UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
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`
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
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`
`
`Case No. IPR2015-00476
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`Patent No. 7,218,313
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`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00476
`
`Patent No. 7,218,313
`
`
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`
`
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
`
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`TABLE OF CONTENTS
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` Page
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`TABLE OF AUTHORITIES ............................................................................. iII
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`EXHIBIT LIST ................................................................................................... v
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`I.
`
`II.
`
`FACTUAL BACKGROUND .................................................................. 1
`
`THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS OF
`CLAIMS 21-22 and 52-54........................................................................ 3
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART ................................... 5
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`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`
`ANALOGOUS ART ................................................................................ 6
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`V. PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS
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`DO NOT RENDER THE ’313 PATENT’S CLAIMS OBVIOUS ........ 14
`
`
`A.
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`
`B.
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`PALLAKOFF AND LIEBENOW do not render claims
`21-24, 26, 52-56, and 58 obvious................................................. 17
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`
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`PALLAKOFF AND HEDBERG do not render claims 28,
`29, 59, and 60 obvious ................................................................. 25
`
`
`VI. SECONDARY CONSIDERATIONS SHOW THAT THE ’313
`
`PATENT’S CLAIMS ARE NOT OBVIOUS ........................................ 26
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`VII. CONCLUSION ...................................................................................... 30
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`
`
`ii
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`TABLE OF AUTHORITIES
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` Page
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`Cases
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`Advanced Display Sys., Inc. v. Kent State Univ.
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`212 F.3d 1272 (Fed. Cir. 2000) .................................................... 29, 30
`
`Apple Inc. v. ITC
`
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................... 26
`
`Boehringer Ingelheim Vetmedica, Inc. v. Schering–Plough Corp.
`
`320 F.3d 1339 (Fed. Cir. 2003) .......................................................... 29
`
`Circuit Check Inc. v. QXQ Inc.
`
`No. 2015-1155, 2015 WL 4603797 (Fed. Cir. July 28, 2015) ......... 7, 9
`
`Cohesive Techs., Inc. v. Waters Corp.
`
`543 F.3d 1351 (Fed. Cir. 2008) .............................................................4
`
`Graham v. John Deere Co.
`
`383 U.S. 1 (1966) ..................................................................................6
`
`In re Bigio
`
`381 F.3d 1320 (Fed. Cir. 2004) ...................................................... 8, 12
`
`In re Clay
`
`966 F.2d 656 (Fed. Cir. 1992) .................................................... 8, 9, 14
`
`In re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig.
`
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................... 29
`
`In re Klein
`
`647 F.3d 1343 (Fed. Cir. 2011) ................................................ 7, 11, 14
`
`KSR Int’l Co. v. Teleflex Inc.
`
`550 U.S. 398 (U.S. 2007) ......................................................... 6, 15, 16
`
`K-Tec, Inc. v. Vita-Mix Corp.
`
`696 F.3d 1364 (Fed. Cir. 2012) .................................................... 10, 14
`
`
`
`iii
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`
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`Leapfrog Enter. Inc. v. Fisher-Price Inc.
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`485 F.3d 1157 (Fed. Cir. 2007) .......................................................... 16
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`Leo Pharm. Prods., Ltd. v. Rea
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`726 F.3d 1346 (Fed. Cir. 2013) .................................................... 26, 28
`
`Mintz v. Dietz & Watson, Inc.
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`679 F.3d 1372 (Fed. Cir. 2012) .......................................................... 26
`
`MEHL/Biophile Int'l Corp. v. Milgraum
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`192 F.3d 1362 (Fed. Cir. 1999) .............................................................4
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`Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.
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`520 F.3d 1358 (Fed. Cir. 2008) .......................................................... 26
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`Ruiz v. A.B. Chance Co.
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`357 F.3d 1270 (Fed. Cir. 2004) .......................................................... 15
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`State Contracting & Eng’g Corp. v. Condotte America, Inc.
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`346 F.3d 1057 (Fed. Cir. 2004) .............................................................8
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`Transocean Offshore Deepwater, Inc. v. Maersk Drilling USA, Inc.
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`699 F.3d 1340 (Fed. Cir. 2012) .......................................................... 26
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`Wang Labs., Inc. v. Toshiba Corp.
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`993 F.2d 858 (Fed. Cir. 1993) .................................................. 8, 10, 12
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`Other References
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`Janice M. Mueller, Patent Law (4th ed. 2013) ................................................7
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`
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`iv
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`EXHIBIT LIST
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`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`Exhibit 1001 U.S. Patent 7,218,313
`
`Exhibit 1002
`
`File History of U.S. Patent No. 7,218,313
`
`Exhibit 1004 U.S. Patent Publication No. 2002/0163504 to Pallakoff
`
`Exhibit 1005 U.S. Patent Application Publication No. 2002/0118175 to
`Liebenow et al.
`
`Exhibit 1007 U.S. Patent No. 6,469,691 to Armstrong
`
`Exhibit 1008
`
`International Publication No 1999/18495 to Hedberg
`
`Exhibit 1009
`
`Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 1014 Michael McCandless, The PalmPilot and the handheld
`revolution, IEEE Expert pp. 6-8 (November/December 1997)
`
`
`
`
`
`EXHIBITS FILED BY APLIX IP HOLDINGS CORPORATION
`
`Exhibit 2001 Declaration in support of motion for pro hac vice admission of
`Sherman W. Kahn
`
`Exhibit 2002 Declaration in support of motion for pro hac vice admission of
`Sybil L. Dunlop
`
`Exhibit 2003 Declaration in support of motion for pro hac vice admission of
`Robert J. Gilbertson
`
`Exhibit 2004 Declaration in support of motion for pro hac vice admission of
`X. Kevin Zhao
`
`Exhibit 2005 Amended Complaint in Aplix IP Holdings Corporation v. Sony
`Computer Entertainment Inc. and Sony Computer
`Entertainment America LLC, Case No. 1:14-cv-12745
`
`
`
`v
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`
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`Exhibit 2006
`
`Exhibit number not used
`
`Exhibit 2007
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`Expert Declaration of Dr. Karon MacLean
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`Exhibit 2008
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`Curriculum Vitae of Dr. Karon MacLean
`
`Exhibit 2009
`
`Expert Declaration of Peng Lim
`
`Exhibit 2010
`
`Professional Summary of Peng Lim
`
`Exhibit 2011 Allen, J. P., Handheld Computing Predictions: What Went
`Wrong?, Proceedings of the 1st International Symposium on
`Handheld and Ubiquitous Computing, Karlsruhe, Germany:
`Springer-Verlag, 1999, pp. 117-123
`
`Exhibit 2012 Wikipedia entry on “List of Blackberry products” at
`https://en.wikipedia.org/wiki/List_of_BlackBerry_products,
`accessed 8/3/2015
`
`Exhibit 2013 Keyboard image at http://www.computerhistory.org/
`collections/catalog/102642008, accessed 8/2/2015
`
`Exhibit 2014
`
`Patent US 5,305,017
`
`Exhibit 2015 Wikipedia entry on “Touchpad” at
`https://en.wikipedia.org/wiki/Touchpad, accessed 8/1/2015
`
`Exhibit 2016
`
`Buxton, W., Multi-Touch Systems that I Have Known and
`Loved, at www.billbuxton.com/multitouchOverview.html,
`accessed 8/2/2015
`
`Exhibit 2017 Walker, G., A Review of Technologies for Sensing Contact
`Location on the Surface of a Display, Journal of the Society
`for Information Display, vol. 20:8, pp. 413-440, 2012
`
`Exhibit 2018 Wikipedia entry on “IBM Simon” at
`https://en.wikipedia.org/wiki/ IBM_Simon, accessed 8/2/2015
`
`Exhibit 2019 Wikipedia entry on “Casio PB 1000” at
`https://en.wikipedia.org/wiki/Casio_PB-1000, accessed
`8/2/2015
`
`
`
`vi
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`
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`
`
`Exhibit 2020
`
`Blickenstorfer, C., NeoNode N1, Can a unique interface put
`this compelling smart phone on the map? At
`http://pencomputing.com/WinCE/neonode-n1-review.html,
`accessed 8/2/2015
`
`Exhibit 2021 Wikipedia entry on “List of iPod models” at
`https://en.wikipedia.org/wiki/List_of_iPod_models, accessed
`8/2/2015
`
`Exhibit 2022
`
`Barker, M., Microsoft Teams with Interlink Electronics for
`Xbox Controllers, at www.Gamasutra.com, accessed 8/2/2015
`
`Exhibit 2023 Hinckley, K., Sensing Techniques for Mobile Interaction,
`Proceedings of the 13th Annual ACM Symposium on User
`Interface Software and Technology, San Diego, California,
`USA: ACM, 2000, pp. 91-100
`
`Exhibit 2025
`
`Exhibit 2026
`
`Exhibit 2024 Microchip AR1000 Series Resistive Touch Screen Controller
`Data Sheet (2009-2012) at
`http://ww1.microchip.com/downloads/en/DeviceDoc/41393B.
`Elo Touch Solutions: Tyco Electronics Introduces the
`Industry's First Multi-Touch Gestures Technology for Analog
`Resistive Touchscreens, December 4, 2008
`True Multi Touch on Analog Resistive at www.haptyc.com,
`accessed 8/26/15
`Exhibit 2027 Wikipedia entry on "Cirque Corporation" at
`https://en.wikipedia.org/wiki/Cirque_Corporation, accessed
`8/26/15
`Exhibit 2028 Wikipedia entry on "iPod Classic Second Generation" at
`https://en.wikipedia.org/wiki/IPod_Classic#2nd_generation,
`accessed 8/26/15
`Exhibit 2029 Wikipedia entry on "iPod click wheel" at
`https://en.wikipedia.org/wiki/IPod_click_wheel, accessed
`8/26/15
`PCMag.com review: Fingerworks iGesture Pad, February 3,
`2004
`
`Exhibit 2030
`
`Exhibit 2031 Wikipedia entry on “Camera phone” at
`https://en.wikipedia.org/wiki/Camera_phone, accessed
`8/3/2015
`
`
`
`vii
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`
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`
`
`Exhibit 2032
`
`Partridge, K., Tilttype: Accelerometer-Supported Text Entry
`for Very Small Devices,” in Proceedings of the 15th annual
`ACM symposium on User interface software and technology.
`Paris, France: ACM, 2002, pp. 201-204
`
`Exhibit 2033 Wigdor, D., Tilttext: Using Tilt for Text Input to Mobile
`Phones” in Proceedings of the 16th annual ACM symposium
`on User interface software and technology. Vancouver,
`Canada: ACM, 2003, pp. 81-90
`
`Exhibit 2034
`
`Buxton, W., Hill, R., and Rowley, P., Issues and techniques in
`touch-sensitive tablet input, SIGGRAPH Computer Graphics,
`vol. 19:3, pp. 215-224, July 1985.
`
`Exhibit 2035 Wikipedia entry on “Touchscreen” at
`https://en.wikipedia.org/wiki/Touchscreen, accessed 8/1/2015
`
`Exhibit 2036
`
`Excerpt from The History of Tablet Computers – a Timeline,
`http://www.zdnet.com/article/the-history-of-tablet-computers-
`a-timeline, accessed 8/4/15
`
`Exhibit 2037
`
`Fujitsu Sylistic 2300, Pen Computing Magazine, April 1999
`
`Exhibit 2038
`
`A Brief History of Handheld Video Games, Endgadget.com,
`March 3, 2006
`
`Exhibit 2039
`
`Excerpt from 25 Worst Gadgets Flops of All Time, Laptop
`magazine, March 23, 2013
`
`Exhibit 2040 History of the Touch-Screen,
`http://compsci02.snc.edu/cs225/2010/touchScreen/history--
`evolution.html, accessed 8/1/2015
`
`Exhibit 2041
`
`Touch Controls (/touch-controls/3015-256/), Games that are
`controlled partially or entirely with a touch screen,
`www.giantbomb.com, accessed 8/1/2015
`
`Exhibit 2042
`
`Inspiring Quotes and Words of Wisdom from Steve Jobs by
`Parin, http://www.thegreatnessmind.com/
`2011/09/29/inspiring-quotes-and-words-of-wisdom-from-
`steve-jobs, accessed 8/4/2015
`
`
`
`viii
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`
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`
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`Exhibit 2043 N-Gage Sales Goal at http://www.ign.com/articles/2003/
`10/09/n-gage-sales-goal, accessed 8/5/2015
`
`Exhibit 2044
`
`PDA sales soar in 2000,
`http://cnnfn.cnn.com/2001/01/26/technology/handheld,
`January 26, 2001
`
`Exhibit 2045
`
`Excerpt from Blueprint Reading Material, Chapter 2: Three-
`View, Plan View and Elevation View Drawings,
`http://classes.engineering.wustl.edu/2009/spring/jme4900/Blue
`print%20Reading%20Material.pdf, from Washington
`University in St. Louis, accessed 8/27/2015
`
`Exhibit 2046 Wikipedia entry on "Chipset" at
`https://en.wikipedia.org/wiki/Chipset, accessed 8/27/2015
`
`Exhibit 2047
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00229 and IPR2015-00230, July 28-29, 2015
`
`Exhibit 2048
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00396, IPR2015-00476, and IPR2015-00533, August
`19, 2015
`
`Exhibit 2049
`
`Certified English Translation of Japanese Unexamined Patent
`No. 2002-77357 to Ishihara et al. by Patent Translations, Inc.
`
`ix
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`I.
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`FACTUAL BACKGROUND
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`As detailed in the district-court complaint (ex. 2005), beginning in 2003,
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`a group of Massachusetts inventors led by Dr. Beth Marcus developed
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`interactive-design technologies for improving control of hand-held devices and
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`host devices (¶ 2). Among other advancements, Dr. Marcus and her team
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`deployed configurable input systems and elements on multiple surfaces of a
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`hand-held device, implementing unique combinations of and applications for
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`particular types of input elements (id.). The team also designed hand-held
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`accessory devices that would enable users to remotely operate (and play video
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`games on) cell phones and tablet devices (id.).
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`Marcus and her team applied for patents on their inventions, and, after a
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`thorough review, the United States Patent & Trademark Office (“USPTO”)
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`awarded them several patents, including, on May 15, 2007, the ’313 patent,
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`titled “Human Interface System.” The ’313 patent claims a hand-held
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`electronic device as well as methods for providing an interface for use with
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`such a device. The claims (e.g., claims 1, 15, 21, 30, 35, 37, and 52) recite
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`arrangements that substantially optimize a biomechanical effect of a human
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`user’s hand. In some of the claimed embodiments, input elements are
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`configured to be selectively mapped to one or more input functions of a selected
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`one of a plurality of applications (claim 1). Some of the claimed embodiments
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`
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`1
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`
`
`
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`can be configured so that manipulation of a second-surface input element
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`causes an input function mapped to a first-surface input element to change
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`(claim 1). In some of the claimed embodiments, a first-surface input element is
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`configured to be mapped to more than one function of a selected application
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`(claim 21).
`
`The USPTO considered 144 references during examination of the
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`application for the ’313 patent. In its Office Action dated October 5, 2006, the
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`USPTO discussed the Liebenow reference in detail and found that neither it nor
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`the other considered references, alone or in combination, disclosed “wherein at
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`least one of the input elements of the second input assembly is a selectively
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`configurable sensing surface so as to provide a plurality of delineated active
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`areas, further wherein one or more of the delineated active areas is mapped to
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`one or more functions associated with the selected application.” (Ex. 1002 at
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`116.) In the Notice of Allowability dated March 1, 2007, the USPTO found
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`that several other claimed limitations were also missing from the prior art,
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`including, inter alia, that “at least one of the input elements of the first input
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`assembly is further configured to map to more than one input function
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`associated with a selected one of the plurality of applications.” (Ex. 1002 at
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`44.)
`
`
`
`2
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`
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`
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`The ’313 patent was assigned to Dr. Marcus’ company, Zeemote, Inc., a
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`Boston-area start-up, which sought to commercialize the technology. (Ex. 2005
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`at ¶ 2.) Aplix, a Japanese operating company, later acquired Zeemote’s assets,
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`including the ’313 patent. (Id.)
`
`
`II. THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS OF
`CLAIMS 21-22 AND 52-54.
`
`
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`The petition (pp. 12-36) based its lead arguments on § 102 grounds,
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`arguing, among other things, that Pallakoff anticipates the ’313 patent’s claims
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`21-22 and 52-54. Petitioner offered no argument whatsoever about how any
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`combination of Pallakoff and another reference renders claims 21-22 and 52-54
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`obvious. The petition’s sections on a Pallakoff-Liebenow combination, a
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`Pallakoff-Armstrong combination, and a Pallakoff-Hedberg combination
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`include claim charts that contain no evidence about how those proposed
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`combinations render claims 21-22 and 52-54 obvious. Petitioner’s only
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`obviousness argument as to these claims is to incorporate by reference its
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`contentions about anticipation,1 a ground on which the Board opted not to
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`proceed.
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`
`1
`Petition (Paper No. 2) at 40 (first full paragraph, first sentence), 53
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`(last paragraph, first sentence), and 57 (first sentence).
`
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`3
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`
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`The tests for obviousness and anticipation are different. “To anticipate a
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`claim, a prior art reference must disclose every limitation of the claimed
`
`invention, either explicitly or inherently.” MEHL/Biophile Int'l Corp. v.
`
`Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (citations omitted). “If it is
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`necessary to reach beyond the boundaries of a single reference to provide
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`missing disclosure of the claimed invention, the proper ground is not § 102
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`anticipation, but § 103 obviousness.” Cohesive Techs., Inc. v. Waters Corp.,
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`543 F.3d 1351, 1364 (Fed. Cir. 2008) (citations omitted).
`
`Here, the Board did “reach beyond the boundaries” of Pallakoff,
`
`eschewing a review of the anticipation ground and instead opting to evaluate
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`obviousness. The Board’s obviousness review involves three possible
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`combinations of Pallakoff and other references. (Patent Owner Aplix addresses
`
`the proposed combinations in section VII below.) As to Pallakoff and
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`Liebenow, for example, the Board’s institution decision says that “[w]e have
`
`reviewed the proposed ground of obviousness over Pallakoff and Liebenow . . .
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`and we are persuaded, at this juncture of the proceeding, that [SCEA] has
`
`established a reasonable likelihood that Petitioner would prevail in its challenge
`
`. . . on this ground” and “[we] decline to institute review based on any of the
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`other asserted grounds advanced by Petitioner that are not identified below as
`
`
`
`4
`
`
`
`
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`being part of the trial.” (Institution decision, Paper No. 11, at 14 (emphasis
`
`added) and 19.)
`
`Having specifically instituted review of these claims on the “proposed
`
`ground of obviousness,” and having specifically opted not to review the ground
`
`of anticipation by Pallakoff alone as Petitioner had urged, the Board should not
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`now rely on anticipation arguments to evaluate obviousness. Instead, the Board
`
`should observe that no evidence has been presented about how a proposed
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`Pallakoff-Liebenow combination renders obvious claims 21-22 and 52-54—and
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`should find that therefore those claims are not invalid.
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`
`Patent Owner Aplix agrees with Petitioner’s proposed description of a
`
`person of ordinary skill in the art, with two tweaks. Such a person would not
`
`need to have the particular types of undergraduate degrees listed by Petitioner’s
`
`expert but could instead have a degree in mechanical, biomechanical, or
`
`industrial engineering. And such a person who also has a master’s degree could
`
`have only one year of experience, rather than two to four years as originally
`
`suggested by Petitioner. Petitioner’s expert agreed on cross-examination that it
`
`could be just one year.2
`
`
`2
`Ex. 2047 (Welch 7/28-29/15 depo) at 62:6-23.
`
`
`
`5
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`
`
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`
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`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`ANALOGOUS ART.
`
`
`
`Hedberg (WO 1999/18495, ex. 1008), one of the alleged prior-art
`
`references Petitioner has submitted, does not satisfy the threshold test of being
`
`analogous to the ’313 patent and therefore is not prior art that can be considered
`
`as part of an obviousness analysis.
`
`
`
`A claim is obvious if the differences between the claimed subject matter
`
`and the prior art are such that the claimed subject matter would have been
`
`obvious at the time the invention was made to a person having ordinary skill in
`
`the art. Graham v. John Deere Co., 383 U.S. 1, 14 (1966). Determining
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`obviousness requires analysis of (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the claimed invention, (3) the level of
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`ordinary skill in the field of the invention, and (4) any relevant objective
`
`considerations of nonobviousness. Id. at 17. This framework helps “guard
`
`against slipping into use of hindsight and [ ] resist the temptation to read into
`
`the prior art the teachings of the invention in issue.” Id. at 36 (internal citation
`
`omitted). While an analysis of any teaching, suggestion, or motivation to
`
`combine elements from different prior-art references is useful, the overall
`
`inquiry must be flexible. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
`
`
`
`6
`
`
`
`
`
`(U.S. 2007). “A factfinder should be aware, of course, of the distortion caused
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`by hindsight bias. . . .” Id. at 421.
`
`
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`Evaluating an obviousness contention requires a threshold determination
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`on whether the proffered prior-art references are “analogous” to the ’313
`
`patent’s claimed invention. “A reference qualifies as prior art for an
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`obviousness determination under § 103 only when it is analogous to the claimed
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`invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
`
`added). “To go beyond analogous art in a § 103 analysis runs the risk of
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`hindsight reconstruction of a claimed invention by merely finding each of its
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`constituent elements somewhere in the prior art, without concern for whether a
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`[person having ordinary skill in the art] would have reasonably considered that
`
`art.” Janice M. Mueller, Patent Law (4th ed. 2013), at 294.
`
`
`
`Prior art qualifies as “analogous [1] if it is from the same field of
`
`endeavor or [2] if it is reasonably pertinent to the particular problem the
`
`inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., No. 2015-1155,
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`2015 WL 4903794, at *3 (Fed. Cir. July 28, 2015).
`
`
`
`
`
`
`
`▪
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`Field of endeavor
`
`The appropriate field of endeavor is determined by “reference to
`
`explanations of the invention's subject matter in the patent application,
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`including the embodiments, function, and structure of the claimed invention.”
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`7
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`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Similarity in the structure
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`and function of the invention and the prior art is indicative that the prior art is
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`within the inventor’s field of endeavor.” State Contracting & Eng’g Corp. v.
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`Condotte America, Inc., 346 F.3d 1057, 1069 (Fed. Cir. 2004).
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`Courts have declined to construe “field of endeavor” broadly, particularly
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`in the electronics context. In Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858
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`(Fed. Cir. 1993), for example, the inventor was trying to create compact,
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`modular memories for personal computers. Id. at 864. Reviewing a prior-art
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`reference, the Federal Circuit emphasized that the art “[was] not in the same
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`field of endeavor as the claimed subject matter merely because it relate[d] to
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`memories.” Id. Because the reference concerned SRAM or ROM memory,
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`rather than DRAM memory as used in the patent-at-issue, the Federal Circuit
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`concluded that a reasonable jury could have found that the prior art was outside
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`the claimed invention’s field of endeavor. Id.
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`Similarly, in an extensively cited 1992 decision, the Federal Circuit
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`specifically noted that inventions that are part of a common endeavor may
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`nonetheless not be in the same “field of endeavor” for obviousness purposes. In
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`re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). There, an invention relating to the
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`extraction of crude petroleum was held not to be in the same field of endeavor
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`as an invention relating to the storage of refined petroleum, even though both
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`8
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`“relate[d] to the petroleum industry” and both arguably sought to “maximize[e]
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`withdrawal of petroleum stored in petroleum reservoirs.” Id.
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`▪
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`Reasonably pertinent
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`A reference is “reasonably pertinent to the particular problem the
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`inventor is trying to solve … only [ ] when it ‘logically would have
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`commended itself to an inventor's attention in considering his problem.’”
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`Circuit Check at *3 (citing Clay, 966 F.2d at 659 (emphasis added)). The
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`Federal Circuit considers whether the prior art serves the same purpose, or
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`attempts to solve the same problem, as the claimed invention:
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`[T]he purposes of both the invention and the prior art
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`are important in determining whether the reference is
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`reasonably pertinent to the problem the invention
`
`attempts to solve. If a reference disclosure has the
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`same purpose as the claimed invention, the reference
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`relates to the same problem, and that fact supports use
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`of that reference in an obviousness rejection. An
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`inventor may well have been motivated to consider
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`the reference when making his invention. If it is
`
`directed to a different purpose, the inventor would
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`accordingly have had less motivation or occasion to
`
`consider it.
`
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`Clay, 966 F.2d at 659 (emphasis added). Applying these principles, Clay held
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`that the problem that the prior-art reference was trying to solve—extracting oil
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`9
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`
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`from rock—was not reasonably pertinent to the inventor’s problem, which was
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`storing oil and preventing its loss. Id.
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`
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`What art is “reasonably pertinent” depends heavily on facts. In Wang,
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`for example, the Federal Circuit sustained a non-obviousness finding based in
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`significant part on expert testimony that a person of skill in the art trying to
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`solve the problem of compact, modular memories for personal computers would
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`not have considered art “developed for use in a controller of large industrial
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`machinery and [that] could not be used in a personal computer.” 993 F.2d at
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`864. The differences in the problems to be solved were dispositive. Because
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`Wang was trying to solve a compact, modular memory problem that the cited
`
`prior art (dealing with large industrial machinery) did not need to address, the
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`Federal Circuit found sufficient evidence to support a finding that the art was
`
`not reasonably pertinent. See id. at 865.
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`Likewise, in K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed.
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`Cir. 2012), the patent claimed a five-walled container for a blender. Its shape
`
`created a vortex, blending liquid away from the central axis and toward a
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`truncated wall. This in turn created a flow pattern that reduced the container’s
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`cavitation, increasing the blending’s speed and efficiency. As part of its
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`obviousness case, the accused infringer cited container prior art from non-
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`blender applications such as food mixers. But the Federal Circuit affirmed the
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`10
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`
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`district court’s finding that the accused infringer had not offered a sufficient
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`explanation as to why the inventor would have “consulted non-blending
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`containers or food mixers in order to solve the problems he encountered in
`
`designing a new blending container.” Id. at 1375.
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`Finally, in Klein, the Federal Circuit held that the Board’s “conclusory
`
`finding that [several pieces of prior art] are analogous” was not supported by
`
`substantial evidence. 647 F.3d at 1350. There, a patent owner challenged the
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`Board’s obviousness determination regarding his invention—a mixing device to
`
`prepare nectar for different types of birds and butterflies. Id. at 1345. The
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`Federal Circuit noted that the prior-art references cited by the Board were “each
`
`directed to a container designed to separate its contents, as opposed to one
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`designed to facilitate the mixing of those contents.” Id. at 1350 (emphasis in
`
`original). Thus, reasoned the Federal Circuit, “[a]n inventor considering the
`
`problem of making a nectar feeder with a movable divider to prepare different
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`ratios of sugar and water for different animals, would not have been motivated
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`to consider any of these references when making his invention.” Id. (internal
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`citations omitted). The Federal Circuit expressly disapproved of the Board’s
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`attempt to “redefine the problem” in order to force an analogy. Id. at 1351 n.1.
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`Applying these principles to the present petition, the Board should
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`conclude that Hedberg is not analogous art. Hedberg is neither in the same field
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`
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`11
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`
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`of endeavor as the ’313 patent nor reasonably pertinent to the particular
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`problem the ’313 inventors were trying to solve. First, as explained above, the
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`’313 patent addresses problems related to human interfaces and input systems
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`for hand-held electronic devices (ex. 1001, 1:5-7)—specifically, to enable
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`efficient user input of information to a hand-held device based on the
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`ergonomics of the hand. (Ex. 2007, MacLean ¶ 115.) By contrast, Hedberg
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`addresses only viewing rather than information entry. (Ex. 2007, MacLean
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`¶ 116.) In fact, Hedberg limits the scope of its field to a very particular scenario
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`for displaying on an electronic device “a complete or a determined part of a
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`screen image” (ex. 1008, 1:11-12); (Ex. 2007, MacLean ¶ 116.). Again, the
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`Board should resist any temptation to broadly construe the field of endeavor to
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`include anything related to hand-held electronic devices. See Wang, 993 F.2d at
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`864 (prior art “[was] not within the relevant field of endeavor as the claimed
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`subject matter merely because it relates to memory”).
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`A review of the inventions’ “embodiments, function, and structure”
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`confirms that Hedberg and the ’313 patent do not share the same field of
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`endeavor. See Bigio, 381 F.3d at 1325. Hedberg employs user input only as a
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`means to control the view on the hand-held graphical display rather than for
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`information input in its own right. (Ex. 2007, MacLean ¶ 116.) In all of
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`Hedberg’s embodiments, for example, the hand-held device is translated in
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`12
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`space (moved closer-further, and left-right; but not rotated) in order to control
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`the local (hand-held’s) view location and zoom level for a subset of a different
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`view such as that shown on a larger nearby screen. (Id.) And in terms of
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`function, Hedberg suggests a very specific application of its invention to
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`“satisfy the needs of an engineer working with CAD-applications as well as for
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`the display of text and graphic information.” (Ex. 1008, 3:11-13.)
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`In contrast to Hedberg, the ’313 patent does not describe its invention as
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`a display or viewing system. (Ex. 2007, MacLean ¶ 115.) The ’313 patent
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`further states the intention of supporting applications that include text input
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`“(e.g., e-mail, word processing, or text messaging)” or game applications
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`(ex. 1001, 5:30-59). To the extent that the ’313 patent speaks of or implies a
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`graphical display, which the ’313 says embodiments “may also include,” it is in
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`support of information input by the user or to display that information
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`(ex. 1001, 7:31-35). A display and its use is not at all a focus of the ’313
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`patent, however, and the claims do not recite a display. (Ex. 2007, MacLean
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`¶ 115.)
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`The function and structure of the ’313 patent’s invention is ergonomic
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`and versatile data input on a hand-held device. By contrast, the function and
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`structure of Hedberg’s invention is controlling a determined view on a hand-
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`held device’s display of another screen image by moving the hand-held device.
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`13
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`
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`These functions and structures are very different and represent different
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`designer challenges and solutions. Therefore, Hedberg is not in the same field
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`of endeavor as the ’313 patent. (Ex. 2007, MacLean ¶ 117.) See Clay, 966
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`F.2d at 659.
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`Hedberg is also not reasonably pertinent to the ’313 patent. As explained
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`above, the ’313 patent’s inventors were focused on improving human interface
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`with hand-held devices and, specifically, trying to solve the problem of how to
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`support ergonomic user input on a hand-held device. In considering this
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`problem, they would have no reason or occasion to look for guidance from
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`Hedberg, which as explained above, addresses a completely different
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`problem—namely, how to view parts of other screen images. (Ex. 2007,
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`MacLean ¶ 116.) K-Tech, 696 F.3d at 1375; Klein, 647 F.3d at 1350-51. Thus
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`Hedberg is also not reasonably pertinent, and thus not analogous.
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`V.
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`
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`PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS DO
`NOT RENDER THE ’313 PATENT’S CLAIMS OBVIOUS.
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`The Board has instituted review based on three specific proposed
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`combinations of references:
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` Pallakoff-Liebenow (claims 21-24, 26, 25-56, and 58)
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` Pallakoff-Armstrong (claim 27) 3
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`3
`Patent Owner does not contest claim 27.
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`14
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` Pallakoff-Hedberg (claims 28, 29, 59, and 60)
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`As demonstrated above, Hedberg is not analogous and thus is not prior art for
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`purposes of a § 103 ana
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