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. IPR2015-00533
`Patent No. 7,218,313
` ____________
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,218,313
`
`
`
`
`
`
`
`

`
`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  
`(b)   “a game function that is substantially optimized for actuation by the human user's
`the human user's fingers” ................................................................................................... 11  
`3.   Level of Skill of a Person Having Ordinary Skill in the Art .............................................. 13  
`IV.   THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF
`THE ‘313 PATENT ARE UNPATENTABLE  .............................................................................................  13  
`A.   LIEBENOW ANTICIPATES CLAIMS 37-39 AND 49 UNDER 35 U.S.C. § 102(B)  ............................................  13  
`B.   PALLAKOFF  IN  VIEW  OF  ISHIHARA  RENDERS  CLAIMS  15,  20,  37  AND  49  OBVIOUS  .......................................  25  
`C.   PALLAKOFF  IN  VIEW  OF  ISHIHARA  IN  FURTHER  VIEW  OF  LIEBENOW  RENDERS  CLAIMS  15-­‐16,  20,  37-­‐42,  
`46,  AND  49  OBVIOUS  .............................................................................................................................................................  43  
`D.   LIEBENOW  IN  VIEW  OF  ISHIHARA  RENDERS  CLAIMS  37-­‐42,  46,  AND  49  OBVIOUS  .......................................  48  
`E.   LIEBENOW  IN  VIEW  OF  ARMSTRONG  ‘802  RENDERS  CLAIMS  37-­‐41  AND  44-­‐49  OBVIOUS  .........................  50  
`F.   LIEBENOW  IN  VIEW  OF  HEDBERG  RENDERS  CLAIMS  37-­‐39  AND  49-­‐51  OBVIOUS  AND  PALLAKOFF  IN  VIEW  
`OF  ISHIHARA  IN  FURTHER  VIEW  OF  HEDBERG  RENDERS  CLAIMS  15,  20,  37  AND  49-­‐51  OBVIOUS  .....................  56  
`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  
`
`(c)
`thumb” and “a game function that is substantially optimized for actuation by one or more of
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`
`TABLE OF CONTENTS
`
`
`
`
`
`

`
`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 15, 16, 20, 37-42, and 44-51 (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.
`
`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-
`
`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
`
`
`
` 1
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`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
`
`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
`
`
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` 2
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`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
`
`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. Regarding allowed claim 29 (which
`
`issued as claim 37), the Examiner found that the Liebenow Patent did not teach the
`
`following limitation:
`
`wherein at least one of the input elements of the second input assembly
`is a selectively configurable sensing surface so as to provide a plurality of
`
`
`
` 3
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`delineated active areas, further wherein one or more of the delineated
`active areas is mapped to one or more functions associated with the
`selected application
`Id. at p. 116. The Examiner did not explain why the Liebenow Patent was found to be
`
`missing this limitation.
`
`Applicants filed an amendment on February 2, 2007 amending the claims and
`
`adding new claims 56-63. Id. at pp. 50-75. Regarding as-filed claim 12, Applicants
`
`argued that “the input elements of the second surface in Liebenow are not selectively
`
`map [sic] to a different shifting function, wherein manipulation of one of the
`
`selectable active area causes the text symbol function of the one or more input
`
`elements of the first surface to change” because the Liebenow Patent discloses that
`
`the “Shift” and “Ctrl” keys are positioned on the front surface (i.e., first surface”) of
`
`the device and not the back surface (i.e., “second surface”). Id. at p. 20. Regarding as-
`
`filed claim 12, Applicants also argued that Liebenow “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. 21.
`
`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
`
`
`
` 4
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`optimiz[ing] a biomechanical effect of the human user’s hand” or “at least one of the
`
`input elements of the second surface having one or more selectable areas . . . wherein
`
`manipulation of one of the selectable active areas causes the text symbol function of
`
`the one or more input elements of the first surface to change” as patentable features.
`
`Id. at pp. 44-45. Rather, regarding as-filed claim 12 (issued claim 15), the Examiner
`
`found that the prior art does not teach “at least one of the input elements of the first
`
`surface is further configured to selectively map to more than one text symbol
`
`function.” Id. at p. 44. 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 15, 16, 20, 37-42,
`
`and 44-51 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 37-39 and 49 are anticipated under §102(b) by U.S. Patent
`Application Publication No. 2002/0118175 to Liebenow et al.
`(“Liebenow”).
`Claims 15, 20, 37 and 49 are obvious under §103(a) over U.S. Patent
`Publication No. 2002/0163504 to Pallakoff (“Pallakoff”) in view of
`Japanese Unexamined Patent No. 2002-77357 to Ishihara et al.
`(“Ishihara”).
`Claims 15-16, 20, 37-42, 46, and 49 are obvious under §103(a) over
`Pallakoff in view of Ishihara in further view of Liebenow.
`Claims 37-42, 46, and 49 are obvious under §103(a) over Liebenow in
`view of Ishihara.
`Claims 37-41 and 44-49 are obvious under §103(a) over Liebenow in
`view of U.S. Patent No. 6,102,802 to Armstrong (“Armstrong ‘802”).
`Claims 37-39 and 49-51 are obvious under §103(a) over Liebenow in
`view of International Publication No 1999/18495 to Hedberg
`(“Hedberg”).
`Claims 15, 20, 37 and 49-51 are obvious under §103(a) over Pallakoff
`in view of Ishihara in further view of Hedberg.
`
`Reference
`Exhibit No.
`
`1003
`
`1004 and
`1005
`
`1004, 1005
`and 1003
`
`1003 and
`1005
`
`1003 and
`1006
`
`1003 and
`1007
`
`1004, 1005,
`and 1007
`
`
`Section IV identifies where each element of the Challenged Claims is found in the
`
`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 – 1026 are also attached.
`
`
`
` 6
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`2.
`
`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 15 and 37 require the input elements on the first and second surfaces be
`
`arranged so as 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 describe what it means to “optimize a
`
`biomechanical effect of the human user’s hand” – let alone what it means to
`
`“substantially optimize.”1
`
`1 Petitioner will argue in litigation that this term is invalid under 35 U.S.C. § 112, including
`
`because it is indefinite.
`
`
`
` 7
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`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 the Liebenow prior art reference “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
`
`(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
`
`
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` 8
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`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.
`
`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
`
`
`
` 9
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`‘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 construction 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.
`
`
`(b)
`
`“delineated active areas”
`
`Claim 37 requires “a selectively configurable sensing surface so as to provide 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 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
`
`
`
` 10
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`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.
`
`
`(c)
`
` “a game function that is substantially optimized for actuation
`by the human user's thumb” and “a game function that is
`substantially optimized for actuation by one or more of the
`human user's fingers”
`
`Claim 44 requires a function mapped to a first input assembly to be “a game
`
`function that is substantially optimized for actuation by the human user's thumb.”
`
`Similarly, Claim 46 requires a function mapped to the delineated active areas to be “a
`
`game function that is substantially optimized for actuation by one or more of the
`
`human user's fingers.” respectively. Again, the ‘313 Patent specification does not
`
`provide any context for what it would mean to be “substantially optimized.”2
`
`Regarding mapping of game functions to the first input assembly, the ‘313
`
`Patent discloses “[a] method of implementing the functionality of a game controller is
`
`to assign in software the input elements 342 of the first input assembly 340 specific
`
`game functions to take advantage of the capability of the human thumb, i.e., range of
`
`motion and sustained force actuation . . . .” Ex. 1001 at 12:1-5. The ‘313 Patent does
`
`2 To the extent Claims 44 and 46 are asserted in litigation, Petitioner will argue that these
`
`terms are invalid under 35 U.S.C. § 112, including because they are indefinite.
`
`
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` 11
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`not provide objective criteria for determining whether or not a specific game function
`
`takes advantage of the capability of the human thumb. However, the ‘313 Patent does
`
`disclose that a wide range of game functions, including directional controls, action
`
`buttons, and trigger buttons, may be mapped to the input elements of the first input
`
`assembly. Id. at 5:45-49. Thus, under the broadest reasonable construction standard,
`
`the phrase “a game function that is substantially optimized for actuation by the
`
`human user's thumb,” must include any game function that may be actuated by the
`
`user’s thumb, including at least all game functions described in the specification.
`
`Regarding “optimizing” the mapping of game functions to delineated active
`
`areas, the ‘313 Patent broadly discloses “a game developer may optimize the mapping
`
`of delineated active areas based on the best configuration for a particular game.” Id. at
`
`12:35-37. The ‘313 Patent does not provide any objective criteria for determining the
`
`“best configuration for a particular game.” Rather, it discloses that the delineated
`
`active areas could be mapped to practically any conceivable game function, including
`
`controlling movement, speed, size, position, weapons, field of view, etc. Id. at 12:1-42.
`
`For any type of software application, the ‘313 Patent specification simply discloses
`
`that the delineated active areas are actuated by the user’s fingers. Id. at Abstract, 4:46-
`
`49, 4:61-63, 5:16-20, 5:31-38, 8:53-62, 9:58-62, 10:30-39, 10:50-11:5, 11:15-28, 11:56-
`
`67, 12:10-19, 12:48-50, 12:56-65, 13:11-17. Thus, any game function mapped to a
`
`delineated active area would be “substantially optimized for actuation by one or more
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`of the human user's fingers” under the broadest reasonable interpretation of the claim
`
`language in light of the ‘313 Patent specification.
`
`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. Ex. 1008, Welch Declaration, at ¶ 39.
`
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ‘313 PATENT ARE
`UNPATENTABLE
`A.
`
`Liebenow Anticipates Claims 37-39 and 49 Under 35 U.S.C. § 102(b)
`
`U.S. Patent Application Publication No. 2002/0118175 to Liebenow et al.
`
`(“Liebenow”) was published on August 29, 2002 and therefore qualifies as prior art
`
`with regard to the ‘313 Patent under 35 U.S.C. § 102(b). Ex. 1003, Liebenow. Liebenow
`
`discloses a “handheld digital information appliance,” such as a PDA, having a front
`
`surface with keys that are manipulated by the user’s thumbs and a back surface with
`
`keypads or touch panels that are manipulated by the user’s fingers. Id. at Abstract,
`
`[0002], [0026]-[0027], [0031], [0033], [0036], Figs, 1, 3, 4, 6, 7, 10, 11. The handheld
`
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`device runs applications such as word processing, web browsing, and spreadsheet
`
`applications. Id. at [0051], [0069], Figs. 15, 16.
`
`As discussed above, during prosecution of the ‘313 Patent, the Examiner found
`
`that the Liebenow issued patent (i.e., U.S. 6,909,424) allegedly does not disclose
`
`“wherein at least one of the input elements of the second input assembly is a
`
`selectively configurable sensing surface so as to provide a plurality of delineated active
`
`areas, further wherein one or more of the delineated active areas is mapped to one or
`
`more functions associated with the selected application.” Ex. 1002 at p. 116.
`
`However, Liebenow discloses an embodiment where the handheld device has a back
`
`surface with touch sensitive panels (i.e., a second input assembly is a sensing surface).
`
`The touch panels on the back surface have areas “defined as keys of a keyboard so
`
`that a user touching the panel within such an area would accomplish an actuation of
`
`the key.” Id. at [0036], [0048]. The touch panels are selectively configurable by either
`
`the user or the application developer. Id. at [0036] (“Further, since the keyboard is
`
`emulated, various key configurations may be defined as desired by the user or as
`
`required by the applications executed by digital information appliance.”). The touch
`
`panels can be selectively configured into unique key layouts for each application. Id. at
`
`[0036]. The key configurations for each application are stored in memory. Id. at
`
`[0007], [0036], [0048], [0058], [0071], Figs. 13, 14 (ref. no. 604). The areas of the touch
`
`sensitive panels are differentiated from each other via a graphical representation of the
`
`keys, which is displayed on the display of the handheld device. Ex. 1003 at [0066],
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`Figs. 1, 7, 15, 16. This tracks the disclosure of the ‘313 Patent that states, “a computer
`
`graphical representation . . . of the delineated active areas of the pad 354 may be
`
`displayed temporarily (or some predetermined time) on a portion of the display 330 to
`
`visually assist the user in locating where the delineated active areas of the pad 354 are
`
`positioned.” Ex. 1001 at 10:3-8. Therefore, Liebenow clearly discloses providing a
`
`“plurality of delineated active areas.”
`
`Additionally, Liebenow discloses that each key layout includes a plurality of
`
`keys that each map input functions of a particular application. For instance, a
`
`calculator application has a key layout including keys for performing mathematical
`
`functions including addition and subtraction, for example, and a word processing
`
`application has a key layout including keys for performing text input functions
`
`including input of characters, numbers and symbols. Ex. 1003 at [0036], [0069]; Figs.
`
`15, 16. Thus, Liebenow discloses the allegedly patentable feature of independent
`
`Claim 37 and therefore anticipates Claims 37-39 and 49 under 35 U.S.C. § 102(b).
`
`37. A hand-
`held electronic
`device
`comprising:
`
`a
`
`[37(a)]
`memory
`to
`configured
`store a plurality
`of applications,
`wherein
`each
`
`Anticipated by Liebenow
`Liebenow discloses a hand-held digital information appliance 100
`(i.e., “hand-held electronic device”).
`
`“The digital information appliance 100 is comprised of a housing
`102 sized and shaped to be held by a user in both hands.” Ex. 1003
`at [0025]; see also, id. at Fig. 1.
`The digital information appliance 500 of Liebenow includes a
`memory 504 configured to store applications such as word
`processing and mathematics based applications, for example. Each
`application is associated with a set of functions. As shown in Figure
`16, for example, the calculator application is associated with
`mathematical
`functions,
`including
`addition,
`subtraction,
`
`
`
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`

`
`is
`application
`associated with
`a
`set
`of
`functions;
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,218,313
`multiplication, etc. The word processing application is similarly
`associated with a set of text input functions allowing the user to
`enter letters, numbers, and symbols. Id. at Fig. 15.
`
`“Additionally, the digital information appliance 500 includes a
`memory 504. In one embodiment, the memory 504 is provided on
`SIMMs (Single In-line Memory Modules), while
`in another
`embodiment, memory 504 is provided on DIMMs (Dual In-line
`Memory Modules), each of which plugs into suitable sockets
`provided on a motherboard holding many of the other components
`shown in FIG. 10. Memory 504 includes standard DRAM (Dynamic
`Random Access Memory), EDO (Extended Data Out) DRAM,
`SDRAM
`(Synchronous DRAM), or other suitable memory
`technology. Memory 504 may also include auxiliary memory to
`provide storage of instructions and data that are loaded into the
`memory 504 before execution. Auxiliary memory may include
`semiconductor based memory such as read-only memory (ROM),
`programmable read-only memory (PROM) erasable programmable
`read-only memory (EPROM), electrically erasable read-only memory
`(EEPROM), or flash memory (block oriented memory similar to
`EEPROM).” Id. at [0058].
`
`
`
`Id. at Fig. 16.
`
`“For instance, as shown in FIG. 15, wherein a word p