user’s left and right hands may be positioned
`over the touch sensitive panel to be in position for typing. Various key
`configurations may be defined as desired by the user or as required by the
`applications executed by the digital information appliance. Id.
`10
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`
`Liebenow further teaches, in connection with the hand-held device, a
`processing system 502 that includes a central processing unit such as a
`microprocessor or microcontroller for executing programs, performing data
`manipulations, and controlling tasks of the hand-held device. Id. ¶¶ 21, 56;
`Fig. 13.
`Claim 21
`Claim 21 recites “disposing on a first surface a first input assembly
`having a plurality of input elements configured to receive input from a
`human user through manipulation of the plurality of input elements, wherein
`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.” For these limitations, Petitioner
`contends that Pallakoff teaches a first surface with a plurality of face keys.
`Pet. 28; Ex. 1004 ¶¶ 15, 199, Figs. 1–4. As pointed out by Petitioner,
`Pallakoff teaches a processor that runs email, instant messaging, calculator,
`and web browsing applications. Pet. 26, 29; Ex. 1004 ¶¶ 2, 22, 187, 208,
`322, Figs. 1–4. Petitioner further contends that each application is mapped
`to a set of functions. See, e.g., Pet. 30–31. We are persuaded by Petitioner’s
`showing, and adopt it as our own, that Pallakoff teaches “disposing on a first
`surface a first input assembly having a plurality of input elements configured
`to receive input from a human user through manipulation of the plurality of
`input elements, wherein 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.”
`Claim 21 further recites “disposing on a second surface a second input
`assembly having one or more input elements configured to be manipulated
`
`11
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`by one or more of the human user’s fingers, wherein at least one of the input
`elements of the second input assembly is further configured to selectively
`map to one or more of the input functions associated with the selected
`application.” For these limitations, Petitioner contends that Pallakoff
`teaches a second surface (e.g., the side or back surface) with a plurality of
`modifier buttons. Pet. 32; Ex. 1004 ¶¶ 196, Figs. 1– 4. As pointed out by
`Petitioner, Pallakoff teaches a processor that runs email, instant messaging,
`calculator, and web browsing applications. Pet. 29; Ex. 1004 ¶¶ 2, 22, 187,
`208, 322, Figs. 1–4. Petitioner further contends that each application is
`mapped selectively to a set of functions. See, e.g., Pet. 32–34. We are
`persuaded by Petitioner’s showing, and adopt it as our own, that Pallakoff
`teaches “disposing on a second surface a second input assembly having one
`or more input elements configured to be manipulated by one or more of the
`human user’s fingers, wherein at least one of the input elements of the
`second input assembly is further configured to selectively map to one or
`more of the input functions associated with the selected application.”
`Claim 21 further recites “arranging the plurality of input elements of
`the first input assembly and the one or more input elements of the second
`input assembly to substantially optimize a biomechanical effect of the
`human user’s hand.” For these limitations, Petitioner contends that Pallakoff
`teaches face keys on the front of the device and modifier buttons on the side
`and/or back of the device and includes a thumb wheel to take advantage of
`the user’s thumb. Pet. 34. We are persuaded by Petitioner’s showing, and
`adopt it as our own, that Pallakoff teaches “arranging the plurality of input
`elements of the first input assembly and the one or more input elements of
`
`12
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`the second input assembly to substantially optimize a biomechanical effect
`of the human user’s hand.”
`Claim 52
`Independent claim 52 is similar in scope to independent claim 21.
`Petitioner argues these claims collectively, choosing claim 21 as
`representative. See, e.g., Pet. 35–36. Petitioner relies on Pallakoff to meet
`the limitations of claim 52. Accordingly, the discussion above with respect
`to claim 21 equally applies to claim 52. Thus, based on the record before us,
`Petitioner has shown by a preponderance of the evidence that Pallakoff
`teaches the limitations of claim 52.
`Claims 22–24, 26, 53–56, and 585
`For claims 22–24, 26, 53–56, and 58, each of which directly or
`indirectly depends either from claims 21 or 52, Petitioner relies on the
`combinations of Pallakoff and Liebenow to meet the additional limitations
`of claims 22–24, 26, 53–56, and 58. We agree with Petitioner’s showing,
`which we adopt as our own, that the combination of Pallakoff and Liebenow
`
`
`5 Patent Owner argues that we should not rely on Petitioner’s anticipation
`arguments to evaluate obviousness, but that we should observe that no
`evidence has been presented about how any proposed combination of prior
`art references renders obvious claims 21, 22, 52, 53, and 54. PO Resp. 3–5.
`We decline to do so. Although Petitioner alleges these claims are
`unpatentable as obvious, yet appears to present a case of anticipation, we
`determine that such a presentation is not a basis for dismissing the petition.
`It is axiomatic patent law that a disclosure that anticipates under 35 U.S.C. §
`102 also may render the claim unpatentable under 35 U.S.C. § 103, because
`anticipation is the epitome of obviousness. See In re McDaniel, 293 F.3d
`1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the
`epitome of obviousness.’”) (quoting Connell v. Sears, Roebuck & Co., 722
`F.2d 1542, 1548 (Fed. Cir. 1983)).
`
`13
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`teaches the additional limitations of claims 22–24, 26, 53–56, and 58. Patent
`Owner does not argue that any limitations are not met by the prior art. PO
`Resp. 17.Rationale for the Combination of Pallakoff and Liebenow
`Patent Owner does not make arguments, that the prior art does not
`meet the limitations of claims 21–24, 26, 52–56, and 58. Patent Owner
`focuses on the combinability of Pallakoff and Liebenow. Thus, we now
`address Petitioner’s reasons for combining Pallakoff, and Liebenow (Pet.
`40–41) and Patent Owner’s arguments that the references should not be
`combined. PO Resp. 17–25.
`As to claims 28, 29, 59, and 60, Patent Owner initially argues in
`conclusory fashion that Pallakoff and Liebenow should not be combined.
`PO Resp. 15–17. Patent Owner argues that its declarants were more
`judicious in determining which combinations should be combined and that
`Petitioner’s declarant Dr. Welch took extreme positions and could not
`remember many things. PO Resp. 16. We have considered this argument.
`We find Dr. Welch to be credible, thus, Patent Owner’s argument is not
`persuasive.
`
`Petitioner provides reasons for combining Pallakoff and Liebenow by
`explaining that a person having ordinary skill in the art at the time of the
`invention would have incorporated Liebenow’s input/output system 516
`having one or more controllers into Pallakoff’s handheld device to improve
`similar devices in the same way. Pet. 40; Ex. 1009 ¶¶ 50–55. In support of
`that assertion, Dr. Welch testifies that a skilled artisan would have
`recognized that Liebenow would have improved the Pallakoff handheld
`device in that positions of modifier buttons on the back surface touch panel
`could be more easily customized. Ex. 1009 ¶ 51.
`
`14
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`
`Petitioner further provides reasons for combining Pallakoff with
`Liebenow by explaining that a person having ordinary skill in the art at the
`time of the invention would have recognized that including a network
`adapter (for claim 58) would have been obvious as a matter of design choice.
`Pet. 41; Ex. 1009 ¶ 55.
`Patent Owner points out that Pallakoff is a small device with a small
`keypad for typing on the front surface and Liebenow is a large device with a
`full size keyboard on the read surface. PO Resp. 18. Additionally, Patent
`Owner points out that Pallakoff’s buttons are on the side and designed to be
`used in combination, while Liebenow’s modifier buttons are on a different
`surface than the touch pad (the touch pad is only on the rear not the side) and
`are not used in combination with the touch pad. Id. at 18, 21. Patent Owner
`argues that the “[P]etition’s proposed combination would require a person of
`ordinary skill in the art to take Pallakoff and Liebenow, with all these
`differences, and make a complicated combination to teach ’313 claims 24
`and 56. PO Resp. 19. Patent Owner also argues that Pallakoff teaches away
`from implementing modifier buttons on the back of the hand held device for
`the reasons stated above. Id. at 20–21. A reference does not teach away if it
`merely expresses a general preference for an alternative invention but does
`not “criticize, discredit, or otherwise discourage” investigation into the
`invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We
`have considered Patent Owner’s arguments and evidence to which we are
`directed and determine that Patent Owner has not shown sufficiently that
`Pallakoff criticizes, discredits, or otherwise discourages implementing the
`modifier buttons on any surface of the handheld device, including the back
`surface. Moreover, Pallakoff teaches that the location of the face-keys and
`
`15
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`side-buttons may be arranged in different locations, including on the sides or
`back of the handheld device. Ex. 1004 ¶¶ 196, 200, 323.
`Patent Owner next argues “[i]t would not be possible to implement the
`proposed new, back-located modifier buttons implemented on a smooth
`touch panel such as Liebenow’s.” PO Resp. 21. Grasp stability would be
`reduced, and it would be harder for the user to find the modifier buttons
`without any tactile clues as to their location or identity. Id. at 22. We
`disagree because Patent Owner does not argue that the combined teachings
`would not result in a working device, or that the combination would be
`beyond the skill set of a person of ordinary skill in the art. In addition, it is
`of no moment that the combination would, in some aspects, be inferior.
`Patent Owner next argues that Liebenow’s touchpad could not be
`substituted for Pallakoff’s modifier buttons and be able to perform the
`operations required in Pallakoff because Liebenow’s touchpad would not
`recognize two different areas being pressed simultaneously. PO Resp. 22.
`Patent Owner’s arguments and evidence are based on incorporating
`physically all technicalities of Ishihara with all technicalities of Pallakoff.
`The test for obviousness is what the combined teachings of the references
`would have suggested to a person of ordinary skill in the art, not whether
`one reference may be bodily incorporated into the structure of another
`reference. In re Keller, 642 F.2d 413 (CCPA 1981). For example, Patent
`Owner and Dr. MacLean are of the apparent impression that the operation of
`pressing two modifier buttons simultaneously as taught in Pallakoff need be
`maintained when combining Pallakoff with Liebenow. See, e.g., PO Resp.
`22; Ex. 2007 ¶¶ 81–90. But that is not what the law requires, and in any
`
`16
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`event, none of the claims require how input elements are selected or
`operated by the user.
`Patent Owner argues that locating Pallokoff’s modifier buttons on the
`back of the handheld device using a touchpad as suggested by Liebenow
`would defeat Pallakoff’s ergonomic requirements because it would be hard
`to find the buttons and re-adjust one’s grip and would, thus, the combination
`would not achieve the claimed advantage. PO Resp. 22–23. Patent Owner’s
`arguments are not persuasive. Patent Owner does not argue that the
`combined teachings would not result in a working device, or that the
`combination would be beyond the skill set of a person of ordinary skill in the
`art. It is of no moment that the combination would, in some aspects, be
`inferior.
`Patent Owner finally argues that at the time of the invention, mobile
`phone handsets typically did not include an input controller, but rather input
`elements connected directly to a processor. PO Resp. 23–25. Patent Owner
`contends that a person of ordinary skill in the art at the time of the invention
`would not have looked at the PC-type hardware architecture of Liebenow’s
`handheld device and been motivated to add such hardware to Pallakoff’s
`mobile handset device. Id.
`We are not persuaded by these arguments because the claims are not
`limited to a mobile phone device. Rather the claims are directed to handheld
`devices in general. Accordingly, a person of ordinary skill in the art would
`have considered the relevant teachings for all types of handheld devices.
`Moreover, we are not persuaded by the arguments because the arguments are
`again narrowly focused on combining the technicalities of the features of
`one piece of prior art with the technicalities of another prior art reference.
`
`17
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`In summary, we have considered all of Patent Owner’s arguments and
`are not persuaded by any of Patent Owner’s arguments that it would not
`have been obvious to a person of ordinary skill in the art at the time of the
`invention to combine Pallakoff and Liebenow. Pallakoff describes a hand-
`held device with input elements and an application as claimed. Liebenow
`describes a touchpad on the back side and controllers. We are persuaded by
`a preponderance of the evidence that modifying the Pallakoff hand-held
`device to include specifically a touchpad on the back side and controllers
`would have been within the level of a person of ordinary skill in the art.
`Moreover, as explained by Petitioner, adding such features to the Pallakoff
`device would have increased the functionality and desirability of the hand
`held device. A person with ordinary skill in the art is “a person of ordinary
`creativity, not an automaton,” and “in many cases . . . will be able to fit the
`teachings of multiple patents together like pieces of a puzzle.” KSR, 550
`U.S. at 420–21.
`D. Obviousness Over Pallakoff and Armstrong
`Petitioner contends that claim 27 is unpatentable under 35 U.S.C.
`§ 103 based on Pallakoff and Armstrong. Pet. 52. To support its
`contentions, Petitioner provides a detailed showing mapping limitations of
`claim 27 to structures described by Pallakoff and Armstrong. Id. at 52–55.
`Petitioner also relies upon the Declaration of Dr. Welch (Ex. 1009) to
`support its position.
`Petitioner relies on Armstrong for its description of positioning an
`input element with a “resilient dome cap(s) for providing tactile feedback to
`the finger depressing the depressible surface” on a hand-held electronic
`device. Pet. 54; Ex. 1007, 3:16–31, 4:51–62. Specifically, Petitioner relies
`
`18
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`on Armstrong’s input elements that provide tactile feedback to meet the
`limitation of claim 27 to “a palpable detent with at least one input
`element . . . so as to provide tactile feedback when manipulated by the
`human user.” Pet. 28–29. Petitioner concludes that one of ordinary skill in
`the art would have recognized that the hand-held device of Pallakoff’s input
`elements could be replaced with input elements that provide tactile feedback,
`like Armstrong’s input elements, as a simple substitution of one known
`element for another known element. Pet. 53–54; Ex. 1008 ¶¶ 68–69.6 Based
`on the record before us, Petitioner has shown by a preponderance of the
`evidence, and adopt that showing as our own, that the combination of
`Pallakoff and Armstrong describe “a palpable detent with at least one input
`element of the first input assembly or the second input assembly so as to
`provide tactile feedback when manipulated by the human use.”
`E. Obviousness Over Pallakoff and Hedberg
`Petitioner contends that claims 28, 29, 59, and 60 are unpatentable
`under 35 U.S.C. § 103 based on Pallakoff and Hedberg. Pet. 57. To support
`its contentions, Petitioner provides a detailed showing mapping limitations
`of claims 28, 29, 59, and 60 to structures described by Liebenow and
`Hedberg. Id. at 57–59. Petitioner also relies upon the Declaration of Dr.
`Welch (Ex. 1009) to support its position.
`Hedberg describes a hand-held display device that includes control
`buttons 3 on the display connected to control circuits and a gyroscope 6
`incorporated in the display device and connected to the control circuits.
`
`
`6 The Petition contains a typographical error in the cited portion. The
`Petitioner refers to Griffin instead of Pallakoff. We read that portion as if it
`refers to Pallakoff.
`
`19
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`Ex. 1008, Abstract. The display device is responsive to movements in the
`space for displaying an image in different magnification and/or in different
`parts. Id. Hedberg describes that an equilibrium of force accelerometer may
`be used in place of the gyroscope. Id. at 3:26–32.
`Each of claims 28 and 29 depends directly from claim 21. Each of
`claims 59 and 60 depends directly from independent claim 52.
`Analogous Art
`We first address whether Hedberg is analogous art. Patent Owner
`argues that Hedberg is not analogous art because it is neither in the same
`field of endeavor as the ’313 patent nor reasonably pertinent to the particular
`problem addressed by the ’313 inventors. PO Resp. 6–14. We have
`considered Patent Owner’s arguments, but do not find them persuasive.
`The test for determining whether a prior art reference constitutes
`analogous art to the claimed invention is: (1) whether the prior art is from
`the same field of endeavor, regardless of the problem addressed, or (2) if the
`reference is not within the field of the inventor’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which
`the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004).
`Patent Owner conflates the two prong analogous art test. In defining
`the field of invention of the ’313 patent, Patent Owner looks to the problems
`solved by the inventors and argues that the field of endeavor of the ’313
`patent is ergonomic and versatile data input on a hand-held device. PO
`Resp. 13–14. Such a showing is insufficient to establish the field of
`endeavor.
`
`20
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`
`
`
`In determining the field of endeavor, we look to the ’313 patent’s
`written description and claims, including the structure and function of the
`invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
`defining the field of invention, and in determining the relevance of Hedberg
`to the obviousness inquiry, here a broad approach should be taken. Pet.
`Reply 6–7. Indeed, the Supreme Court provided guidance in determining
`the applicability of a reference’s teachings in an obviousness inquiry. In
`KSR Int’l Co. v. Teleflex Inc., the Court explained that if a feature has been
`used to improve one device, and a person of ordinary skill in the art would
`have recognized that it would improve a similar device in that field or
`another, implementing that feature on the similar device is likely obvious.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
`Here, the appropriate scope of the field of endeavor is hand-held
`devices with one or more input elements. Ex. 1001, 1:12–29, claim 21.
`Patent Owner characterizes Hedberg as being in the field of viewing or
`displaying systems. PO Resp. 12–14. But in arriving at that description,
`Patent Owner too narrowly characterizes the Hedberg invention. Hedberg is
`within the field of endeavor because it describes hand-held electronic
`devices, with one or more input elements. Ex. 1008, Title, 6:34–7:7, 7:15–
`20, Fig. 5.
`Because we find that Hedberg is within the same field of endeavor as
`the claimed invention, we need not consider Patent Owner’s arguments
`regarding whether Hedberg is reasonably pertinent to the particular problem
`with which the inventors are involved. PO Resp. 14–15.
`
`21
`
`
`
`
`
`
`
`
`IPR2015-00476
`Patent 7,218,313 B2
`
`
`Claim 28, 29, 59, and 60
`Claims 28 and 59 recite that the hand-held device includes an
`accelerometer. Claims 29 and 60 recite that the hand-held device includes a
`gyroscope. Petitioner relies on Hedberg for its description of a gyroscope or
`accelerometer included in a hand-held device. Pet. 55–59. Petitioner
`concludes that one of ordinary skill in the art would have