Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: June 22, 2015
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`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
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`
`
`
`
`
`
`
` Paper 11
`
`
` Entered: June 22, 2015
`
`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00533
`Patent 7,218,313 B2
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`
`I.
`INTRODUCTION
`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.”). In response, Patent Owner, Aplix IP Holdings Corporation, filed
`a Preliminary Response. Paper 10 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted “unless . . . the information presented in the petition . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we institute an inter partes review of
`claims 15, 16, 20, 37–42, and 44–51 of the ’313 patent.
`
`A. Related Matter
`The ’313 patent is involved in the following lawsuit: Aplix IP
`Holdings Corporation v. Sony Computer Entertainment, Inc. et al.,
`No. 1:14-cv-12745 (MLW) (D. Mass.). Pet. 59.
`
`B. 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
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`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.
`
`C. 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
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`surface to the plurality of delineated active areas.
`
`Ex. 1001, 19:56–20:17.
`
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Liebenow US 2002/0118175 A1 Aug. 29, 2002
`(Ex. 1003)
`Pallakoff
` US 2002/0163504 A1 Nov. 7, 2002
`(Ex. 1004)
`Ishihara
` JP 2002-77357
`
`Mar. 15, 2002
`(Ex. 1005)
`Armstrong
` US 6,469,691
`
`Oct. 22, 2002
`(Ex. 1006)
`Hedberg
` WO 1999/18495
`Apr. 15, 1999
`(Ex. 1007)
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`
`Basis
`
`References
`
`37–39 and 49
`
`§ 102(b) Liebenow
`
`15, 20, 37, and 49
`
`§ 103(a)
`
`Pallakoff and Ishihara
`
`15, 16, 20, 37–42, 46,
`and 49
`
`§ 103(a)
`
`Pallakoff, Ishihara, and Liebenow
`
`37–42, 46, and 49
`
`§ 103(a) Liebenow and Ishihara
`
`37–41 and 44–49
`
`§ 103(a) Liebenow and Armstrong
`
`37–39 and 49–51
`
`§ 103(a) Liebenow and Hedberg
`
`15, 20, 37, and 49–51
`
`§ 103(a)
`
`Pallakoff, Ishihara, and Hedberg
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`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`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, 778 F.3d 1271, 1281–1282 (Fed. Cir. 2015) (“Congress
`implicitly adopted the broadest reasonable interpretation standard in
`enacting the AIA,” and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable interpretation standard, claim
`terms are given their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`1. “substantially optimize a biomechanical effect of the human
`user’s hand” (claims 15 and 37)
`
`Petitioner proposes that “substantially optimize a biomechanical effect
`of the human user’s hand,” (claims 15 and 37) should be construed as “any
`configuration designed to take advantage of any biomechanical effect.” Pet.
`7–10. At this juncture, Patent Owner argues that Petitioner fails to
`demonstrate why construction of the phrase is necessary. Prelim. Resp. 21–
`25. We have reviewed Petitioner’s proposed construction and portions of
`the Specification of the ’313 patent that Petitioner relies on for the proposed
`construction. Based on the record before us at this juncture, we determine
`that Petitioner’s proposed construction is consistent with the broadest
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`reasonable construction, and, therefore, adopt that construction.
`
`2. “delineated active area(s)” (claim 37)
`
`Petitioner proposes construction for the claim term “delineated active
`areas,” (claim 37). Pet. 10–11. Specifically, Petitioner proposes that
`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.” Id. at 11. Patent Owner
`argues that Petitioner has submitted an unduly narrow construction for
`“delineated active areas.” Prelim. Resp. 25–30. For purposes of this
`decision, we need not construe “delineated active areas.” Even assuming
`Petitioner has an unduly narrow construction for “delineated active areas,”
`we are persuaded that it has accounted for the limitation in the prior art
`under such construction.
`
`3. “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” (claims 44 and 46, respectively)
`
`Petitioner proposes the claim term “a game function that is
`substantially optimized for actuation by the human user’s thumb” (claim 44)
`should be construed as “any game function that may be actuated by the
`user’s thumb.” Pet. 11–12. Petitioner proposes the claim term “a game
`function that is substantially optimized for actuation by one or more of the
`human user’s fingers” (claim 46) should be construed as “any game function
`mapped to a delineated active area.” Id. 12–13.
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`At this juncture, Patent Owner only argues that Petitioner fails to
`demonstrate why construction of the phrases in claims 44 and 46 are
`necessary. Prelim. Resp. 25. We have reviewed Petitioner’s proposed
`construction and portions of the Specification of the ’313 patent that
`Petitioner relies on for the proposed construction. Based on the record
`before us at this juncture, we determine that Petitioner’s proposed
`construction is consistent with the broadest reasonable construction, and,
`therefore, adopt that construction.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
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`established when the prior art itself would appear to have suggested the
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`531 F.2d 1048, 1051 (CCPA 1976).
`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).
`
`C. Obviousness of Claims over Pallakoff and Ishihara
`Petitioner asserts that claims 15 and 20 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Pallakoff and
`Ishihara. Pet. 25. To support its contentions, Petitioner provides detailed
`explanations as to how the prior art meets each claim limitation. Id. at 25–
`36. Petitioner also relies upon a Declaration of Dr. Gregory F. Welch, who
`has been retained as an expert witness by Petitioner for the instant
`proceeding. Ex. 1008.
`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.
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`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.
`Pallakoff further describes, 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
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`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. Ex. 1005,
`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.
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`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. Ex. 1005, ¶ 67; Figs. 9a and 9b.
`The present record supports the contention that Pallakoff describes a
`hand-held device for selecting an application from a plurality of
`applications, the selected application having plurality of text symbol
`functions and a plurality of shifting functions. Pet. 28–30; Ex. 1004
`(multiple paragraphs and figures cited in petition). The present record also
`supports the contention that Pallakoff describes 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
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`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
`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.
`We have reviewed the proposed ground of obviousness over Pallakoff
`and Ishihara against claims 15 and 20, and we are persuaded, at this juncture
`of the proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 15 and 20 on this ground.
`We also have considered Patent Owner’s argument that the Petition
`improperly incorporates arguments and evidence from the Declaration of
`Dr. Gregory F. Welch into the Petition. Prelim. Resp. 15–17. We agree
`that, in general, arguments must not be incorporated by reference from one
`document into another document (37 C.F.R. § 42.6(a)(3)). Here, however,
`Patent Owner’s arguments with respect to incorporation by reference are
`conclusory. Patent Owner’s sole example and explanation with respect to
`the impropriety of incorporation by reference is with respect to the
`combination of Pallakoff and Ishihara. Id. at 16. We find, however, that the
`explanation of that ground in the Petition is sufficient and, therefore, we are
`not persuaded by this example. We have reviewed those portions of Dr.
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`Welch’s Declaration, to which we are directed, with respect to the grounds
`upon which we institute, and, have determined that there is nothing unusual
`about his declaration or the way in which Petitioner relies on the declaration.
`Lastly, we have considered Patent Owner’s argument that the Petition
`improperly relies on arguments presented in claim charts. Id. at 17–20. We
`have considered the one example given by Patent Owner, but do not find
`that one example to be sufficient to dismiss the Petition, even if the
`argument with respect to that one example has some merit.
`
`D. Obviousness of Claims over Pallakoff, Ishihara, and Liebenow
`Petitioner asserts that claim 16 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the combination of Pallakoff, Ishihara, and
`Liebenow. Pet. 45. To support its contentions, Petitioner provides detailed
`explanations as to how the prior art meets each claim limitation. Id. at 43–
`45. Petitioner also relies upon a Declaration of Dr. Gregory F. Welch, who
`has been retained as an expert witness by Petitioner for the instant
`proceeding. Ex. 1008.
`Liebenow describes 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.
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`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 and may be
`manipulated by a user’s thumb. 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.
`
`
`As shown in Figure 5, the back surface may be comprised of one or
`more touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
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`defined as keys of a keyboard (emulated as an electromechanical keyboard
`seen in Figure 2) so that a user touching the panel (with the user’s fingers,
`for example) 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 further describes, 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.
`Petitioner relies on Liebenow’s hand-held device having a controller
`interfacing with touch screen 130 to meet the limitation of “the controller
`receives signals generated by the human user’s manipulation of the input
`elements of the first surface or active areas.” Pet. 23 and 45; Ex. 1003 ¶ 62.
`Petitioner concludes that one of ordinary skill in the art would have
`recognized that the hand-held device of Pallakoff and Ishihara’s hand-held
`device could be implemented with a controller interfacing with input
`elements, like Liebenow’s controller, to “improv[e] the interactive
`responsiveness of the device.” Pet. 43–45; Ex. 1008 ¶¶ 54–55.
`We have reviewed the proposed ground of obviousness over
`Pallakoff, Ishihara, and Liebenow against claim 16 and we are persuaded, at
`this juncture of the proceeding, that Petitioner has established a reasonable
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`likelihood that Petitioner would prevail in its challenge to claim 16 on this
`ground.
`
`E. Obviousness of Claims over Liebenow and Ishihara
`Petitioner asserts that claims 37–42, 46, and 49 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Liebenow and
`Ishihara. Pet. 15–24 and 48–50. To support its contentions, Petitioner
`provides detailed explanations as to how the prior art meets each claim
`limitation. Id. at 15–24 and 48–50. Petitioner also relies upon a Declaration
`of Dr. Gregory F. Welch, who has been retained as an expert witness by
`Petitioner for the instant proceeding. Ex. 1008.
`The present record supports the contention that Liebenow describes a
`hand-held device with a processor for processing a selected application
`having two or more functions. Pet. 15–23; Ex. 1003 (multiple paragraphs
`and figures cited in petition). The present record also supports the
`contention that Liebenow describes the hand-held device to have a first and
`second surface as claimed in claim 37, for example. Pet. 15–23; Ex. 1003
`(multiple paragraphs and figures cited in petition).
`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 controls 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
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`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.
`Petitioner also accounts for all of the challenged dependent claims.
`Pet. 13–24 and 48–50. Patent Owner argues that, with respect to this
`ground, the Petition does not map any part of Ishihara to claims 37–39 and
`49, but rather cites to Liebenow alone for challenging those claims. Prelim.
`Resp. 6. We are not persuaded by this argument.
`We have reviewed the proposed ground of obviousness over
`Liebenow and Ishihara against claims 37–42, 46, and 49, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`37–42, 46, and 49 on this ground.
`
`F. Obviousness of Claims over Liebenow and Armstrong
`Petitioner asserts that claims 44, 45, 47, and 48 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Liebenow and
`Armstrong. Pet. 50. To support its contentions, Petitioner provides detailed
`explanations as to how the prior art meets each claim limitation. Id. at 15–
`24 and 50–55. Petitioner also relies upon a Declaration of Dr. Gregory F.
`Welch, who has been retained as an expert witness by Petitioner for the
`instant proceeding. Ex. 1008.
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`
`Armstrong teaches a game controller with input elements mapped to
`specific game functions. Ex. 1006, Abstract; 3:10–22, 3:27–39; 3:58–4:2;
`11:40–55. Figure 11 of Armstrong is reproduced below.
`
`
`As shown in Figure 11, the user’s inputs from the game controller are
`transmitted to a game application running on an image generation machine
`such as a game console or computer connected to a display. Ex. 1006,
`10:67–11:7, 12:3–8; Fig. 11.
`Each of claims 44, 45, 47, and 48 depends ultimately from claim 37.
`Claim 44 recites a human user’s thumb actuating a game function. Claim 45
`recites the game function comprises a directional control. Each of claims 47
`and 48 recites that the human user’s fingers actuates functions of weapon
`firing control or game character jumping control.
`Petitioner relies on Armstrong’s thumb or finger controlling a
`direction of a race car to meet the limitation of claims 44 and 45 to a human
`user’s thumb actuating a game function and a directional control. Pet. 53–
`54. Petitioner relies on Armstrong’s thumb or finger controlling a variable
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`firing rate of a gun or a variable jumping height of a character to meet the
`limitations of claims 47 and 48 to weapon firing control and game character
`jumping control. Pet. 55. 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
`Armstrong’s game application, given the popularity of handheld game
`consoles such as Nintendo Game Boy. Pet. 51; Ex. 1008 ¶¶ 63–64.
`Petitioner also accounts for all of the challenged dependent claims.
`Pet. 15–24 and 50–55. Patent Owner argues that, with respect to this
`ground, the Petition does not map any part of Armstrong to claims 37–39
`and 49, but rather cites to Liebenow alone for challenging those claims.
`Prelim. Resp. 6. We are not persuaded by this argument.
`We have reviewed the proposed ground of obviousness over
`Liebenow and Armstrong against claims 44, 45, 47, and 48, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`44, 45, 47, and 48 on this ground.
`
`G. Obviousness of Claims over Liebenow and Hedberg
`Petitioner contends that dependent claims 50 and 51 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combination of Liebenow and
`Hedberg. Pet. 58–59. To support its contentions, Petitioner provides
`detailed explanations as to how the prior art meets each claim limitation. Id.
`
`19
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`
`at 56–59. Petitioner also relies upon the Declaration of Dr. Gregory F.
`Welch for support. Ex. 1008.
`Hedberg describes a hand-held display device that includes control
`buttons 3 on the display connected to control circuits, and a gyroscope 6
`incorporated in the display device and connected to the control circuits. Ex.
`1007, Abstract. The display device is responsive to movements in the space
`for displaying an image in different magnification and/or in different parts.
`Id. Hedberg describes an equilibrium of force accelerometer may be used in
`place of the gyroscope. Id. at 3:26–32.
`Each of claims 50 and 51 depends ultimately from claim 37. Each of
`claims 50 and 51 recites that the hand-held device includes an accelerometer
`or gyroscope.
`Petitioner relies on Hedberg for its description of a gyroscope or
`accelerometer included in a hand-held device. Pet. 58–59. Petitioner
`concludes that one of ordinary skill in the art would have recognized that the
`addition of a gyroscope and/or an accelerometer would have increased the
`ability to control the Liebenow hand-held device. Pet. 57; Ex. 1008 ¶ 68.
`Patent Owner does not make arguments, at this time, regarding the merits of
`this ground of unpatentability against challenged claims 50 and 51.
`Petitioner also accounts for all of the challenged dependent claims.
`Pet. 15–24 and 56–59. Patent Owner argues that, with respect to this
`ground, the Petition does not map any part of Hedberg to claims 37–39 and
`49, but rather cites to Liebenow alone for challenging those claims. Prelim.
`Resp. 6. We are not persuaded by this argument.
`
`20
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`
`
`We have reviewed the proposed ground of obviousness over
`Liebenow and Hedberg against claims 50 and 51, and we are persuaded, at
`this juncture of the proceeding, that Petitioner has established a reasonable
`likelihood that Petitioner would prevail in its challenge to claims 50 and 51
`on this ground.
`
`H. Remaining Grounds Challenging the Claims of the ’313 Patent
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R.
`§ 42.108(b).
`We have considered Patent Owner’s arguments that the Petition
`improperly presents vertically and horizontally redundant grounds, and as
`such, the Board only should consider one challenge. Prelim. Resp. 5–15.
`Based on the record before us, Patent Owner’s arguments are moot, as we
`exercise our discretion and decline to institute review based on any of the
`other asserted grounds advanced by Petitioner that are not identified below
`as being part of the trial. See, e.g., Pet. 6; 37 C.F.R. § 42.108(a).
`
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`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in challenging claims 15, 16, 20, 37–42, and 44–51
`of the ’313 patent. At this juncture, we have not made a final determination
`with respect to the patentability of the challenged claims, nor with respect to
`claim construction.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`
`Claims
`
`Basis
`
`References
`
`15 and 20
`
`§ 103(a)
`
`Pallakoff and Ishihara
`
`16
`
`§ 103(a)
`
`Pallakoff, Ishihara, and Liebenow
`
`37–42, 46, and 49
`
`§ 103(a) Liebenow and Ishihara
`
`44, 45, 47, and 48
`
`§ 103(a) Liebenow and Armstrong
`
`50 and 51
`
`§ 103(a) Liebenow and Hedberg
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`PETITIONER:
`Eric A. Buresh
`Abran J. Kean
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`abran.kean@eriseip.com
`
`PATENT OWNER:
`Michael Mauriel
`MAURIEL KAPOUYTIAN WOODS LLP
`mmauriel@mkwllp.com
`
`23
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