UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00476
`Patent 7,218,313
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
`
`Case No. IPR2015-00476
`Patent 7,218,313
` ____________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2015-00476
`U.S. Patent No. 7,218,313
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`Table of Contents
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`I. INTRODUCTION ............................................................................................... 1
`II. ARGUMENT ...................................................................................................... 2
`A. THE INSTITUTED GROUNDS ARE PROPERLY SUPPORTED ................................ 2
`B. HEDBERG IS ANALOGOUS ART ...................................................................... 4
`C. ALL CHALLENGED CLAIMS ARE OBVIOUS .................................................... 8
`1. Pallakoff-Liebenow Renders Claims 21-24, 26, 52-56, and 58 Obvious
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`2. Pallakoff-Hedberg Renders Claims 28-29 and 59-60 Obvious ............ 20
`3. PO’s Assertions About Dr. Welch Are Unsupported ........................... 20
`D. SECONDARY CONSIDERATIONS FAIL TO SHOW NONOBVIOUSNESS .............. 22
`III. CONCLUSION ................................................................................................. 25
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`INTRODUCTION
`Most of the substantive positions advanced by PO in this proceeding are a
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`I.
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`criticism of how the teachings of a secondary reference would allegedly be
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`incorporated into the physical structure of a primary reference. PO resorts to vague
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`notions of design principles, reasoning that (in the view of PO and its experts) the
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`combinations would be physically subpar. Last week, the Federal Circuit rejected
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`exactly this type of reasoning, and reiterated the longstanding principle that “‘[t]he
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`test for obviousness is not whether the features of a secondary reference may be
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`bodily incorporated into the structure of the primary reference….’” MCM Portfolio
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`LLC v. Hewlett-Packard Co., --- F.3d ----, No. 2015-1091, 2015 WL 7755665, at *9-
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`10 (Fed. Cir. Dec. 2, 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981))
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`(citing In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012)). “Rather, the test is what
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`the combined teachings of the references would have suggested to those of ordinary
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`skill in the art.” Id. Even where physical incorporation of one technology into another
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`would have conflicted, there was no error in the determination that the claimed subject
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`matter would have been obvious. Id. For exactly the same reason, PO’s arguments are
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`fatally flawed, because PO focuses on combining one physical structure into another,
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`and overlooks what the combinations here would have suggested to a PHOSITA.
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`Another prominent and flawed theory in PO’s argument involves interpreting
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`prior art teachings. Without identifying any support for its approach, PO relies on a
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`form of hyper-rigid textualism. According to PO, a PHOSITA must consider only the
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`narrowest possible interpretation of language, blinding herself to other interpretations
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`or implications of prior art teachings. The Supreme Court and Federal Circuit have
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`instructed otherwise. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
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`(“A person of ordinary skill is also a person of ordinary creativity, not an
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`automaton.”); MCM Portfolio, 2015 WL 7755665, at *9-10 (no requirement “that the
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`claimed invention must be expressly suggested in any one or all of the references.”).
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`PO’s remaining positions involve reading limitations from the specification
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`into the claims, or excluding scope from the field of endeavor that the inventors of the
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`‘313 Patent explicitly included in the specification. These theories are rooted in
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`oversimplifications of the record and misapplications of the law. The Board should
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`consider the entire record, rather than the limited and oversimplified view that PO
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`promotes. When the correct legal principles for obviousness and claim interpretation
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`are applied, the Board should find that all Challenged Claims are unpatentable.
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`II. ARGUMENT
`A. The Instituted Grounds are Properly Supported
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`PO renews an argument presented in its Preliminary Response that the Petition
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`only maps Pallakoff to claims 21-22 and 52-54. See Paper 15, Response at 3-5.
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`According to PO, the Board’s decision to proceed on obviousness grounds instead of
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`anticipation created a fatal flaw in this proceeding, and PO would now have the Board
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`find that patentability of these claims must be confirmed regardless of their
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`substantive merit. See id. The Board should reject PO’s position for two reasons.
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`First, PO’s argument has already been rejected, and PO has not identified any
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`reason for the Board to reach a different outcome. PO still has not identified any
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`authority to support its conclusion that a rejection based on a prior art combination
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`must cite to underlying evidence from every reference that comprises the
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`combination. See id. There is no support for this rigid rule, and there is nothing to
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`prevent the Board from rejecting claims as obvious in view of a prior art combination
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`even where the relevant teachings for a particular claim come from a single reference.
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`Second, PO’s argument is legally flawed because, based on the record in this
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`proceeding, the evidence of anticipation also shows obviousness. A claim may be
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`rendered obvious if all of its limitations are disclosed in a single prior art reference
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`because “anticipation is the epitome of obviousness.” In re McDaniel, 293 F.3d 1379,
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`1385 (Fed. Cir. 2002) (affirming BPAI obviousness rejection); see also Invensense,
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`Inc. v. STMicroelectronics, Inc., IPR2013-00241, Paper 20 (PTAB Nov. 26, 2013).
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`Once it is established that a single prior art reference discloses each limitation of a
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`claim, there is no need to further apply the remaining references. See, e.g., ADC
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`Technology, Inc. v. Nintendo of North Am., Inc. et al., Reexam Nos. 95/001,234 and
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`90/009,521 (PTAB May 28, 2015); see also Vibrant Media, Inc. v. General Electric
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`Co., IPR2013-00170, Paper No. 56 at 37 and Paper No. 55 at 13 (PTAB Jun. 26, 2014
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`and Apr. 8, 2014) (Final Written Decision and Record of Oral Hearing).
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`On this record, the evidence is overwhelming that: (1) Pallakoff, either alone or
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`in combination with Liebenow, discloses all elements of claims 21-22 and 52-54; (2)
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`any combinations of Pallakoff and Liebenow would have been obvious to a
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`PHOSITA; and (3) there are no secondary considerations sufficient to overcome the
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`strong showing of obviousness. Thus, the Board should conclude, inter alia, that
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`claims 21-22 and 52-54 are obvious in view of Pallakoff and Liebenow.
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`B. Hedberg is Analogous Art
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`Without proposing a definition for the field of endeavor of the ‘313 Patent, and
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`without identifying any evidence to support a narrow understanding of the scope of
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`analogous art here, PO concludes that Hedberg is not analogous. See Paper 15,
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`Response at 6-14. PO’s conclusion should be rejected because it is rooted in a
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`misapplication of the law and a misunderstanding of the facts. Once the field of
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`endeavor is correctly defined, applying that definition to Hedberg shows that the
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`reference qualifies as properly within the field of endeavor of the ‘313 Patent.
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`Support for defining the field of endeavor come from a patent’s “written
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`description and claims, including the structure and function of an invention.” In re
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`Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Review of the written description and
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`claims of the ‘313 Patent makes clear that the field of endeavor should be defined to
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`include: “hand-held electronic devices with one or more input elements.” The claims
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`of the ‘313 Patent recite a “hand held electronic device,” or methods related to
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`hand-held electronic devices, with a “plurality of input elements” or “one or more
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`input elements.” See, e.g., Ex. 1001, ‘313 Patent at Claims 1, 15, 21, 30, 35, 37,
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`52. The written description broadly defines the field of the ‘313 Patent, stating that the
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`description “relates to human interface and input systems for electronic devices, such
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`as cell phones, personal digital assistants (“PDAs”), pocket personal computers, smart
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`phones, hand-held game devices, bar-code readers, remote controls, and other similar
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`input devices having a keypad or one or more input elements.” Id. at Col. 1:5-11.
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`Throughout the written description, the ‘313 Patent broadly describes its invention as
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`a “human interface and input system.” See, e.g., id. at Col. 4:25-37; 6:16-20; 7:50-65;
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`8:31-52. Elsewhere in the specification, the human interface and input system is
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`described as permitting “full functionality of a high performance game controller.”
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`See id. at Col. 10:27-29;12:1-19. The figures of the ‘313 Patent illustrate a hand-held
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`electronic device with one or more input elements. See, e.g., id. at Figs. 3a, 4a, 5a, 6a,
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`and 7a; see also, e.g., In re Shaneour, 600 Fed. App’x. 734, (Fed. Cir. 2015)
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`(affirming Board’s field of endeavor definition, where the claims recite a “multiple
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`fixture lighting system” that is “capable of providing multiple output levels” and
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`where the Board classified the field of “lighting control systems.”).
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`Like in the copending ‘692 and ‘245 proceedings, no authority cited by the PO
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`here supports a narrower definition for the ‘313 Patent’s field of endeavor. Clay
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`limited the field of endeavor to scope that was explicitly required by the claims and
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`the context of the specification, and Wang Labs. found no error where the field of
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`endeavor excluded scope that was explicitly distinguished by the patent. See In re
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`Clay, 966 F.2d 656, 657-58 (Fed. Cir. 1992); Wang Labs., Inc. v. Toshiba Corp., 993
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`F.2d 858, 863 (Fed. Cir. 1993). PO’s proposition here is something different. As
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`explained in more detail below, PO would exclude from the field of endeavor scope
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`that is explicitly included by the ‘313 Patent. None of the cases cited by PO supports
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`PO’s view. Rather, these cases support the conclusion that the field of endeavor
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`should be construed as broadly as the patentee has described and claimed it to be. See
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`id.; see also In re Singhal, 602 Fed. App’x 826, 830 (Fed. Cir. 2015) (citing Bigio,
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`381 F.3d at 1326). Nearly 20 years after Clay and Wang Labs. the Federal Circuit
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`rejected PO’s position that courts generally decline to construe analogous art broadly.
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`See Paper 19, Response at 12. To the contrary, the Supreme Court’s KSR decision
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`“directs us to construe the scope of analogous art broadly….’” Wyers v. Master Lock
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`Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 420 (2007)); see also Google Inc. v. Jongerius Panoramic Techs., LLC,
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`IPR2013-00191, Paper 70 at 25-27 (PTAB Aug. 12, 2014) (Final Written Decision)
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`(declining to adopt an overly narrow definition for the field of endeavor where the
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`specification included broader disclosure); Euro-Pro Operating LLC v. Acorne
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`Enterprises, LLC, IPR2014-00352, Paper 36 at 30-31 (PTAB Jul. 9, 2015) (defining
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`the field of endeavor for a “deep well cooker” broadly to include “home cooking
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`appliances” even though the reference addressed a different problem than the patent.).
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`Turning to Hedberg specifically, it is within the field of endeavor of the ‘313
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`Patent because Hedberg describes and illustrates a hand-held device with several input
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`elements. See Ex. 1008, Hedberg at p. 3:6-11; Fig. 5; see also, e.g., Ex. 1040,
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`MacLean Tr. at 120:8-121:22 (“[Hedberg] teaches the use of a handheld data entry
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`device for a different purpose.”).
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`Like in the ‘692 and ‘245 proceedings, PO argues that Hedberg is not within
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`the same field of endeavor based on an oversimplified view that Hedberg focuses on
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`viewing rather than data entry. But the ‘313 Patent itself defines the field of endeavor
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`to include the same type of devices disclosed in Hedberg. According to PO’s own
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`expert, a PHOSITA would have recognized that the device described in Hedberg
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`could be used for data entry. See Ex. 1040, 1st MacLean Tr. at 120:8-121:22; see also
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`Ex. 1008, Hedberg at p. 3:6-11, Fig. 5. And a PHOSITA would have also recognized
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`that the device described in the ‘313 Patent could include a display. See Ex. 1040, 1st
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`MacLean Tr. at 86:16-87:1, 88:7-21; see also, e.g., Ex.1001, ‘313 Patent at Figs. 3a,
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`4a, 5a, 6a, 7a, and Col. 8:43. Indeed, the examples from Hedberg identified by Dr.
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`MacLean as being repurposed to implement the Hedberg invention are explicitly
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`included in the written description of the ‘313 Patent. See Ex. 1040, 1st MacLean Tr.
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`at 120:8-121:22; compare Ex. 1008, Hedberg at p. 3:20-25 with Ex. 1001, ‘313
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`Patent at 1:5-11. Put simply, Hedberg and the ‘313 Patent involve the very same type
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`of devices, and PO’s argument should be rejected for that reason alone.
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`PO’s argument should also be rejected because PO and its expert conflate the
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`two separate analogous art inquiries, and assert that Hedberg must be outside the field
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`of endeavor because of the problems that it allegedly addresses. See Ex. 1040, 1st
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`MacLean Tr. at 119:14-23. This analysis is irrelevant to the field of endeavor inquiry.
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`See, e.g., Bigio, 381 F.3d at 1325. Setting aside PO’s flawed analysis, PO has not
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`identified any evidence or any reason why the field of endeavor here should be
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`defined narrowly, or why Hedberg should not be included. See Paper 15, Response at
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`11-14; see also Bigio, 381 F.3d at 1327.
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`In short, PO has not identified any support in the law or in the record for
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`narrowly defining the field of endeavor to exclude Hedberg. The Board should define
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`the field of endeavor to include hand-held electronic devices with one or more input
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`elements, and find that Hedberg is within that definition.
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`C. All Challenged Claims Are Obvious
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`PO’s arguments misapply three legal principles. First, PO focuses on alleged
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`problems encountered when incorporating features of a secondary reference into
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`the physical structure of a primary reference. But “‘[t]he test for obviousness is not
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`whether the features of a secondary reference may be bodily incorporated into the
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`structure of the primary reference ….’” MCM Portfolio, 2015 WL 7755665, at *9-10
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`(quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)); see also, e.g., Customplay,
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`LLC v. Clearplay, Inc., IPR2014-00339, Paper 27 at 21 (PTAB Jul. 21, 2015) (Final
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`Written Decision) (“[t]he obviousness inquiry, however, does not ask whether the
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`references could be physically combined, but whether the claimed inventions are
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`rendered obvious by the teachings of the prior art as a whole.”) (citing In re Etter, 756
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`F.3d 852, 859 (Fed. Cir. 1985) (en banc) (assertions that two references cannot be
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`combined “are basically irrelevant, the criterion being not whether the references
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`could be physically combined but whether the claimed inventions are rendered
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`obvious by the teachings of the prior art as a whole.”)).
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`Second, PO assumes that prior art teaches away from concepts that are not
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`explicitly included within a preferred embodiment, or that alleged inferiority of a
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`combined device bars obviousness. But “mere disclosure of alternative designs
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`does not teach away,” and the Federal Circuit’s “case law does not require that a
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`particular combination must be the preferred, or the most desirable, combination
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`described in the prior art in order to provide a motivation for the current
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`invention.”). In re Fulton, 391 F.3d 1195, 1200-01 (Fed. Cir. 2004); see also DePuy
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`Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
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`(“[a] reference does not teach away … if it merely expresses a general preference for
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`an alternative invention but does not criticize, discredit, or otherwise discourage
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`investigation into the invention claimed.”). Likewise, “just because better alternatives
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`exist in the prior art does not mean that an inferior combination is inapt for
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`obviousness purposes.” In re Mouttet, 686 F.3d at 1334 (affirming obviousness
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`where the record included allegations that a combination might be inferior but no
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`evidence that it would not work).
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`Third, PO’s interpretations of the claims improperly read in limitations from
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`the specification, and attempt to limit the claims to particular embodiments. But
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`this hindsight effort to limit the claims to something narrower than what the claims
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`require is prohibited. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
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`1993) (“limitations are not to be read into the claims from the specification.”); Hill-
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`Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372-73 (Fed. Cir. 2014) (quoting
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`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)) (“[e]ven
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`when the specification describes only a single embodiment, the clams of the patent
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`will not be read restrictively unless the patentee has demonstrated a clear intention to
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`limit the claim scope using ‘words or expressions of manifest exclusion or
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`restriction”); see also, e.g., EMC Corp. v. Clouding Corp., IPR2014-01217, Paper 37
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`at 11, 16 (PTAB Oct. 22, 2015) (Final Written Decision) (rejecting Patent Owner’s
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`“hindsight attempt to impermissibly read a particular embodiment appearing in the
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`written description into the claim, where the claim language would support a broader
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`embodiment,” and construing “any reasonable ambiguity in the claim against
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`importation of specific embodiments.”); Apple Inc. v. Arendi, IPR2014-00206, Paper
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`32 at 11 (PTAB Jun 9, 2015) (Final Written Decision) (declining to narrowly interpret
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`“application programs” where Patent Owner’s construction “improperly limits the
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`claim term to the embodiments and examples in the [reviewed] patent specification
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`and imports negative limitations unsupported by the intrinsic evidence.”).
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`1.
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`Pallakoff-Liebenow Renders Claims 21-24, 26, 52-56, and 58
`Obvious
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`It would have been obvious to a PHOSITA to combine Pallakoff and
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`Liebenow in the manner proposed in the Petition, and even PO’s expert agrees that
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`this combination would have yielded predictable results. See Ex. 1037, 2nd
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`MacLean Tr. at 151:3-18. As outlined in the Petition, this combination simply
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`recognizes that it would have been obvious to combine a touchpad and input
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`controller like the ones disclosed in Liebenow with the hand-held devices disclosed
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`in Pallakoff. This combination is simple, predictable, and intuitive, and would have
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`been obvious to a PHOSITA. PO’s challenges to this combination are based on
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`flawed premises and improperly focus on physically adding teachings from
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`Liebenow to the bodily structure of Pallakoff.
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`First, PO asserts that “Pallakoff and Liebenow represent fundamentally
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`different design approaches that do not work in combination.” See Paper 15,
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`Response at 18-19. As laid out in the Petition, Pallakoff itself discloses each and
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`every element of claims 21-22, 52-54, and 58. See, e.g., Paper 2, Petition at 23-37;
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`40-46. The teachings of Liebenow are most relevant to claims 23, 24, 26, 55, 56,
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`and 58. See id. Four of these six claims involve connecting a controller (23 and 55)
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`and coupling the controller to a host electronic device (26 and 58). See Ex. 1001,
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`‘313 Patent at Claims 23, 26, 55, 58. The only question for these claims is whether
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`it would have been obvious to include an input controller as described in Liebenow
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`with a device like the one described in Pallakoff. See Paper 2, Petition at 40-46.
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`The answer is yes. Even PO’s expert Mr. Lim agrees that the “most common way”
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`for an input assembly to communicate would be to have a signal that can be
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`received by an input controller. See Ex. 1038, 2nd Lim Tr. at 226:13-228:5.
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`The remaining two claims (24 and 56) also involve “a plurality of active
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`areas configurable by the controller to form a plurality of delineated active areas.”
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`See Ex. 1001, ‘313 Patent at Claims 24, 56. And so the question for these claims is
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`simply whether it would have been obvious to include the touch panels taught by
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`Liebenow on the back of a device like the one described in Pallakoff. See Paper 2,
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`Petition at 40-46. Again, the answer is yes. Even PO’s expert Dr. MacLean agrees
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`that adding a touchscreen provides the benefit of reconfigurability, and that the
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`proposed combination of Pallakoff and Liebenow would yield predictable results.
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`See Ex. 1037, 2nd MacLean Tr. at 93:12-94:1; 151:3-18. The proposed
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`combination is simple and straightforward, and there is nothing complex about it.
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`In an effort to complicate an otherwise simple analysis, PO provides a chart
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`allegedly showing various differences between certain teachings in Pallakoff and
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`Liebenow. See Paper 15, Response at 18-19. This chart is irrelevant because the
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`test for obviousness is not whether two prior art references contain identical
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`disclosures or teach exactly the same devices. Rather, the test is whether it would
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`have been obvious for a PHOSITA to recognize that the touchpad taught by
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`Liebenow could be used as one of the input elements in a device like the one
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`taught by Pallakoff. The fact that the keypad or screen is allegedly smaller in
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`Pallakoff’s device than those in certain embodiments of Liebenow, or that modifier
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`buttons are placed in different locations, entirely misses the forest for the trees.
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`Further, PO’s chart myopically focuses on alleged differences between the
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`references, but completely ignores the important similarities. See Paper 15,
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`Response at 18-19. Both Liebenow and Pallakoff specifically discuss digital
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`information appliances such as PDAs and other handheld devices. See, e.g., Ex.
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`1005, Liebenow at [0002] (discussing digital information appliances that include “pen
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`tablet type appliances such as PDAs, electronic books, etc.” and noting that for these
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`“it is desirable that [the] appliance’s housing have a compact, hand-held form-
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`factor.”) (emphasis added); Ex. 1004, Pallakoff at [0016] (“[m]any other types of
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`devices can use this same input mechanism, including PDAs, hand-held computers,
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`smart phones, web phones, pagers, instant-messaging devices, input devices
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`connected to field equipment, and so on.”) (emphasis added). Both the references
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`disclose placing inputs, such as buttons or keys, on different surfaces of handheld
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`devices. See, e.g., Ex. 1005, Liebenow at Fig. 1; Ex. 1004, Pallakoff at Fig. 1. Both of
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`the references disclose modifier buttons that can be used to change the function of
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`other keys, including keys on other surfaces. See, e.g., Ex. 1005, Liebenow at Fig. 1,
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`[0033]-[0034]; Ex. 1004, Pallakoff at Fig. 1, [0017]-[0019]. Both of the references
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`illustrate an embodiment that can be held in a single hand. See, e.g., Ex. 1005,
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`Liebenow at Figs. 10-11; Ex. 1004, Pallakoff at Fig. 1; see also Ex. 1037, 2nd
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`MacLean Tr. at 99:17-24 (PHOSITA reviewing Pallakoff could envision other
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`ways to use the teachings, even if they are not “a good idea”); 100:8-23 (no
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`explicit teaching away from putting modifier buttons on the back);103:1-8
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`(Pallakoff teaches back buttons that allow users to switch between functions);
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`125:6-25 (agreeing that Pallakoff does teach modifier buttons in places other than
`
`on the side). Given the extensive similarities, a combination of the touchpad of
`
`Liebenow with a handheld device like the one disclosed in Pallakoff would have
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`been an immediately obvious concept. See Ex. 1009, Welch Decl. at ¶¶ 48-55.
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`PO further argues that physically combining Liebenow with Pallakoff would
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`involve several “complicated” steps. See Paper 15, Response at 18-19. Once again,
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`this argument is entirely irrelevant. It does not matter whether a PHOSITA would
`
`find it easy to physically incorporate unclaimed features from Liebenow into the
`
`bodily structure described in Pallakoff, or whether this combination would satisfy
`
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`14
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`the sensibilities of PO’s design expert. See id. The Federal Circuit has explained
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`that this is not required for obviousness. See, e.g., MCM Portfolio, 2015 WL
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`7755665, at *9-10; Mouttet, 686 F.3d at 1334; Fulton, 391 F.3d at 1201. The only
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`question is whether it would have been obvious to a PHOSITA to realize that the
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`touchpad in Liebenow could be used as one of the input elements in a device like
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`the one described in Pallakoff. See id. PO’s own expert concedes that this simple
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`combination would yield predictable results. See Ex. 1037, MacLean Tr. at 151:3-
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`18; see also id. at 79:20-81:11 (claims in the ‘313 Patent could include devices that
`
`may not be as ergonomic or usable as Dr. MacLean would like to see) 93:12-94:1
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`(reconfigurability is a benefit of a touchscreen), 99:17-24 (PHOSITA reviewing
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`Pallakoff could envision other ways to use the teachings there, even if they are not
`
`a “good idea”). On this record, a finding of obviousness is the only right answer.
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`Second, PO asserts that Pallakoff “teaches away from modifier buttons on the
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`back.” See Paper 15, Response at 20-21. The entire premise of PO’s argument is
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`flawed because there is no requirement that prior art must explicitly show modifier
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`buttons on the back of a device in order for the claimed invention to be obvious to a
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`PHOSITA. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10 (no requirement
`
`“that the claimed invention must be expressly suggested in any one or all of the
`
`references.”). The claims in this proceeding do not require a button on a second
`
`surface that changes the function of a button on a first surface. Compare, e.g., Ex.
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`15
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`U.S. Patent No. 7,218,313
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`1001, ‘313 Patent at Claim 1 with id. at Claims 21-24, 26, 52-56, and 58. PO does not
`
`appear to dispute that the side and the back of Pallakoff would each qualify as a
`
`second surface. See Paper 15, Response at 20-21. And even PO seems to agree that
`
`at least some buttons in Pallakoff are on the side and back. See id. PO has not
`
`identified anything else required by these claims. See id.
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`In any event, PO’s assertions about Pallakoff are not accurate. There is no
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`dispute that Pallakoff repeatedly equates “modifier buttons” and “side buttons.”
`
`See id. Pallakoff also says: “[a]s with every other face-key or side-button described
`
`in this patent, the exact position and names of the face-keys or side-buttons can
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`vary.” Ex. 1004, Pallakoff at [0200]. Pallakoff explicitly states that one alternative
`
`place for buttons is “on the back of the device where the user could operate them
`
`using one or more fingers.” Id. (emphasis added). “On the back of the device”
`
`means exactly that, and PO cannot just pretend that these words do not appear.
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`Pallakoff further says: “[t]he modifier buttons can be placed in any appropriate
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`location.” Id. at [0323]. Even Dr. MacLean agrees that there is no explicit teaching
`
`away in Pallakoff from putting modifier buttons on the back, Pallakoff teaches
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`back buttons that allow switching between functions, and Pallakoff teaches
`
`modifier buttons in places other than on the side. See, e.g., Ex. 1037, 2nd MacLean
`
`Tr. at 99:17-24; 100:8-23; 103:1-8; 125:6-25.
`
`As discussed more below, PO’s criticism of Dr. Welch is baseless. The
`
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`16
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`record speaks for itself, and shows that Dr. Welch was unwilling to join PO in
`
`attempts to oversimplify or mischaracterize what documents actually say. See
`
`generally Ex. 2048, 2nd Welch Tr. at 22:24-33:14; see also infra at II.C.3. Just
`
`because PO’s counsel does not like Dr. Welch’s answers does not mean that he is
`
`being an obstructionist. See id.
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`Third, PO asserts that Liebenow does not support “use of a rear-surface
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`touch panel for modification of front-surface input elements or their functions.”
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`See Paper 15, Response at 21. This argument is rooted in the flawed premise that
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`Pallakoff would not teach a PHOSITA that modifier buttons could be included on
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`the back. See id.; see supra. And even PO’s expert agrees that reconfigurability
`
`would be a benefit, and that this combination would yield predictable results. See,
`
`e.g., Ex. 1037, 2nd MacLean Tr. at 93:12-94:1; 151:3-18. Further, the Challenged
`
`Claims in this proceeding do not require the functionality of modifier buttons, so
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`PO’s assertions here are not relevant to anything. Compare, e.g., Ex. 1001, ‘313
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`Patent at Claim 1 with id. at Claims 21-24, 26, 52-56, and 58.
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`Fourth, PO asserts that Liebenow “is not functionally compatible … with front-
`
`surface key function modification.” See Paper 15, Response at 21-22. PO repeats the
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`mistake of assuming the analysis should focus on working the physical teachings of
`
`Liebenow into the bodily structure of Pallakoff. See, e.g., MCM Portfolio, 2015 WL
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`7755665, at *9-10. This argument is also flawed because the Challenged Claims in
`
`
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`17
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`this proceeding do not require modifying front-surface key function. Compare, e.g.,
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`Ex. 1001, ‘313 Patent at Claim 1 with id. at Claims 21-24, 26, 52-56, and 58.
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`Fifth, PO asserts that Pallakoff requires “simultaneous activation of multiple
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`modifier buttons.” See Paper 15, Response at 22. Notably the Challenged Claims
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`do not require this. See, e.g., Ex. 1001, ‘313 Patent at Claims 21-24, 26, 52-56, and
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`58. PO is just once again implying that it would be difficult to include the physical
`
`teachings from Liebenow into the bodily structure of Pallakoff. See, e.g., MCM
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`Portfolio, 2015 WL 7755665, at *9-10. Multi-touch operation is not required to render
`
`the claimed invention obvious to a PHOSITA. See, e.g., Ex. 1001, ‘313 Patent at
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`Claims 21-24, 26, 52-56, and 58. Even if it were, PO’s assertion that Liebenow’s
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`touch panels could not support multi-touch is completely baseless and inaccurate.
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`Liebenow explicitly discloses touch panels that sense multiple simultaneous touches.
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`Ex. 1005 at [0022], [0037], [0067], Figs. 1, 7, 14 (step 606), 15, and 16; Ex. 1042 at
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`¶¶ 3-6. Additionally, it appears as though PO’s expert has conflated the ability of
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`hardware to detect multiple simultaneous touches with software’s ability to
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`interpret complex multi-finger gestures. Ex. 1042, Welch Supp. Decl. at ¶¶ 7-9. All
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`that would be needed to implement the back surface touch panel taught by
`
`Liebenow on the device of Pallakoff would be a surface capable of detecting
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`simultaneous multiple touches, which is explicitly taught by Liebenow. Id. at ¶ 10.
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`Multi-touch sensing surfaces on handheld devices were well known to skilled
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`18
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`artisans for many years prior to the ‘313 Patent. Id. at ¶¶ 11-17.
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`Sixth and seventh, PO criticizes the combination of Pallakoff and Liebenow as
`
`not workable, ergonomically inadequate, and tactilely deficient. See Paper 15,
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`Response at 22-23. Once again, PO is improperly assuming that an obviousness
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`analysis requires physically incorporating features from Liebenow into the
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`structure of Pallakoff. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10. PO
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`also improperly assumes that alleging that a physical combination would be inferior to
`
`other possible designs trumps obviousness. See In re Mouttet, 686 F.3d at 1334
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`(affirming obviousness where the record included allegations that a combination
`
`might be inferior but no evidence that it would not work). PO’s argument here also
`
`overlooks relevant teaching
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