Trials@uspto.gov Paper 32
`571-272-7822
`
`Date Entered: June 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00533
`Patent 7,218,313 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 15, 16, 20, 37–42, and
`44–51 of U.S. Patent No. 7,218,313 B2 are unpatentable.
`
`
`
`
`571-272-7822
`
`Date Entered: June 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00533
`Patent 7,218,313 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 15, 16, 20, 37–42, and
`44–51 of U.S. Patent No. 7,218,313 B2 are unpatentable.
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`
`
`A. Procedural History
`Petitioner, Sony Computer Entertainment America LLC, filed a
`Petition requesting an inter partes review of claims 15, 16, 20, 37–42, and
`44–51 of U.S. Patent No. 7,218,313 B2 (Ex. 1001, “the ’313 patent”). Paper
`2 (“Pet.”). Patent Owner, Aplix Holdings Corporation, filed a Preliminary
`Response. Paper 10 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, on June 22, 2015, we instituted an inter partes
`review of claims 15, 16, 20, 37–42, and 44–51, pursuant to 35 U.S.C. § 314.
`Paper 11 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 15 (“PO Resp.”)) and Petitioner filed a Reply (Paper 21
`(“Reply”)). Patent Owner filed a Motion for Observations (Paper 26) and
`Petitioner filed a Response to the Observations (Paper 29). An oral hearing
`was held on January 19, 2016, and a transcript of the hearing is included in
`the record (Paper 31(“Tr.”)).
`B. Related Proceedings
`The ’313 patent is involved in the following lawsuit: Aplix IP
`Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
`(MLW) (D. Mass.). Pet. 59.
`C. The ’313 Patent
`The ’313 patent relates to hand-held electronic devices, such as cell
`phones, personal digital assistants (“PDAs”), pocket personal computers,
`smart phones, hand-held game devices, bar-code readers, remote controls
`having a keypad or one or more input elements. Ex. 1001, 1:5–11. The
`hand-held device includes, on one surface, one or more software
`configurable input elements that can be manipulated by a user’s thumb(s) or
`
`2
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`stylus, and on the other surface, one or more software configurable selection
`elements that can be manipulated by a user’s finger(s). Id. at Abstract.
`D. Illustrative Claim
`Of the challenged claims, claims 15 and 37 are the only independent
`claims. Claims 16 and 20 depend directly from claim 15 and claims 38–42
`and 44–51 depend either directly or indirectly from claim 37.
`Claim 37, reproduced below, is illustrative.
`37. A hand-held electronic device comprising:
`a memory configured to store a plurality of applications,
`wherein each application is associated with a set of functions;
`a processor configured to process a selected one of the
`plurality of applications;
`a first input assembly disposed on a first surface of the
`electronic device, wherein the first input assembly comprises a
`plurality of input elements configured to be actuated by a
`human user’s hand, wherein at least one of the input elements
`of the first input assembly is configured to map to one or more
`input functions of the set of functions associated with the
`selected one of the plurality of applications; and
`a second input assembly disposed on a second surface so
`as to substantially optimize a biomechanical effect of the
`human user's hand, wherein the second input assembly
`comprises one or more input elements configured to be
`manipulated by one or more of the human user’s fingers,
`wherein at least one of the input elements of the second input
`assembly is 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, further
`wherein the memory is further configured to store for each
`application a mapping of the selectively configurable sensing
`surface to the plurality of delineated active areas.
`
`Ex. 1001, 19:56–20:17.
`
`3
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`
`
`
`
`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 15, 16, 20, 37–42, and
`44–51 on the following grounds:
`Claims
`Basis
`15 and 20
`§ 103(a)
`
`References
`Pallakoff1 and Ishihara2
`
`16
`
`§ 103(a)
`
`Pallakoff, Ishihara, and Liebenow3
`
`37–42, 46, and 49
`
`§ 103(a) Liebenow and Ishihara
`
`44, 45, 47, and 48
`
`§ 103(a) Liebenow and Armstrong4
`
`50 and 51
`
`§ 103(a) Liebenow and Hedberg5
`
`
`
`II. ANALYSIS
`A. Level of Skill of Person in the Art
`We find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`
`1 U.S. Patent Publication No. 2002/0163504 A1, published Nov. 7, 2002
`(Ex. 1004, “Pallakoff”)
`2 JP 2002-77357, Mar. 15, 2002 (Ex. 1005, “Ishihara”)
`3 U.S. Patent Publication No. 2002/0118175 A1, published Aug. 29, 2002
`(Ex. 1003, “Liebenow”)
`4 U.S. Patent No. 6,102,802, Aug. 15, 2000 (Ex. 1006, “Armstrong”)
`5 WO 1999/18495, Apr. 15, 1999 (Ex. 1007, “Hedberg”)
`4
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`
`
`B. Claim Interpretation
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). Consistent with the broadest reasonable construction,
`claim terms are presumed to have their ordinary and customary meaning as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Also, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
`specification.”). However, an inventor may provide a meaning for a term
`that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes a construction for the terms “substantially
`optimize a biomechanical effect of the human user’s hand,” (claims 15 and
`37) “delineated active areas,” (claim 37) “a game function that is
`substantially optimized for actuation by the human user’s thumb,” (claim 44)
`and “a game function that is substantially optimized for actuation by one or
`more of the human user’s fingers” (claim 46). Pet. 7–13. In our Decision to
`Institute, we determined that it was not necessary to construe “delineated
`active area” (claims 3, 5, and 13) and agreed with Petitioner’s construction
`
`5
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`for “substantially optimize a biomechanical effect of the human user’s
`hand,” (claims 15 and 37) “a game function that is substantially optimized
`for actuation by the human user’s thumb,” (claim 44) “a game function that
`is substantially optimized for actuation by one or more of the human user’s
`fingers” (claim 46). Dec. 5–7. Neither party has indicated that our
`determination in that regard was improper and we do not perceive any
`reason or evidence that now compels any deviation from our initial
`determination.
`Accordingly, the following constructions apply to this Decision:
`Claim Term
`Construction
`substantially optimize a
`includes any configuration designed
`biomechanical effect of the human
`to take advantage of any
`user’s hand
`biomechanical effect
`a game function that is substantially
`includes any game function that
`optimized for actuation by the
`may be actuated by the user’s
`human user’s thumb
`thumb
`a game function that is substantially
`includes any game function mapped
`optimized for actuation by one or
`to a delineated active area
`more of the human user’s fingers
`
`
`C. Obviousness Over Pallakoff and Ishihara
`Petitioner contends that claims 15 and 20 are unpatentable under
`35 U.S.C. § 103 based on Pallakoff and Ishihara. Pet. 25–36. To support its
`contentions, Petitioner provides a detailed showing mapping limitations of
`claims 15 and 20 to structures taught by Pallakoff and Ishihara. Id.
`Petitioner also relies upon the Declaration of Dr. Gregory F. Welch
`(Ex. 1008) to support its position.6
`
`
`6 Patent Owner argues that the Board should give Dr. Welch’s testimony
`little weight. PO Resp. 16–17. We are not persuaded by the arguments. The
`6
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`Pallakoff describes a hand-held device with multiple keys on its face
`and with one or more buttons on its side. Ex. 1004, Abstract. Figure 1 of
`Pallakoff is reproduced below.
`
`
`
`
`As shown in Figure 1 of Pallakoff, each numerical key on the face of
`the hand-held device has multiple corresponding letters and each of the keys
`on the side of the hand-held device corresponds to shift, 2nd letter, and 3rd
`letter. Users will typically type using two hands, one holding the hand-held
`device and operating the side keys, and the other hand pressing the keys on
`the face of the hand-held device. Ex. 1004 ¶ 193. When a key on the side of
`the display is held and a key on the front of the display is pressed, such as
`the 2nd letter key and the number 2, the lowercase letter “b” is displayed on
`the display of the hand-held device. Id. ¶ 18. The shift key changes the case
`of a letter such that when the shift key is held simultaneously with the 2nd
`letter key and the number 2 key is pressed, an uppercase “B” is displayed on
`the display of the hand-held device. Id.
`
`
`evidence to which we are directed does not support the conclusion that Dr.
`Welch is not a credible witness. See id.
`7
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`Pallakoff further teaches, in connection with the hand-held device, a
`user accessing a calculator, email, instant messaging, webpages, remotely
`hosted applications, and other services. Id. ¶¶ 196, 198; 208.
`Ishihara teaches a handheld device including touch panel 37 on the
`back surface of the handheld device and display area 33 on the front surface
`of the handheld device. Ex. 1005, Abstract. Ishihara’s Figure 1a,
`corresponding to the front surface of the handheld device, and Figure 1b,
`corresponding to the back surface of the handheld device, is reproduced
`below.
`
`
`As shown in Figure 1 of Ishihara, the back surface display area 37
`corresponds to inputs on the front surface display area 33. Id. Abstract;
`Figs. 1a–1b.
`Figures 9a and 9b of Ishihara, corresponding to the hand-held device’s
`front surface and back surface, respectively, are reproduced below.
`
`8
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`
`
`
`
`As shown in Figures 9a and 9b, Ishihara illustrates a user steering an
`automobile in a game application. Specifically, Ishihara teaches the user’s
`fingertips moving left and right on the delineated active areas on the back
`surface touch panel of the hand-held device controls the automobile’s
`steering. Id. ¶ 67; Figs. 9a and 9b.
`Claim 15
`Petitioner argues that Pallakoff teaches a hand-held device for
`selecting an application from a plurality of applications, the selected
`application having a plurality of text symbol functions and a plurality of
`shifting functions. Pet. 28–30; Ex. 1004 (multiple paragraphs and figures
`cited in petition). Petitioner argues that Pallakoff teaches selectively
`mapping to a different function and causing the text symbol function to
`change as claimed in claim 15, for example. Pet. 33–34; Ex. 1004 (multiple
`paragraphs and figures cited in petition).
`Petitioner relies on Ishihara’s hand-held device having inputs on back
`surface display area 37 corresponding to inputs on front surface display area
`33 to meet the limitation of “a second surface having one or more input
`elements, wherein at least one of the input elements of the second surface
`having one or more selectable active areas.” Pet. 31–32; Ex. 1005 (multiple
`9
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`paragraphs and figures cited in petition). Petitioner concludes that one of
`ordinary skill in the art would have recognized that Pallakoff’s input
`elements on the hand-held device could be replaced with input elements that
`provide tactile feedback, like Ishihara’s input elements, as a simple
`substitution of one known element for another known element. Pet. 25–28;
`Ex. 1008 ¶¶ 47–53.
`Patent Owner argues that Pallakoff and Ishihara should not be
`combined for various reasons. PO Resp. 17–28. First, Patent Owner argues
`that Pallakoff teaches away from implementing modifier buttons on the back
`of the hand held device because Pallakoff does not describe the side buttons
`as being on the back. Id. at 19–21. A reference does not teach away if it
`merely expresses a general preference for an alternative invention but does
`not “criticize, discredit, or otherwise discourage” investigation into the
`invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`Here, we note that Pallakoff teaches that the positioning of face-keys or side-
`buttons can vary and one place to position the keys or buttons is on the back
`of the device. Reply 9–10 (citing Ex. 1004 ¶¶ 196, 200, 323). We have
`considered Patent Owner’s arguments and evidence to which we are directed
`and determine that Patent Owner has not shown sufficiently that Pallakoff
`criticizes, discredits, or otherwise discourages implementing the modifier
`buttons on any surface of the handheld device, including the back surface.
`Patent Owner next argues that Ishihara’s touchpad could not be
`substituted for Pallakoff’s modifier buttons and be able to perform the
`operations required in Pallakoff because Ishihara’s touchpad would not
`recognize two different areas being pressed simultaneously. PO Resp. 21–
`22. Patent Owner’s arguments and evidence are based on incorporating
`
`10
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`physically all technicalities of Ishihara with all technicalities of Pallakoff.
`The test for obviousness is what the combined teachings of the references
`would have suggested to a person of ordinary skill in the art, not whether
`one reference may be bodily incorporated into the structure of another
`reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). For example,
`Patent Owner and Dr. MacLean are of the apparent impression that the
`operation of pressing two modifier buttons simultaneously as described in
`Pallakoff need be maintained when combining Pallakoff with Ishihara. See,
`e.g., PO Resp. 23–24; Ex. 2007 ¶¶ 73, 74, 76. However, that is not what the
`law requires, and in any event, none of the claims require how input
`elements are selected or operated by the user.
`Patent Owner argues that both Pallakoff and Ishihara teach away from
`both the specific programmable reconfiguration and repositioning of key
`mappings because: (1) Pallakoff fails to teach any use for its modifier
`buttons other than as buttons that modify the letter or function of a face key;
`and (2) Pallakoff cautions against changing an order of the modifier buttons
`that is intuitive for users, making it easy to learn. PO Resp. 22–26.
`A reference does not teach away if it merely expresses a general preference
`for an alternative invention but does not “criticize, discredit, or otherwise
`discourage” investigation into the invention claimed. Fulton, 391 F.3d at
`1201. Here, we note that Pallakoff teaches that reasonably skilled
`programmers can develop other ways to implement software that interprets
`the keys and modifier buttons. Ex. 1004 ¶¶ 23, 24, 159. In addition, we
`note that Pallakoff teaches the positioning face-keys or side-buttons can vary
`and one place to position the keys or buttons is on the back of the device. Id.
`¶¶ 196, 200, 323. We, therefore, have considered Patent Owner’s arguments
`
`11
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`and evidence to which we are directed and determine that Patent Owner has
`not shown sufficiently that Pallakoff criticizes, discredits, or otherwise
`discourages both the specific programmable reconfiguration and
`repositioning of key mappings.
`Patent Owner argues that locating Pallakoff’s modifier buttons on the
`back of the handheld device as suggested by Ishihara would defeat
`Pallakoff’s goal of enabling fast typing. PO Resp. 26–28. Patent Owner’s
`arguments are misplaced, and, therefore, not persuasive. Patent Owner does
`not contend that the combined teachings would not result in a working
`device, or that the combination would be beyond the skill set of a person of
`ordinary skill in the art. It is of no moment that the combination would
`result, in some aspects—aspects not related to claimed features—to be
`inferior.
`Claim 20
`Claim 20 directly depends from claim 15 and recites “wherein the
`processor is further configured to be communicatively coupled to a host
`electronic device.” Ex. 1001, 17:48–50. Petitioner argues that Pallakoff’s
`user accessing remotely hosted applications and other services teaches the
`limitations of claim 20. Pet. 36 (citing Ex. 1004 ¶ 196). We are not
`persuaded by Patent Owner’s argument (PO Resp. 28–29) that Pallakoff fails
`to teach communicative coupling to a local host because claim 20 does not
`recite “local host.” Moreover, Dr. MacLean acknowledged that “host” is
`broader than a “local host” and that a server is an electronic device. Ex.
`2007 ¶¶ 126–129; Ex. 1037, 142:10–14.
`
`12
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`D. Obviousness Over Pallakoff, Ishihara, and Liebenow
`Petitioner contends that claim 16 is unpatentable under 35 U.S.C.
`§ 103 based on Pallakoff, Ishihara, and Liebenow. Pet. 45. To support its
`contentions, Petitioner provides a detailed showing mapping limitations of
`claim 16 to structures taught by Pallakoff, Ishihara, and Liebenow. Id. at
`43–45. Petitioner also relies upon the Declaration of Dr. Welch (Ex. 1008)
`to support its position.
`Liebenow teaches an electronic hand-held information appliance
`having a display disposed on a first surface and an input device disposed on
`a second surface opposed to the first surface for inputting information.
`Ex. 1003, Abstract. Figure 1 of Liebenow is reproduced below.
`
`
`As shown in Figure 1 of Liebenow, digital information appliance 100
`is sized and shaped to be held by a user in both hands. Housing 102 includes
`front surface 104 and back surface. Id. ¶ 25. One or more function keys
`such as 150, 152, and 154 may be mounted on front surface 104. Display
`116 may be a touch-screen for touch or pen input of information and data.
`Id. ¶¶ 26, 33. Figure 5 of Liebenow is reproduced below.
`
`
`13
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`
`
`
`
`As shown in Figure 5, back surface may be comprised of one or more
`touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
`defined as keys of a keyboard (emulated as an electromechanical keyboard
`seen in Figure 2) so that a user touching the panel within such an area would
`accomplish actuation of a key. Id. In particular, panel 140 may be divided
`into left and right key ranges 142 and 144, such that fingers of a user’s left
`and right hands may be positioned over the touch sensitive panel to be in
`position for typing. Various key configurations may be defined as desired
`by the user or as required by the applications executed by the digital
`information appliance. Id.
`Liebenow teaches, in connection with the hand-held device, a
`processing system 502 that includes a central processing unit such as a
`microprocessor or microcontroller for executing programs, performing data
`manipulations, and controlling tasks of the hand-held device. Id. ¶¶ 21, 56,
`Fig. 13. Liebenow further teaches an electronic hand-held information
`appliance having a display disposed on a first surface and an input device
`disposed on a second surface opposed to the first surface for inputting
`information. Id. at Abstract. Liebenow teaches, in connection with the
`hand-held device, an input/output system 516 which may comprise one or
`
`14
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`more controllers or adapters for providing interface functions between one
`or more of I/O devices 518–522. Id. ¶ 62, Fig. 13.
`Claim 16
`Claim 16 directly depends from claim 15 and recites that the hand-
`held device includes a “controller receiv[ing] signals generated by the
`human user’s manipulation of the input elements of the first surface or active
`areas.” Ex. 1001, 17:33–36.
`Petitioner relies on Liebenow for its description of controllers
`included in a user’s hand-held device. Pet. 43–45. Petitioner concludes that
`one of ordinary skill in the art would have recognized that the addition of an
`input controller to Pallakoff and Ishihara handheld device would have
`reduced demands on the microprocessor and improve interactive
`responsiveness of the device. Pet. 44; Ex. 1008 ¶¶ 54–55.
`Patent Owner argues that at the time of the invention, mobile phone
`handsets typically did not include an input controller, but rather input
`elements connected directly to a processor. PO Resp. 29–30. Patent Owner
`contends that a person of ordinary skill in the art at the time of the invention
`would not have looked at the PC-type hardware architecture of Liebenow’s
`handheld device and been motivated to add such hardware to Pallakoff’s or
`Ishihara’s mobile handset device. Id. at 30.
`We are not persuaded by these arguments because the claims are not
`limited to a mobile phone device. Rather the claims are directed to handheld
`devices in general. Accordingly, a person of ordinary skill in the art would
`have considered the relevant teachings for all types of handheld devices.
`Moreover, we are not persuaded by the arguments because the arguments are
`
`15
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`again narrowly focused on combining the technicalities of the features of
`one piece of prior art with the technicalities of another prior art reference.
`We agree with Petitioner’s showing, and adopt it as our own, that
`Liebenow in combination with Pallakoff and Ishihara discloses an input
`controller as claimed in claim 16 and that adding an input controller to the
`Pallakoff and Ishihara device would have been desirable for the reasons
`provided by Petitioner.
`E. Obviousness Over Liebenow and Ishihara
`Petitioner contends that claims 37–42, 46, and 49 are unpatentable
`under 35 U.S.C. § 103 based on Liebenow and Ishihara. Pet. 48–50. To
`support its contentions, Petitioner provides a detailed showing mapping
`limitations of claims 37–42, 46, and 49 to structures taught by Liebenow and
`Ishihara. Id. Petitioner also relies upon the Declaration of Dr. Welch (Ex.
`1008) to support its position.
`Claims 37–39, 46, and 497
`Petitioner argues that Liebenow teaches a hand-held device with a
`processor for processing a selected application having two or more
`
`
`7 Patent Owner argues that we should not rely on Petitioner’s anticipation
`arguments to evaluate obviousness, but that we should observe that no
`evidence has been presented about how any proposed combination of prior
`art references renders obvious claims 37–39 and 49. PO Resp. 3–5, 31–32.
`We decline to do so. Although Petitioner alleges these claims are
`unpatentable as obvious, yet appears to present a case of anticipation, we
`determine that such a presentation is not a basis for dismissing the petition.
`It is axiomatic patent law that a disclosure that anticipates under 35 U.S.C. §
`102 also may render the claim unpatentable under 35 U.S.C. § 103, because
`anticipation is the epitome of obviousness. See In re McDaniel, 293 F.3d
`1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the
`16
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`functions. Pet. 15–23. Petitioner argues that Liebenow teaches the hand-
`held device to have a first and second surface as claimed in claim 37, for
`example. Id.
`Petitioner relies on Ishihara for its description of controlling
`movement of an automobile in a game application. Pet. 48–50; Ex. 1004 at
`6:10–14, 9:11–15. Specifically, Petitioner relies on Ishihara’s user’s
`fingertips moving left and right on the delineated active areas on the back
`surface touch panel of the hand-held device to control the automobile’s
`steering to meet the limitation of claim 40 to “the selected one of the
`plurality of applications is a game application.” Pet. 48–50. Petitioner
`concludes that one of ordinary skill in the art would have recognized that the
`hand-held device of Liebenow including multiple applications including
`word processing, calculator, web browsing, spreadsheet, etc. could also
`include a game application, like Ishihara’s automobile driving game, given
`the popularity of handheld game consoles such as Nintendo Game Boy. Pet.
`49–50; Ex. 1008 ¶¶ 60–61.
`Patent Owner argues that Liebenow and Ishihara should not be
`combined because one having ordinary skill in the art would not have
`wanted to modify Liebenow’s business oriented device with Ishihara’s
`games. PO Resp. 31. In support of the argument, Patent Owner relies on the
`testimony of Mr. Lim to show that gaming features are not desirable in the
`vertical corporate market of Liebenow’s device. Id. (citing Ex. 2009
`¶¶ 103–115). In addition, Patent Owner relies on Mr. Lim to show that
`
`
`epitome of obviousness.’”) (quoting Connell v. Sears, Roebuck & Co., 722
`F.2d 1542, 1548 (Fed. Cir. 1983)).
`
`
`17
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`incorporating Liebenow into a gaming platform is technically complex and
`requires significant modifications to the software and hardware. Id. (citing
`Ex. 2009 ¶¶ 116–120).
`Patent Owner’s expert Mr. Lim, however, acknowledged during cross
`examination that one could load games into the Liebenow device at the time
`of the invention. Ex. 1041, 125:5–126:4; 144:19–24; Ex. 1038, 278:11–20.
`In addition, both of Patent Owner’s experts Mr. Lim and Dr. MacLean
`acknowledged during cross examination that adding games to Liebenow’s
`device makes it more desirable. Ex. 1040, 24:17–18, 25:14–16; Ex. 1041,
`23:3–24:18, 62:10–22, 182:13–22; Ex. 1038, 278:11–20. Based on the
`record before us, it would have been obvious to incorporate Liebenow’s
`device with Ishihara’s games. Ex. 1042 ¶¶ 35–43.
`Patent Owner argues that Liebenow fails to teach “a selectively
`configurable sensing surface so as to provide a plurality of delineated active
`areas” and that “for each application” the memory stores “a mapping of the
`selectively configurable sensing surface to the plurality of delineated active
`areas” as recited in claim 37. In particular, Patent Owner implicitly argues
`that during prosecution, the Examiner found that Liebenow does not teach or
`suggest the aforementioned limitation and that we should give deference to
`the Examiner’s determinations. PO Resp. 32–33. We disagree that it is
`appropriate, based on the facts of this case, to give deference to the
`Examiner’s findings and determinations. Neither Petitioner nor the Board
`was involved in the ex parte prosecution of the then application. The record
`here is much more fully developed than the one before the examiner.
`Accordingly, we are not persuaded by Patent Owner’s arguments.
`
`18
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`
`
`
`Patent Owner argues that the Specification of the ’313 patent
`describes the limitation “selectively configurable sensing surface” recited in
`claim 37, as allowing applications to define (i.e., “provide”) the contours of
`the delineated active areas, whereas Liebenow’s applications merely select
`keyboards. PO Resp. 33–35. We disagree with Patent Owner’s argument
`that Liebenow’s applications merely “select” keyboards because Liebenow
`teaches “areas of the touch sensitive panel 240 may be defined to provide
`key configurations such as . . . an application specific or user defined key
`configuration” (emphasis added). Reply 15–16 (citing Ex. 1003 ¶ 44).
`Patent Owner argues that Dr. MacLean’s testimony shows that in the
`claim 37 limitation “for each application,” the mapping is specified at the
`level of the application rather than at the level of the system. PO Resp. 33–
`35 (citing Ex. 2007 ¶¶ 154–156, 165, 167). However, neither Patent Owner
`nor Dr. MacLean explain sufficiently why we should construe claim 37 that
`way. There is nothing in claim 37 that suggests how the mapping is
`specified, much less that the mapping is specified at the level of the
`application. Thus, Patent Owner’s argument regarding how the mapping is
`specified and Dr. MacLean’s testimony in support of that argument are not
`commensurate in scope with the language of claim 37, and in any event are
`conclusory, not supported by record evidence.
`For example, Patent Owner has not directed us to where in the ’313
`patent, “for each application” requires us to read into the claim that mapping
`is specified at the level of the application. The portions of the Specification
`of the ’313 patent that the parties direct attention to (PO Resp. 33–34;
`Ex. 2007 ¶¶ 154, 156; Reply 16) describe that the mapping of input elements
`to particular input functions for a given software application “may be
`
`19
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`configured in software to represent one or more delineated active areas
`corresponding to different programmable functions depending on the
`application” (emphasis added). Ex. 1001, 9:20–46; see also id. at 12:35–42
`(“a game developer may optimize the mapping of delineated active areas
`based on the best configuration for a particular game”) (emphasis added); id.
`at 8:46–50 (“the entire surface of pressure sensor pad 354 may be covered by
`horizontal rectangular active areas interspersed between small rectangular
`horizontal inactive areas to achieve any desired number of active areas”)
`(emphasis added); id. at 9:50–52 (“[o]ther configurations of the pressure
`sensor pad 354 may be realized depending on the requirements of the desired
`application”) (emphasis added). In addition, Patent Owner uses similar
`permissive language in arguing that claim 37 “makes clear that applications
`can do more than select keyboards” and “applications using the [’]313
`invention can define the very shapes of the delineations” (emphasis added).
`PO Resp. 33; see also id. at 34 (delineations “can be defined ‘in software’
`by the ‘application developer’ to provide, for example, ‘different numbers of
`sizes’ of areas”) (emphasis added); id. (applications “can use the selectively
`configurable sensing surface”) (emphasis added); id. at 35 (“application can
`stor[e] those mappings in memory) (emphasis added).
`We disagree with Patent Owner that the Specification of the ’313
`patent would have indicated to a person of ordinary skill in the art that the
`selected application must be customized at the application level. The
`language in the Specification of the ’313 patent cited in the preceding
`paragraph is permissive such that the software application may be
`customized. A person of ordinary skill in the art would have understood that
`the functionality of the selected application may be programmed at the
`
`20
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
`
`
`application l
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
