`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`____________
`
`Case No. IPR2015-00476
`Patent No. 7,218,313
` ____________
`
`
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,218,313
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS  ....................................................................................................................................  1  
`I.  
`INTRODUCTION  ........................................................................................................................................  1  
`II.   SUMMARY OF THE ‘313 PATENT  ........................................................................................................  1  
`A.   DESCRIPTION OF THE ALLEGED INVENTION OF THE ‘313 PATENT  ............................................................  1  
`B.   SUMMARY OF THE PROSECUTION HISTORY OF THE ‘313 PATENT  .................................................................  3  
`III.   REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104  ....................  5  
`A.   GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)  .................................................................................  5  
`B.  
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED  .................  5  
`1.   The Grounds For Challenge (37 C.F.R. § 42.104(b)(2)) ..................................................... 6  
`2.   Claim Construction Under 37 C.F.R. § 42.104(b)(3) .......................................................... 7  
`   “substantially optimize a biomechanical effect of the human user’s hand” ................... 7  
`(a)   “delineated active areas” ............................................................................................ 10  
`3.   Level of Skill of a Person Having Ordinary Skill in the Art .............................................. 11  
`IV.   THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF
`THE ‘313 PATENT ARE UNPATENTABLE  .............................................................................................  12  
`A.   GRIFFIN ANTICIPATES CLAIMS 21-22 AND 52-54  .............................................................................................  12  
`B.   PALLAKOFF  ANTICIPATES  CLAIMS  21-­‐22,  52-­‐54,  AND  58  .................................................................................  23  
`C.   GRIFFIN  IN  VIEW  OF  LIEBENOW  RENDERS  CLAIMS  21-­‐24,  26,  52-­‐56,  AND  58  OBVIOUS  UNDER  35  U.S.C.  
`§  103(A)  AND  PALLAKOFF  IN  VIEW  OF  LIEBENOW  RENDERS  CLAIMS  21-­‐24,  26,  52-­‐56,  AND  58  OBVIOUS  
`UNDER  35  U.S.C.  §  103(A)  .................................................................................................................................................  37  
`D.   GRIFFIN  IN  VIEW  OF  REKIMOTO  RENDERS  CLAIMS  21-­‐24  AND  52-­‐56  OBVIOUS  UNDER  35  U.S.C.  §  
`103(A)  AND  PALLAKOFF  IN  VIEW  OF  REKIMOTO  RENDERS  CLAIMS  21-­‐24,  52-­‐56,  AND  58  OBVIOUS  UNDER  35  
`U.S.C.  §  103(A)  ......................................................................................................................................................................  46  
`E.   GRIFFIN  IN  VIEW  OF  ARMSTRONG  RENDERS  CLAIMS  21-­‐22  AND  27  OBVIOUS  AND  PALLAKOFF  IN  VIEW  OF  
`ARMSTRONG  RENDERS  CLAIMS  21-­‐22  AND  27  OBVIOUS  .............................................................................................  52  
`F.   GRIFFIN  IN  VIEW  OF  HEDBURG  RENDERS  CLAIMS  21-­‐22,  28-­‐29,  52-­‐54,  AND  59-­‐60  OBVIOUS  AND  
`PALLAKOFF  IN  VIEW  OF  HEDBURG  RENDERS  CLAIMS  21-­‐22,  28-­‐29,  52-­‐54,  AND  58-­‐60  OBVIOUS  ...................  55  
`V.   MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)  .............................................................  59  
`A.   REAL PARTIES-IN-INTEREST AND RELATED MATTERS  .................................................................................  59  
`B.   LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3)  .....................................................................  60  
`C.   PAYMENT OF FEES UNDER 37 C.F.R. § 42.103  ..................................................................................................  60  
`VI.   CONCLUSION  .........................................................................................................................................  60  
`
`
`
`
`
`(b)
`
`
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`I.
`
`INTRODUCTION
`
`Petitioner Sony Computer Entertainment America LLC requests an Inter Partes
`
`Review (“IPR”) of claims 21-24, 26-29, 52-56 and 58-60 (collectively, the “Challenged
`
`Claims”) of U.S. Patent No. 7,218,313 (“the ‘313 Patent”) issued on May 15, 2007 to
`
`Beth Marcus et al. (“Applicants”). Exhibit 1001, ‘313 Patent. The alleged point of
`
`novelty of the Challenged Claims relates to mapping an input element of a handheld
`
`electronic device to more than one function of a specific application. Infra. Due to the
`
`limited number of input elements on handheld devices such as PDAs, this feature was
`
`commonplace for many years prior to the ‘313 Patent. Exhibit 1009, Declaration of Dr.
`
`Gregory F. Welch at ¶¶ 27-30. Even the pocket-sized scientific calculators of the early
`
`1970s, which are generally recognized as the first handheld computing devices,
`
`included this feature. Id. at ¶ 27. As shown below, the prior art clearly discloses all
`
`elements of the Challenged Claims, and this Petition should be granted.
`
`II.
`
`SUMMARY OF THE ‘313 PATENT
`A. Description of the Alleged Invention of the ‘313 Patent
`
`The ‘313 Patent describes a user interface and input mechanisms for hand-held
`
`electronic devices, such as cell phones and Personal Digital Assistants (PDAs). Ex.
`
`1001 at 1:5-11; 7:7-11. The ‘313 Patent discloses an electronic device 100 having
`
`embedded software, firmware, or software applications that require input from the
`
`user in order to perform various functions. Id. at 7:12-19, 7:66-8:16. The applications
`
`may include, for example, word processing, e-mail, or game applications. Id. at 5:39-
`
`
`
` 1
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`49; 7:12-19, 7:66-8:16. The user provides inputs via input elements such as keys,
`
`buttons, pressure sensor pads, touch pads, or other elements. Id. at 7:56-61; see also, id.
`
`at 9:5-13; 15:24-28. One or more input elements are grouped together in “input
`
`assemblies.” Id. at 7:52-56. In one embodiment, the electronic device has a first and
`
`second input assembly with each input assembly having associated input elements. Id.
`
`at 8:47-62; Figs. 3A-3B. As shown in the figure below, the electronic device also
`
`includes an input controller 216 that receives raw electronic signals from the input
`
`elements associated with input assemblies 206 and 208 and converts them “into a
`
`form suitable to be received and interpreted by processor 104.” Id. at 7:61-65; see also,
`
`id. at Fig. 2. A processor 104 subsequently interprets the signals output by the input
`
`controller 216 as specific input commands for a particular application. Id. at 7:66-8:16.
`
`For example, if a text application is running, then the input controller may map a key
`
`input to a particular character, or if a game application is running, then the key input
`
`may be mapped to a particular game function. Id. The input controller 216 also may
`
`map one or more of the input elements to functions specific to a particular
`
`application. Id. at 8:6-25. Additionally, the input functions of input elements may
`
`change depending on the application that is being executed. Id.
`
`The ’313 Patent discloses arranging the input assemblies in a way that increases
`
`data input efficiency based on thumb-finger opposition arrangement of the human
`
`user's hand. For example, in one disclosed embodiment, the first input assembly 340,
`
`which includes input elements such as keys or buttons 342 to be actuated by the user’s
`
`
`
` 2
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`thumbs, is located on the front-side surface of the device 312 and the second input
`
`assembly 350, which includes input elements such as a pressure sensor pad 354 to be
`
`actuated by the user’s fingers, is located on the back-side surface of the device 314. Id.
`
`at Figs. 3A, 3B.
`
`The pressure sensor pad 354 on the back-side surface 314 is divided into one
`
`or more “delineated active areas,” which may be configured in the software to
`
`correspond to different programmable functions depending on the selected
`
`application. Id. at 9:24-40; Fig. 3d. The ‘313 Patent specification discloses that an
`
`active area can be “delineated” either because it is physically delineated from other
`
`active areas (e.g., the areas physically appear as rectangular, oblong, or other shapes)
`
`or the user is able to use their fingers to tactilely discriminate between the delineated
`
`active areas. Id. at 9:58-10:11. Use of a delineated active area on the back-side surface
`
`314 may change the input function of an input element on the front-side surface 312.
`
`Id. at 10:50-11:28. For example, pressing a delineated active area corresponding to a
`
`“Shift” key on the back-side surface may cause a key press on the front-side surface
`
`312 to result in an uppercase letter or a different symbol, for example. Id.
`
`B.
`
`Summary of the Prosecution History of the ‘313 Patent
`
`The U.S. patent application that resulted in the ‘313 Patent was filed on
`
`October 31, 2003. See Exhibit 1002, ‘313 Patent File History at pp. 274-318. For purposes
`
`of this proceeding, Petitioner assumes a priority date of October 31, 2003 for the
`
`Challenged Claims. The first substantive office action issued on October 5, 2006
`
`
`
` 3
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`rejected claims 1, 5-19, 23-28, 30, 31, 43-46, 49-53, and 55 as anticipated by U.S.
`
`Patent No. 6,909,424 to Liebenow et al. (“Liebenow Patent”), allowed claims 29, 32-
`
`42 and 54 and objected to dependent claims 3, 4, 20, 21, 47 and 48 as allowable if
`
`written in independent form. Id. at pp. 109-117. Applicants filed an amendment on
`
`February 2, 2007 arguing that the Liebenow Patent “fails to teach wherein the
`
`plurality of input elements of the first surface and the one or more input elements
`
`of the second surface are arranged so as to substantially optimize a biomechanical
`
`effect of the human user’s hand” because “[o]ptimizing the biomechanical effects of
`
`the human user’s hand includes optimizing human finger/thumb opposition.” Id. at p.
`
`70 (emphasis in original). Applicant argued since “Liebenow teaches use of discrete
`
`keys (even when using a sensor pad) designed to be manipulated by rigid tapping or
`
`pushing motions of the fingers,” it “does not optimize the biomechanical effects of
`
`the human user’s hand since combining tapping motion with the thumb and the
`
`fingers as taught in Liebenow is difficult and inefficient to accomplish.” Id.
`
`The USPTO subsequently issued a notice of allowance on March 1, 2007
`
`allowing claims 1, 4-21 and 23-63. Id. at pp. 40-45. Regarding the reasons for
`
`allowance for the Challenged Claims, the Examiner did not cite “substantially
`
`optimiz[ing] a biomechanical effect of the human user’s hand” as a patentable feature.
`
`Id. at pp. 44-45. Rather, regarding as-filed claims 17 and 43 (issued claims 21 and 52,
`
`respectively), the Examiner found that the prior art does not teach “at least one of the
`
`input elements of the first input assembly is further configured to map to more than
`
`
`
` 4
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`one input function associated with a selected one of the plurality of applications.” Id.
`
`Thus, the allegedly allowable feature of the Challenged Claims is “at least one of the
`
`input elements of the first input assembly is further configured to map to more than
`
`one input function associated with a selected one of the plurality of applications” as
`
`required by independent claims 21 and 52. The ‘313 Patent issued on May 15, 2007.
`
`Ex. 1001.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘313 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of the
`
`‘313 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the ‘313
`
`Patent; (2) Petitioner has not filed a civil action challenging the validity of any claim of
`
`the ‘313 Patent; and (3) this Petition is filed less than one year after the Petitioner was
`
`served with a complaint alleging infringement of the ‘313 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, claims 21-24, 26-29, 52-56
`
`and 58-60 of the ‘313 Patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1).
`
`
`
` 5
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`The Grounds For Challenge (37 C.F.R. § 42.104(b)(2))
`
`1.
`
`Proposed Statutory Rejections for the ‘313 Patent
`
`Claims 21-22 and 52-54 are anticipated under §§102(a) and (e) by
`U.S. Patent Application Publication No. 2003/0020692 to Griffin et al.
`(“Griffin”).
`Claims 21-22, 52-54, and 58 are anticipated under §§102(a) and (e) by
`U.S. Patent Publication No. 2002/0163504 to Pallakoff (“Pallakoff”).
`Claims 21-24, 26, 52-56, and 58 are obvious under § 103(a) over
`Griffin in view of Patent Application Publication No. 2002/0118175
`to Liebenow et al. (“Liebenow”).
`Claims 21-24, 26, 52-56, and 58 are obvious under § 103(a) over
`Pallakoff in view of Liebenow.
`Claims 21-24 and 52-56 are obvious under § 103(a) over Griffin in
`view of U.S. Patent No. 7,088,342 to Rekimoto et al. (“Rekimoto”).
`Claims 21-24, 52-56, and 58 are obvious under § 103(a) over Pallakoff
`in view of Rekimoto.
`Claims 21-22 and 27 are obvious under § 103(a) over Griffin in view
`of U.S. Patent No. 6,469,691 to Armstrong (“Armstrong”).
`Claims 21-22 and 27 are obvious under § 103(a) over Pallakoff in view
`of Armstrong.
`Claims 21-22, 28-29, 52-54, and 59-60 are obvious under § 103(a) over
`Griffin in view of WO 1999/18495 to Hedberg (“Hedberg”).
`Claims 21-22, 28-29, 52-54, and 58-60 are obvious under § 103(a) over
`Pallakoff in view of Hedberg.
`
`Reference
`Exhibit No.
`
`1003
`
`1004
`
`1003 and
`1005
`
`1004 and
`1005
`
`1003 and
`1006
`
`1004 and
`1006
`
`1003 and
`1007
`
`1004 and
`1007
`
`1003 and
`1008
`
`1004 and
`1008
`
`
`Section IV identifies where each element of the Challenged Claims is found in the
`
`
`
` 6
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`prior art patents. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the relevance
`
`of the evidence to the challenges raised are provided in Section IV. 37 C.F.R.
`
`§ 42.104(b)(5). Exhibits 1001 – 1021 are also attached.
`
`2.
`
`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`In this proceeding, claim terms should be given their broadest reasonable
`
`interpretations consistent with the specification (which may be different from the
`
`constructions in court). 37 C.F.R. § 42.100(b). Adherence to the rules of construction
`
`is not a waiver of any argument, in any litigation, that claim terms in the ‘313 Patent
`
`should not be construed differently or are otherwise invalid (including under 35
`
`U.S.C. § 112).
`
` “substantially optimize a biomechanical effect of the human user’s
`(a)
`hand”
`
`
`
`Claims 21 and 52 require “arranging the plurality of input elements of the first
`
`input assembly and the one or more input elements of the second input assembly to
`
`substantially optimize a biomechanical effect of the human user’s hand.” The ‘313
`
`Patent specification describes arranging input elements in order to “take advantage of
`
`the biomechanics of the hand,” including by utilizing the opposition of the thumb and
`
`fingers. Ex. 1001 at 10:16-17; see also id at Abstract, 3:46-56, 4:24-33, 5:20-24, 5:31-34,
`
`6:52-7:5, 8:53-59, 15:6-14. The specification does not, however, explain what (besides
`
`thumb-finger opposition) could constitute “biomechanical effects,” nor does it
`
`
`
` 7
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`

`

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

`

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

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`The ‘313 Patent broadly discloses “hand-held electronic devices (whether one
`
`handed or two handed) that utilize the opposed thumb and finger ergonomics
`
`inherent in the hand . . . to accomplish data input, device control and game control
`
`in a timely, efficient, comfortable and intuitive manner.” Id. at 4:24-31 (emphasis
`
`added). To utilize the aforementioned “opposed thumb and finger ergonomics,” the
`
`‘313 Patent discloses placing a first input assembly to be actuated by the user’s thumbs
`
`on a front-side surface and a second input assembly to be actuated by the user’s
`
`fingers on the back-side surface, left-side surface, or right-side surface. Id. at 8:33-59.
`
`Accordingly, under the broadest reasonable constructions standard, the phrase
`
`“substantially optimize a biomechanical effect of the human user’s hand,” must
`
`include any configuration designed to take advantage of any biomechanical effect,
`
`including at least all configurations described in the specification, such as those that
`
`facilitate opposed tapping of the thumb and fingers when using the first and second
`
`input elements.
`
` “delineated active areas”
`(b)
`
`
`
`Claims 24 and 55 require “a plurality of delineated active areas.” To assist the
`
`user in locating where the delineated areas of the pad are positioned, the active areas
`
`of the sensor pad are delineated from each other in several different ways. First, they
`
`can be delineated by physically depicting the areas to the user (e.g., Ex. 1001 at 9:63-
`
`10:3). In one example, delineated active areas include oblong shaped buttons (see id. at
`
`elements 372 of Fig. 3d, labeled 1-5, 9:24-40). Alternatively, the active areas can be
`
`
`
` 10
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`physically depicted on the display of the handheld device in order to assist the user in
`
`locating the different active areas of the pad. Id. at 10:3-8. Second, the active areas
`
`may be delineated tactilely. For example, the ‘313 Patent specification discloses that a
`
`pressure sensor pad may include a shape changing media or a shape memory metal
`
`array, which allow the user to tactilely discriminate between the one or more
`
`delineated active areas with their fingers. Id. at 9:63-10:3. Thus, under the broadest
`
`reasonable interpretation “delineated active areas” must at least include areas that are
`
`differentiated from each other either physically or tactilely to assist the user in locating
`
`the position on the sensor pad of the active areas.
`
`3.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`A person having ordinary skill in the art at the time of the ‘313 Patent would be
`
`a person with (1) an undergraduate degree in computer science, computer
`
`engineering, electrical engineering, or similar technical fields; (2) a working knowledge
`
`of computers - including handheld computing devices, and their processing, storage,
`
`hardware—including input devices, and software; (3) two to four years of experience
`
`(or, with a graduate degree in the above-stated fields, one to two years of experience)
`
`with designing and developing human-computer interfaces and the associated
`
`technologies. See Ex. 1009 at ¶ 36.
`
`
`
` 11
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ‘313 PATENT ARE
`UNPATENTABLE
`A. Griffin Anticipates Claims 21-22 and 52-54
`
`U.S. Patent Application Publication No. 2003/0020692 to Griffin et al.
`
`(“Griffin”), which published on January 30, 2003, was filed on July 25, 2002. Exhibit
`
`1003, Griffin. Griffin therefore qualifies as prior art with regard to the ‘313 Patent
`
`under 35 U.S.C. §§ 102(a) and (e). Griffin was not considered during prosecution of
`
`the ‘313 Patent. See Section II.B. Griffin discloses a handheld electronic device with a
`
`keyboard and thumbwheel optimized for use by the user’s thumbs on the front
`
`surface and special function keys, such as “Shift” and “Alt” keys, for use by the user’s
`
`fingers on the back surface. Ex. 1003 at Abstract, [0030], [0057], Figs. 2, 14a, 14b. The
`
`handheld device has embedded software applications such as e-mail, address book,
`
`and calendar applications. Id. at [0027], [0029]. The thumbwheel and keyboard on the
`
`front surface each map to multiple functions associated with each application. For
`
`example, the thumbwheel maps multiple input functions of the e-mail application
`
`including displaying received message, selecting of the “Reply” option from a menu,
`
`selecting a predetermined response to be inserted into an e-mail message, and
`
`initiating the “Send” function. Id. at [0027]-[0028]. Thus, Griffin discloses the
`
`allegedly patentable feature of “at least one of the input elements of the first input
`
`assembly is further configured to map to more than one input function associated
`
`with a selected one of the plurality of applications” as required by independent claims
`
`
`
` 12
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`21 and 52. As shown below, Griffin anticipates Claims 21-22 and 52-54.
`
`21. A method for
`configuring
`a
`human
`interface
`and input system
`for use with a
`hand-held
`electronic device
`configured to run
`a
`plurality
`of
`applications, each
`application
`associated with a
`set of functions,
`the
`method
`comprising:
`
`Anticipated by Griffin
`Griffin embodies a method of configuring a human interface and
`input system for use with a hand-held electronic device. The
`hand-held electronic device is configured to run a plurality of
`applications including, for example, e-mail and address book
`applications. Each application is associated with a set of
`functions. For example, the e-mail application is associated with
`functions relating to displaying e-mail messages, replying to
`messages, providing a menu of pre-determined text strings for
`selection by the user, and enabling the user to manually type
`characters using a keyboard.
`
`“A hand-held electronic device with a keyboard optimized for
`use with the thumbs is provided.” Ex. 1003 at Abstract.
`
`“It is well within the scope of the present invention to include
`the inventive keyboard on a variety of handheld electronic
`devices such handheld electronic arcade devices; two-way pagers;
`wireless data communication devices; cell phones; and Personal
`Digital Assistants (PDAs).” Id. at [0032].
`
`“To access the display of the message, the user may choose
`from functions listed under a menu presented as a result of
`user interaction with thumb-wheel 1000. If the message is an
`email message, then the user may choose to respond to the email
`by selecting “Reply” from a menu presented on the display
`through interaction via thumb-wheel 1000 or via menu selection
`from keyboard 900. In typing the reply, the user can use
`keyboard 900 to type full text message replies, or insert pre-
`determined or ‘canned’ responses by using either a particular
`keystroke pattern or through pulling down pre-determined text
`strings from a menu of items presented on display 500 through
`the use of thumb-wheel 1000.” Id. at [0027] (emphasis added).
`
`“In addition, the keyboard 900 and thumb-wheel 1000 can be
`used to permit data entry to an address book resident on the
`messaging device, or an electronic calendar or log book, or
`any other function on the messaging device requiring data entry.”
`Id. at [0029] (emphasis added).
`
`
`
` 13
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`
`“Although the capitalization function preferably works only to
`change the state of a letter to a capital, it alternatively could
`operate to change a capital letter to a lower case letter. The actual
`display is changed by the application program substituting the
`value of the capital letter in the register that holds the value of
`the letter to be displayed.” Id. at [0039] (emphasis added).
`
`“In the example keyboard of FIG. 5, operation of the ‘Q’ key
`will normally cause a lowercase ‘q’ to be input to the device. The
`number ‘1’ may be input when the ‘Q’ key is operated while or
`after the alt key 902 is operated. Similarly, an uppercase ‘Q’ could
`be entered when the ‘Q’ key is depressed while the shift key 902a
`is depressed or immediately after the shift key has been
`depressed.” Id. at [0049]; see also, id. at [0008], [0026], [0038]; Figs.
`1, 2, 5-10.
`As shown in Figure 2, Griffin discloses that the hand-held
`electronic device includes a front surface (i.e., “first surface”)
`having an input assembly including a keyboard 900 having letter
`keys 901 (A-Z), function keys 902-904, a spacebar/symbol
`selector key 906, and a thumbwheel 1000.
`
`[21(a)(i)] disposing
`on a first surface a
`first
`input
`assembly having a
`plurality of input
`elements
`to
`configured
`receive input from
`a
`human
`user
`through
`of
`manipulation
`the plurality of
`input elements,
`
`
`
`Id. at Fig. 2.
`
`“If the message is an email message, then the user may choose to
`respond to the email by selecting ‘Reply’ from a menu presented
`on the display through interaction via thumb-wheel 1000 or via
`menu selection from keyboard 900. In typing the reply, the user
`can use keyboard 900 to type full text message replies, or insert
`pre-determined or ‘canned’ responses by using either a particular
`
`
`
` 14
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`keystroke pattern or through pulling down pre-determined text
`strings from a menu of items presented on display 500 through
`the use of thumb-wheel 1000.” Id. at [0027].
`
`“When the reply to the message is composed, the user can
`initiate the sending of the message preferably by interaction
`through thumb-wheel 1000, or alternatively, with less efficiency,
`through a combination of keyboard 900 keystrokes.” Id. at
`[0028].
`
`“In addition, the keyboard 900 and thumb-wheel 1000 can be
`used to permit data entry to an address book resident on the
`messaging device, or an electronic calendar or log book, or any
`other function on the messaging device requiring data entry.” Id.
`at [0029].
`
`“FIG. 2 is a front view of an exemplary messaging device having
`a keyboard that is optimized for use with the thumbs. Shown in
`FIG. 2 are a plurality of letter keys 901, specialized keys 902, 903,
`904 and 905, and a space bar 906. Also shown is the thumb-
`wheel 1000 in its vertical orientation and in association with
`display 500 and keyboard 900.” Id. at [0030].
`
`“FIG. 5 is a diagram showing one exemplary embodiment of a
`keyboard that is optimized for use with the thumbs. This
`keyboard includes a plurality of letter keys 901 (A-Z), several
`function keys 902, 903, 904, and a spacebar/symbol selector
`906.” Id. at [0041].
`
`“In the example keyboard of FIG. 5, operation of the ‘Q’ key
`will normally cause a lowercase ‘q’ to be input to the device. The
`number ‘1’ may be input when the ‘Q’ key is operated while or
`after the alt key 902 is operated. Similarly, an uppercase ‘Q’ could
`be entered when the ‘Q’ key is depressed while the shift key 902a
`is depressed or immediately after the shift key has been
`depressed.” Id. at [0049]; see also, id. at [0045]-[0048]; Figs. 5-10.
`Griffin discloses that the keyboard 900 and thumbwheel 1000 are
`configured to map to more than one input function associated
`with a selected application. Regarding the e-mail application, the
`keyboard 900 is configured to map to multiple input functions
`including typing full text messages, menu selection, and inserting
`
` 15
`
`[21(a)(ii)] wherein
`at least one of the
`input elements of
`the
`first
`input
`assembly is further
`
`
`
`

`

`configured to map
`to more than one
`input
`function
`associated with a
`selected one of the
`plurality
`of
`applications;
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`predetermined responses by entering a particular keystroke
`pattern. Individual keys 901 of the keyboard are also mapped to
`multiple input functions. For example, the “Q” key may be
`mapp