throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00533
`Patent 7,218,313
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2015-00533
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`Table of Contents
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`I. INTRODUCTION ............................................................................................... 1
`II. ARGUMENT ...................................................................................................... 2
`A. THE INSTITUTED GROUNDS ARE PROPERLY SUPPORTED ................................ 2
`B. HEDBERG IS ANALOGOUS ART ...................................................................... 4
`C. ALL CHALLENGED CLAIMS ARE OBVIOUS .................................................... 6
`1. Pallakoff-Ishihara Renders Claims 15 and 20 Obvious ......................... 7
`2. Pallakoff-Ishihara-Liebenow Renders Claim 16 Obvious ................... 13
`3. Liebenow-Ishihara Renders Claims 37-42, 46, and 49 Obvious .......... 14
`4. Liebenow-Armstrong Renders Claims 44,45,47,and 48 Obvious ........ 19
`5. Liebenow-Hedberg Renders Claims 50 and 51 Obvious ..................... 22
`6. PO’s Assertions About Dr. Welch Are Unsupported ........................... 23
`D. SECONDARY CONSIDERATIONS FAIL TO SHOW NONOBVIOUSNESS .............. 25
`III. CONCLUSION ................................................................................................. 25
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`INTRODUCTION
`Most of the substantive positions advanced by PO in this proceeding are a
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`I.
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`criticism of how the teachings of a secondary reference would allegedly be
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`incorporated into the physical structure of a primary reference. PO resorts to vague
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`notions of design principles, reasoning that (in the view of PO and its experts) the
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`combinations would be physically subpar. Last week, the Federal Circuit rejected
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`exactly this type of reasoning. MCM Portfolio LLC v. Hewlett-Packard Co., --- F.3d -
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`---, No. 2015-1091, 2015 WL 7755665, at *9-10 (Fed. Cir. Dec. 2, 2015). “[T]he test
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`is what the combined teachings of the references would have suggested to those of
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`ordinary skill in the art.” Id. Even where physical incorporation of one technology into
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`another would have conflicted, there was no error in the finding the claimed subject
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`matter obvious. Id. For exactly the same reason, PO’s arguments are fatally flawed,
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`because PO focuses on combining one physical structure into another, and overlooks
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`what the combinations would have suggested to a PHOSITA.
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`Another prominent and flawed theory in PO’s argument involves interpreting
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`prior art teachings. Without identifying any support for its approach, PO relies on a
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`form of hyper-rigid textualism. According to PO, a PHOSITA must consider only the
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`narrowest possible interpretation of language, blinding herself to other interpretations
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`or implications of prior art teachings. The Supreme Court and Federal Circuit have
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`instructed otherwise. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
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`(“A person of ordinary skill is also a person of ordinary creativity, not an
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`automaton.”); MCM Portfolio, 2015 WL 7755665, at *9-10.
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`PO’s remaining positions involve reading limitations from the specification
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`into the claims, or excluding scope from the field of endeavor that the inventors of the
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`‘313 Patent explicitly included in the specification. These theories are rooted in
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`oversimplifications of the record and misapplications of the law. The Board should
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`consider the entire record, rather than the limited and oversimplified view that PO
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`promotes. When the correct legal principles for obviousness and claim interpretation
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`are applied, the Board should find that all Challenged Claims are unpatentable.
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`II. ARGUMENT
`A. The Instituted Grounds are Properly Supported
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`In its Response, PO renews an argument presented in its Preliminary Response
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`that the Petition only maps Liebenow to claims 37-39 and 49. See Paper 15, Response
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`at 5-14. According to PO, the Board’s decision to proceed on obviousness grounds
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`instead of anticipation created a fatal flaw in this proceeding, and PO would now have
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`the Board find that patentability of these claims must be confirmed regardless of their
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`substantive merit. See id. The Board should reject PO’s position for two reasons.
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`First, PO’s argument has already been rejected, and PO has not identified any
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`reason for the Board to reach a different outcome. PO still has not identified any
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`authority to support its conclusion that a rejection based on a prior art combination
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`must cite to underlying evidence from every reference that comprises the
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`combination. See id. There is no support for this rigid rule, and there is nothing to
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`prevent the Board from rejecting claims as obvious in view of a prior art combination
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`even where the relevant teachings for a particular claim come from a single reference.
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`Second, PO’s argument is legally flawed because, based on the record in this
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`proceeding, the evidence of anticipation also shows obviousness. A claim may be
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`rendered obvious if all of its limitations are disclosed in a single prior art reference
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`because “anticipation is the epitome of obviousness.” In re McDaniel, 293 F.3d 1379,
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`1385 (Fed. Cir. 2002); see also Invensense, Inc. v. STMicroelectronics, Inc., IPR2013-
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`00241, Paper 20 (PTAB Nov. 26, 2013). Once it is established that a single prior art
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`reference discloses each limitation of a claim, there is no need to further apply the
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`remaining references. See, e.g., ADC Technology, Inc. v. Nintendo of North Am., Inc.
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`et al., Reexam Nos. 95/001,234 and 90/009,521 (PTAB May 28, 2015); see also
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`Vibrant Media, Inc. v. General Electric Co., IPR2013-00170, Paper No. 56 at 37 and
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`Paper No. 55 at 13 (PTAB Jun. 26, 2014 and Apr. 8, 2014).
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`On this record, the evidence is overwhelming that: (1) Liebenow, either alone
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`or in combination with Ishihara, discloses all elements of claims 37-39 and 49; (2) any
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`combinations of Liebenow and Ishihara would have been obvious to a PHOSITA; and
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`(3) there are no secondary considerations sufficient to overcome the strong showing
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`of obviousness. Thus, the Board should conclude, inter alia, that claims 37-39 and 49
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`are obvious in view of Liebenow and Ishihara.
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`B. Hedberg is Analogous Art
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`Without proposing a definition for the field of endeavor of the ‘313 Patent, and
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`without identifying any evidence to support a narrow understanding of the scope of
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`analogous art here, PO concludes that Hedberg is not analogous. See Paper 15,
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`Response at 7-14. Once the field of endeavor is correctly defined, applying that
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`definition to Hedberg shows that the reference is analogous art. Support for defining
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`the field of endeavor come from a patent’s “written description and claims, including
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`the structure and function of an invention.” In re Bigio, 381 F.3d 1320, 1326 (Fed.
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`Cir. 2004). The field of endeavor for the ‘313 Patent should be defined to include:
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`“hand-held electronic devices with one or more input elements.” See, e.g., Ex. 1001,
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`‘313 Patent at Claims; Col. 1:5-11; 4:25-37; 6:16-20; 7:50-65; 8:31-52; Figs. 1-3a;
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`see also, e.g., In re Shaneour, 600 Fed. App’x. 734, 738 (Fed. Cir. 2015).
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`Like in the copending proceedings, no authority cited by the PO supports a
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`narrower definition for the ‘313 Patent’s field of endeavor. Clay limited the field of
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`endeavor to scope that was explicitly required by the claims and the context of the
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`specification, and Wang Labs. found no error where the field of endeavor excluded
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`scope that was explicitly distinguished by the patent. See In re Clay, 966 F.2d 656,
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`657-58 (Fed. Cir. 1992); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 863 (Fed.
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`Cir. 1993). PO’s proposition here is something different. PO would exclude from the
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`field of endeavor scope that is explicitly included by the ‘313 Patent. None of the
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`cases cited by PO supports PO’s view. Rather, these cases support the conclusion that
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`the field of endeavor should be construed as broadly as the patentee has described and
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`claimed it to be. See id.; see also In re Singhal, 602 Fed. App’x 826, 830 (Fed. Cir.
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`2015). Nearly 20 years after Clay and Wang Labs. the Federal Circuit rejected PO’s
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`position that courts generally decline to construe analogous art broadly, explaining
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`that the Supreme Court’s KSR decision “directs us to construe the scope of analogous
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`art broadly….’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
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`(quoting KSR, 550 U.S. at 420); Google Inc. v. Jongerius Panoramic Techs., LLC,
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`IPR2013-00191, Paper 70 at 25-27 (PTAB Aug. 12, 2014); Euro-Pro Operating LLC
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`v. Acorne Enterprises, LLC, IPR2014-00352, Paper 36 at 30-31 (PTAB Jul. 9, 2015).
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`Turning to Hedberg specifically, it is within the field of endeavor of the ‘313
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`Patent because Hedberg describes and illustrates a hand-held device with several input
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`elements. See Ex. 1007, Hedberg at p. 3:6-11; Fig. 5; see also, e.g., Ex. 1040,
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`MacLean Tr. at 120:8-121:22 (“[Hedberg] teaches the use of a handheld data entry
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`device for a different purpose.”). According to PO’s own expert, a PHOSITA would
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`have recognized that the device described in Hedberg could be used for data entry and
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`that embodiments in the ‘313 Patent could include a display. See Ex. 1040, 1st
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`MacLean Tr. at 86:16-87:1, 88:7-21, 120:8-121:22; see also, e.g., Ex. 1007, Hedberg
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`at p. 3:6-11, Fig. 5; Ex.1001, ‘313 Patent at Fig. 3a. Indeed, the examples from
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`Hedberg identified by Dr. MacLean as being repurposed to implement the Hedberg
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`invention are explicitly included in the written description of the ‘313 Patent. See Ex.
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`1040, MacLean Tr. at 120:8-121:22; compare Ex. 1007, Hedberg at p. 3:20-25 with
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`Ex.1001, ‘313 Patent at 1:5-11. Put simply, Hedberg and the ‘313 Patent involve the
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`very same type of devices.
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`PO’s argument should also be rejected because PO and its expert conflate the
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`two separate analogous art inquiries, and assert that Hedberg must be outside the field
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`of endeavor because of the problems that it allegedly addresses. See Ex. 1040, 1st
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`MacLean Tr. at 119:14-23. This analysis is irrelevant to the field of endeavor inquiry.
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`See, e.g., Bigio, 381 F.3d at 1325. PO has not identified any evidence or any reason
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`why the field of endeavor here should be defined narrowly, or why Hedberg should
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`not be included. See Paper 15, Response at 5-14; see also Bigio, 381 F.3d at 1327.
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`The Board should define the field of endeavor to include hand-held electronic devices
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`with one or more input elements, and find that Hedberg is within that definition.
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`C. All Challenged Claims Are Obvious
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`Like in the copending proceedings, PO’s arguments misapply three legal
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`principles. First, PO focuses on alleged problems encountered when incorporating
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`features of a secondary reference into the physical structure of a primary reference,
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`which is the wrong analysis. MCM Portfolio, 2015 WL 7755665, at *9-10 (quoting
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`In re Keller, 642 F.2d 413, 425 (CCPA 1981)); see also, e.g., Customplay, LLC v.
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`Clearplay, Inc., IPR2014-00339, Paper 27 at 21 (PTAB Jul. 21, 2015). Second, PO
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`improperly assumes that prior art teaches away from concepts that are not disclosed,
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`and that alleged inferiority of a combined device bars obviousness. See In re Fulton,
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`391 F.3d 1195, 1200-01 (Fed. Cir. 2004); see also DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); In re Mouttet, 686 F.3d
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`1322, 1334 (Fed. Cir. 2012). Third, PO’s improperly reads limitations from the
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`specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
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`Cir. 1993) (“limitations are not to be read into the claims….”); Hill-Rom Servs., Inc. v.
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`Stryker Corp., 755 F.3d 1367, 1372-73 (Fed. Cir. 2014); see also, e.g., EMC Corp. v.
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`Clouding Corp., IPR2014-01217, Paper 37 at 11, 16 (PTAB Oct. 22, 2015); Apple
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`Inc. v. Arendi, IPR2014-00206, Paper 32 at 11 (PTAB Jun 9, 2015).
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`1.
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`Pallakoff-Ishihara Renders Claims 15 and 20 Obvious1
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`It would have been obvious to a PHOSITA to combine Pallakoff and
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`1 PO has submitted its own translation of Ishihara, but PO does not rely on that
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`document, and PO’s experts based their opinions on the version submitted by Petitioner.
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`See generally Paper 15, Response; see also Ex. 1038, 2nd Lim Tr. at 255:18-256:19; Ex.
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`1037, 2nd MacLean Tr. at 181:14-183:17. Further, Dr. Welch has reviewed both
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`translations, and explained that there are no differences that are material to the
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`obviousness inquiry in this proceeding. See Ex. 1042, Welch Supp. Decl. at ¶ 50.
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`Ishihara in the manner proposed in the Petition, and even PO’s expert agrees that
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`this combination would have yielded predictable results. See Ex. 1037, 2nd
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`MacLean Tr. at 150:6-16. As outlined in the Petition, this combination simply
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`takes the touchpad like the one disclosed on the back of the device in Ishihara, and
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`includes that concept into hand-held devices like embodiments in Pallakoff. PO’s
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`challenges to this combination are based on flawed premises and focus on adding
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`the pieces of the secondary references to the bodily structure of Pallakoff.
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`First, PO alleges that this combination is built upon a misstatement of the
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`references, incompatible reasons for combining, and a hypothetical combined
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`device. See Paper 15, Response at 17-19. This summary of PO’s positions
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`illustrates a misunderstanding of the law and facts. As for the law, in a correct
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`obviousness analysis there is no “hypothetical device,” and there is no
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`compatibility test that reviews whether the physical structures of two references fit
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`perfectly. See id.; see also MCM Portfolio, 2015 WL 7755665, at *9-10. Instead, the
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`inquiry looks to what the prior art would teach a PHOSITA, and whether the claimed
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`invention would have been obvious in light of those teachings. See id. As for the facts,
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`Pallakoff speaks for itself, and the plain language of the reference would teach a
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`PHOSITA that one possibility is to include modifier buttons on the back. See
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`generally Ex. 1004, Pallakoff; see also id. at [0200], [0323]; see also Ex. 1037, 2nd
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`MacLean Tr. at 99:17-24 (PHOSITA reviewing Pallakoff could envision other
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`ways to use the teachings there, even if they are not a “good idea” in her view).
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`Second, PO asserts that Pallakoff teaches away from the combination
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`because the reference discloses “modifier buttons on the side only.” Paper 15,
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`Response at 19-21 (emphasis in original). This is simply not true. See, e.g., Ex.
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`1037, 2nd MacLean Tr. at 100:8-23 (no explicit teaching away in Pallakoff from
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`putting modifier buttons on the back);125:6-25 (agreeing that Pallakoff does teach
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`modifier buttons in places other than on the side). Furthermore, the claims do not
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`require anything on the front, back, or side of a device. See, e.g., Ex. 1001, ‘313
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`Patent at Claim 15. The claims just require input elements on a first surface and a
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`second surface, and even PO cannot contest that both Pallakoff and Ishihara teach
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`this. See id.; see also Paper 15, Response at 19-21; Paper 2, Petition at 25-43.
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`Moreover, PO’s characterizations of Pallakoff are not accurate. Despite PO’s
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`insistence that modifier buttons are only on the side, Pallakoff states that “[a]s with
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`every other face-key or side-button described in this patent, the exact position and
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`names of the face-keys or side-buttons can vary.” Ex. 1004, Pallakoff at [0200]
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`(emphasis added). In that same paragraph, Pallakoff notes that one place for keys is
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`“on the back of the device where the user could operate them using one or more
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`fingers.” See id. PO attempts to dismiss this teaching with textualism. Paper 15,
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`Response at 19-21. But PO’s improperly narrow view overlooks what the context
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`of the discussion would teach a PHOSITA, and also ignores other disclosures in
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`Pallakoff. See, e.g., Ex. 1004, Pallakoff at [0196] (“buttons can be added to the
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`face (or even the back) of the phone to allow users to switch between functions”),
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`[0323] (“[t]he modifier buttons can be placed in any appropriate location.”). PO’s
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`reasoning is flawed because the existence of a preferred embodiment should not be
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`understood to teach away from all other possible embodiments. See, e.g., Fulton,
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`391 F.3d at 1200. Furthermore, Pallakoff need not expressly identify modifier buttons
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`on the back in order for the combination with Ishihara to render the claimed invention
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`obvious to a PHOSITA. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10.
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`Third, PO asserts that the combination of Pallakoff and Ishihara would not
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`work because Pallakoff discloses pressing two or more modifier buttons at once. See
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`Paper 15, Response at 21-22. Notably, the claims in the ‘313 Patent have nothing to
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`do with pressing two modifier buttons at once. See, e.g., Ex. 1001, ‘313 Patent at
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`Claim 15. PO is simply criticizing the bodily incorporation of non-claimed features
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`from Ishihara into the structure of Pallakoff, which is once again precisely the type of
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`analysis that the Federal Circuit has recently rejected. See, e.g., MCM Portfolio, 2015
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`WL 7755665, at *9-10. Moreover, the whole premise of PO’s argument here—that
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`multi-touch was unknown to PHOSITAs in October 2003—is completely wrong. See
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`Ex. 1038, 2nd Lim Tr. at 267:16-269:19 (multi-touch at least available in research
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`environments and demonstrations in Oct. 2003); Ex. 1037, 2nd MacLean Tr. at 250:4-
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`18 (declaration statement about availability of multi-touch was inaccurate), 262:14-21
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`(multi-touch sensing in handheld devices has been known since at least 1985); Ex.
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`1042, Welch Supp. Decl. at ¶¶ 2-15. As Dr. Welch explains, PO’s expert conflates
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`hardware’s ability to detect simultaneous touches with software’s ability to interpret
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`complex gestures. See id. Multi-touch sensing was known at least as early as the mid-
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`1980’s, and several references already of record show that this was well known at the
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`time of the ‘313 Patent. See id. (discussing Exs. 1003 and 1016). This basic
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`technology would have been well within the background knowledge of a PHOSITA,
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`and there would have been no difficulties in enabling Pallakoff to detect multiple
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`simultaneous touches using existing touch pad technology. See id.
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`Fourth, PO asserts that both Pallakoff and Ishihara teach away from the benefit
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`of programmable reconfiguration and repositioning of key mappings. See Paper 15,
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`Response at 22-26. PO first argues that modifier buttons can only have a single
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`function. See id. at 23. PO next argues the exact opposite, and says that Pallakoff is
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`clear that its keys could be mapped to different functions. See id. at 23-24. Turning to
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`the concept of repositioning, PO first argues that button position in Pallakoff must
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`remain the same. See id. at 24-25. Hedging again, PO next argues that Pallakoff
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`already teaches repositioning. See id at 25-26. This rollercoaster of reasoning makes
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`no sense, but it seems PO is doing everything it can to frame this discussion as
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`“heads-I win; tails-you lose.” See id. at 22-26. PO’s argument should be rejected
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`because, once again, PO is constructing and criticizing a hypothetical that physically
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`incorporates features from one reference into the structure of another. See, e.g., MCM
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`Portfolio, 2015 WL 7755665, at *9-10.
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`Fifth, PO asserts that it “would not work well” to combine the touch panel
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`described in Ishihara with the Pallakoff device. See Paper 15, Response at 26-28.
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`Again, this argument ignores the claims of the ‘313 Patent and ignores what the
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`combination of Pallakoff and Ishihara would teach a PHOSITA. See id. Instead, PO is
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`searching to identify problems with including a feature from Ishihara into the structure
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`of Pallakoff, and this argument has no applicability to a proper obviousness analysis.
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`See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10. Indeed, the ‘313 Patent does
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`not claim any “fast typing purpose” or typing using “three fingers of the hand,” and it
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`is irrelevant whether Ishihara would “work well” to enable such purposes.
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`Sixth, PO asserts that the combination of Pallakoff and Ishihara fails to teach a
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`processor communicatively coupled to a host electronic device. See Paper 15,
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`Response at 28-29. But for a citation to Dr. MacLean, PO does not provide any
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`reasoning or evidence to support this conclusion. See id. Dr. MacLean’s declaration is
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`focused on a “local host,” and claim 20 says nothing about a “local” host or local
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`network. Compare Ex. 2007, MacLean Decl. at ¶¶ 126-29 with Ex. 1001, ‘313 Patent
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`at Claim 20. And even Dr. MacLean agrees that a “host” is broader than a “local host”
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`and that a server is an electronic device. Ex. 1037, 2nd MacLean Tr. at 142:10-14;
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`see also Ex. 1001, ‘313 Patent at 13:66-14:24 (describing Internet).
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`Pallakoff-Ishihara-Liebenow Renders Claim 16 Obvious
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`2.
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`PO asserts that it would not have been obvious to include an input controller
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`into Pallakoff or Ishihara. See Paper 15, Response at 29-30. One flaw in PO’s
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`reasoning is that, once again, PO is focused on including functionality from a
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`secondary reference into the physical structure of a primary reference, which is
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`improper. See, e.g., MCM Portfolio, 2015 WL 7755665, at *9-10. Another flaw is
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`that the premise that Liebenow is limited to PC-type architecture is simply untrue.
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`Liebenow explicitly teaches exemplary embodiments including “electronic books,
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`personal digital assistants (PDAs) and portable information handing systems.” Ex.
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`1003, Liebenow at [0002]; see also Ex. 1042, Welch Supp. Decl. at ¶¶ 46-47. Even
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`Mr. Lim agrees that these devices would not be limited to PC-type architecture and
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`that input controllers were common with input assemblies. See Ex. 1038, 2nd Lim
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`Tr. at 283:15-284:8 (PDAs could include other architecture), 226:13-228:5 (“most
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`common way” for an input assembly to communicate would be to “have a signal
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`that can [be] receive[d] by [an] input controller….”), 238:2-11 (Pallakoff firmware
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`could be executed on an input controller); see also Ex. 1042, Welch Supp. Decl. at
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`¶¶ 48-49 (processors supported input controllers for handheld devices for years
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`prior to the ‘313 Patent, and the input controller of Liebenow would have been
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`compatible with the devices described in Pallakoff and Ishihara). Focusing the
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`obviousness inquiry on the right analysis, it would have been obvious to combine
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`Liebenow’s input controller into the teachings of Pallakoff and Ishihara, and a
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`PHOSITA would have been motivated to do so. Ex. 1013, Welch Decl. at ¶ 59.
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`3.
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`Liebenow-Ishihara Renders Claims 37-42, 46, and 49 Obvious
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`Petitioner cites to Ishihara for the straightforward proposition that it would have
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`been obvious to a PHOSITA to include a game application with gaming functions on
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`a device like the one described in Liebenow. See Paper 2, Petition at 48-50. Games
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`and game functions were generally well known, and the utility of Ishihara for these
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`claims is that it explicitly discloses game applications. See, e.g., Ex. 1041, Lim Tr. at
`
`74:9-75:14 (games and claimed game functions were known in Oct. 2003). PO
`
`attempts to confuse the issue and to make this seem much more complicated than it is.
`
`a.
`
`Liebenow and Ishihara are Properly Combinable
`
`Liebenow and Ishihara are properly combinable because it would have been
`
`obvious for a PHOSITA to add games to the device described in Liebenow. See, e.g.,
`
`Ex. 1041, 1st Lim Tr. at 125:5-126:4 (“So I think your question is could someone load
`
`games into Liebenow device, I think they could.”), 144:19-24 (Solitaire “probably
`
`could run” on Liebenow); Ex. 1038, 2nd Lim Tr. at 278:11-20 (it would have been
`
`“easy” for consumers to load some games onto Gateway computers in Oct. 2003, as it
`
`is not “rocket science”); see also Ex. 1042, Welch Supp. Decl. at ¶¶ 42-43 (combining
`
`Liebenow with Ishihara would yield predictable results). And a PHOSITA would
`
`have been motivated to make this combination because games on a device like the one
`
`
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`14
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`IPR2015-00533
`U.S. Patent No. 7,218,313
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`described in Liebenow would make the device more desirable. See, e.g., Ex. 1040, 1st
`
`MacLean Tr. at 24:17-18 (“games have been available for every device that was ever
`
`made, I think.”), 25:14-16 (Palm included games “[b]ecause people like to play
`
`games.”); see also, e.g., Ex. 1041, Lim Tr. at 23:3-24:18 (“in the computer industry,
`
`there’s always a way that people would like to go into consumer market….”), 62:10-
`
`22 (discussing the company he founded in 2001 and the hand-held device they
`
`designed to include games, stating: “we want to do the best possible [job] knowing the
`
`market, doing the best possible job, produce the best product that would be the quote,
`
`unquote, best acceptance by the market.”), 182:13-22 (agreeing that a PHOSITA
`
`would be motivated to include games on a handheld device such as the Nokia 3210,
`
`stating: “probably would, if he can make money – I mean it’s a business….”); see also
`
`Ex. 1042, Welch Supp. Decl. at ¶¶ 35-41. As discussed in more detail below in
`
`response to arguments in the Liebenow-Armstrong discussion, PO’s arguments to the
`
`contrary rest on flawed premises and inaccurate assertions.
`
`b.
`
`Liebenow-Ishihara Discloses Claim 37
`
`PO strives to characterize the claims as involving one type of technology (PO
`
`calls it “providing”) and Liebenow as teaching another (PO calls it “selecting.”). See
`
`Paper 15, Response at 31-35. In reality, the teachings of Liebenow are just like
`
`embodiments in the ‘313 Patent. Compare Ex. 1003, Liebenow at [0044] (“areas of
`
`the touch sensitive panel 240 may be defined to provide key configurations such as a
`
`
`
`15
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`

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`IPR2015-00533
`U.S. Patent No. 7,218,313
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`telephone keypad, or an application specific or user defined key configuration.”) with
`
`Ex. 1001, ‘313 Patent at 9:20-46 (sensor pad “may be configured in software to
`
`represent one or more delineated active areas corresponding
`
`to different
`
`programmable functions depending on the application.”) (emphases added).
`
`In its argument, PO uses permissive language when describing the ‘313 Patent.
`
`See Paper 15, Response at 33 (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”); 34 (applications “can use the selectively configurable
`
`surface ….”); 35 (“application can stor[e] those mappings in memory”) (emphases
`
`added). This is the heart of the claim interpretation debate. If PO’s point is that claim
`
`37 can include scope other than what is taught in Liebenow, then Petitioner agrees,
`
`and claim 37 is still unpatentable. If instead PO pivots from this view to conclude,
`
`incorrectly, that claim 37 must require the application to define contours of delineated
`
`active areas, or that applications must store delineations in memory, then Petitioner
`
`and even PO’s expert disagree. See Ex. 1040, 1st MacLean Tr. at 155:24-156:11; see
`
`also id. at 41:12-43:9, 47:20-25, 48:8-13, 50:1-14, 69:19-71:7, 74:17-75:5, 75:19-
`
`76:3, 132:1-4, 155:24-156:11; Ex. 1038, 2nd MacLean Tr. at 21:12-24; Ex. 1042,
`
`Welch Supp. Decl. at ¶¶ 23-31, 32-34. There is no support in ‘313 Patent for this
`
`narrow view. Van Geuns, 988 F.2d at 1184-85; Hill-Rom, 755 F.2d at 1372-73.
`
`PO’s argument about the prosecution history does not resuscitate claim 37. See
`
`
`
`16
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`

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`IPR2015-00533
`U.S. Patent No. 7,218,313
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`Paper 15, Response at 32-33. The file history should not dictate the outcome of this
`
`proceeding, because there is a much more robust record here than what the examiner
`
`was able to consider. For instance, the examiner did not have the benefit of expert
`
`witness testimony, including testimony from PO’s expert. See supra.
`
`b.
`
`Liebenow-Ishihara Discloses Claims 40-42 And 46
`
`PO challenges the application of Liebenow-Ishihara to claims 40-42 and 46.
`
`See Paper 15, Response at 35-38. Claim 40 directs that “the selected one of the
`
`plurality of applications is a game application.” Ex. 1001, ‘313 Patent at Claim 40.
`
`PO suggests that the notion of using the Liebenow device for games would have been
`
`beyond the grasp of a PHOSITA. See Paper 15, Response at 35-38. Yet even PO’s
`
`experts agree that the use of handhelds for gaming was widely known at the time. See
`
`Supra at II.C.3. A PHOSITA would just need to see Liebenow’s teaching of everyday
`
`use, and realize that one popular use is gaming. See Ex. 1003, Liebenow at [0003]; see
`
`also Ex. 1042, Welch Supp. Decl. at ¶¶ 35-41.
`
`PO also suggests that implementation would somehow be more complex in a
`
`gaming environment, and that a PHOSITA would only use one surface. See Paper 15,
`
`Response at 36-38. The inventors of the ‘313 Patent did not share PO’s assumption
`
`that a PHOSITA would lack skill or even minimal creativity. See generally Ex. 1001,
`
`‘313 Patent. The inventors described mapping game functions to input elements as a
`
`straightforward process that “can be customized by the software application developer
`
`
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`17
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`IPR2015-00533
`U.S. Patent No. 7,218,313
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`or the user through downloads or other programming modalities.” See id. at 5:49-55.
`
`Indeed, as an implementation matter, combining Ishihara with Liebenow would
`
`have been straightforward, and within the ordinary creativity of a PHOSITA. Ex.
`
`1008, Welch Decl. at ¶ 60. It is undisputed that Ishihara explicitly teaches mapping
`
`directional controls of a driving game to active areas on the touch panel switch on
`
`the back of the device. See, e.g., Ex. 1005, Ishihara at [0033], [0067], Figs. 9(a)-
`
`(b); see also, Paper 15, Response at 36. Furthermore, a PHOSITA having ordinary
`
`creativity would have understood that input elements on the front surface of
`
`Liebenow could also be mapped to game functions. Ex. 1042, Welch Supp. Decl. at
`
`¶ 42-43. As explained by Dr. Welch in his deposition, when implementing a
`
`racing game such as that described by Ishihara, a PHOSITA would understand that
`
`additional functions such as speed up/slow down would be needed to implement
`
`the game. Ex. 2048, 2nd Welch Tr. at 48:13-49:4. Dr. Welch further explained that
`
`a PHOSITA would understand these game functions could be mapped to input
`
`elements on the front or back surfaces of the device. Id.
`
`PO’s remaining arguments do not support patentability. See Paper 15,
`
`Response at 36-38. For instance, PO draws some distinction between simple and
`
`sophisticated games, and suggests that only simple games would be included on
`
`Liebenow, and that simple games would only use one surface for input. See id. This
`
`distinction between simple and sophisticated games is nowhere in claim 40 or the
`
`
`
`18
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`IPR2015-00533
`U.S. Patent No. 7,218,313
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`‘313 Patent, and is not relevant to the obviousness inquiry. See generally Ex. 1001,
`
`‘313 Patent. And there is no reason to believe that a so-called simple game could not
`
`use multiple inputs, on multiple surfaces. See supra (discussing implementation). PO
`
`also argues that Ishihara does not teach the claimed sensing surface. See Paper 15,
`
`Response at 37-38. PO’s characterizations of Ishihara are wrong, as explained above.
`
`See supra at II.C.1-2. But here PO’s characterizations are also irrelevant, because a
`
`PHOSITA would understand that a touchpad like the one disclosed in Liebenow
`
`would be taught by this combination. Se

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