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. IPR2015-00729
`Patent 7,280,097
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION
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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. IPR2015-00729
`Patent 7,280,097
` ____________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION
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`INTRODUCTION
`Petitioner respectfully requests that the Board consider the record, rather than
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`IPR2015-00729
`U.S. Patent No. 7,280,097
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`I.
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`Patent Owner’s (“PO”) characterizations of the record, in determining patentability of
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`U.S. Patent No. 7,280,097 (“the ‘097 Patent”). PO’s observations are misleading,
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`because the observations either mischaracterize the record, or include assertions that
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`are not supported by the record.
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`II. RESPONSES TO OBSERVATIONS
`1.
`PO’s observation mischaracterizes the record and is not relevant. In his
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`original declaration Dr. Welch provided a summary of his relevant experience and
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`also attached his curriculum vitae. See Ex. 1009, Welch Decl.; Ex. 1010, Welch CV.
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`PO ignored this evidence, and ignored the agreed-upon PHOSITA definition, and
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`manufactured a new requirement of “hands-on experience,” suggesting that Dr. Welch
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`had none. See Paper 21, Response at 7-8. Of course, Dr. Welch has plenty of relevant
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`hands-on experience, as he explained in even more detail in his supplemental
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`declaration. See Ex. 1039, Welch Supp. Decl. Now, PO again ignores the evidence
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`and the agreed-upon PHOSITA definition, and implies that Dr. Welch’s experience is
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`insufficient because some of it occurred during graduate school and with teams. See
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`PO Motion. PO’s observation is troubling because PO again misrepresents the record
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`and invents rules to fit its theories rather than crafting theories to fit the law and facts.
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`The implication that Dr. Welch has no relevant post-graduate school experience is
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`1
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`IPR2015-00729
`U.S. Patent No. 7,280,097
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`demonstrably false. See, e.g., Ex. 1039, Welch Supp. Decl. at ¶¶ 11-13; see also
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`generally Ex. 1009, Welch Decl.; Ex. 1010, Welch CV. But even more fundamentally,
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`there is no support anywhere in the record for PO’s new rule that working knowledge
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`must come from experience done in isolation and after graduate school.
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`2.
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`The testimony cited in this observation does not support PO’s assertion.
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`Dr. Welch explained that this term, like many technology terms, have no “well-
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`defined, absolute accepted meaning.” Ex. 2032, Welch Tr. at 18:21-22:19. A
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`PHOSITA would look to the context, and what the inventors said, in order to
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`understand what the term means in a patent. See id.; see also Ex. 1001, ‘097 Patent at
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`14:36-42; Claim 38. Because the inventors explicitly included laptops as an example
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`of a handheld host device, the patent speaks for itself and there is no “apparent
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`inconsistency.”
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`3.
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`The testimony cited in this observation is not relevant to any issue in this
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`proceeding. See Ex. 2032, Welch Tr. at 22:20-23:12. There is no need for expert
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`testimony to identify what the ‘097 Patent itself says, and the ‘097 Patent includes
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`various embodiments of hand-held devices—some that explicitly include laptops. See
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`id.; see also Ex. 1001, ‘097 Patent at 14:36-42; Claim 38. This is not construing “by
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`implication,” but rather following the explicit teachings of the patent.
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`4.
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`The testimony cited in this observation does not support PO’s assertion.
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`Dr. Welch explained that he had not opined on the automobile keyless entry, and
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`U.S. Patent No. 7,280,097
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`declined to speculate about that concept. See Ex. 2032, Welch Tr. at 24:1-29:17. Then,
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`Dr. Welch explained that “[t]here could be many places I could imagine [the host]
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`would be located.” See id. In any event, PO’s observation supports Petitioner’s point.
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`Claim 38 limits the “plurality of hand-held host devices” first recited in independent
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`Claim 27 to a specific set of devices, and that list includes laptops. See Ex. 1001, ‘097
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`Patent at Claim 38. PO would apparently go further and include automobiles as
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`within the scope of Claim 38. PO is wrong about this—the claim says “automobile
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`keyless entry unit,” not just “automobile.” See id. But assume that PO is right. If so,
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`observing that the claim can be broadly construed to include automobiles (something
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`not recited) does not support the conclusion that the claim, and its antecedent, should
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`be construed narrowly to exclude laptops (something that is recited).
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`5.
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`The testimony cited in this observation is not relevant to any issue in this
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`proceeding. See Ex. 2032, Welch Tr. at 55:22-6-:20; 63:1-70:3. The question is
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`whether the mouse device in Shima is an input assembly on a surface, not how other
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`commercial handheld devices such as
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`the
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`iPhone may have
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`implemented
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`accelerometers or gyroscopes. No part of the relevant analysis requires finding that a
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`gyroscope or accelerometer would be on a surface.
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`6.
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`The testimony cited in this observation is not necessary. See Ex. 2032,
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`Welch Tr. at 29:21-30:20. PO’s counsel just read a portion of Dr. Welch’s sworn
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`supplemental declaration into the record and asked Dr. Welch to confirm it. See id.
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`3
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`IPR2015-00729
`U.S. Patent No. 7,280,097
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`PO’s observation mischaracterizes Dr. Welch’s testimony. Dr. Welch
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`7.
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`explained that “raw” data is an ill-defined concept, and that he was attempting to
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`convey that “Mollinari utilizes a communication transfer that’s something like a
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`sender puts things into an envelope, packages them up, hands them off to somebody
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`else, and somebody else opens the envelope and takes the things out and passes them
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`on.” See Ex. 2032, Welch Tr. at 30:21-37:22. PO’s attorney was attempting to get Dr.
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`Welch to state that his earlier testimony was wrong, and Dr. Welch explained that it
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`was not, but that it “maybe could have been articulated better.” See id.
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`8.
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`PO’s observation mischaracterizes Dr. Welch’s testimony. Dr. Welch
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`explained that he did not offer an opinion about the claim construction of input
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`controller or input signal. See Ex. 2032, Welch Tr. at 45:12-48:21. Attempting to
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`respond to an incomprehensible question that asked about the meaning of input signal
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`under various standards, Dr. Welch explained that generally the term could apply to a
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`“wide range of possible signaling mechanisms.” See id. This testimony has nothing to
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`do with Petitioner’s construction, nothing to do with specific claim limitations, and
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`nothing to do with claim vitiation of any kind.
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`9.
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`PO’s observation mischaracterizes Dr. Welch’s testimony, and this
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`testimony is not relevant to any issue in this proceeding. There are at least two input
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`controller embodiments described in the ‘097 Patent, and a PHOSITA would
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`understand that the claims are drafted broadly to cover both. See Ex. 2032, Welch Tr.
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`4
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`IPR2015-00729
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`at 48:22-53:25; see also id. at 77:16-78:21. Furthermore, there is no need to construe
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`what it means for an input controller to “interpret” or “convert” signals because those
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`concepts are not in the claims. The claims just require an input controller to “generate
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`an input signal upon actuation of at least one of the plurality of input elements and …
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`relay the input signal to the communication channel for transmission to the hand-held
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`host device….” See, e.g., Ex. 1001, ‘097 Patent at Claim 1.
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`10.
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`PO’s observation mischaracterizes Dr. Welch’s testimony. Dr. Welch
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`explained that PHOSITA would understand that a processor stores instructions in
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`order to execute them. See Ex. 2032, Welch Tr. at 72:20-77:3. All the testimony cited
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`by PO is consistent with that opinion, which PO does not seriously deny. The
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`attempted characterization of Processor 805 as “not a hardware processor” is
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`irrelevant to the truth and accuracy of Dr. Welch’s opinion.
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`Respectfully submitted,
`ERISE IP, P.A.
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`/Abran J. Kean/ _
`Eric A. Buresh, Reg. No. 50,394
`Abran J. Kean, Reg. No. 58,540
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
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`BY:
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`IPR2015-00729
`U.S. Patent No. 7,280,097
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`abran.kean@eriseip.com
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`ATTORNEYS FOR PETITIONER
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`6
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`IPR2015-00729
`U.S. Patent No. 7,280,097
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 11, 2016 the
`foregoing Petitioner’s Response to Patent Owner’s Motion for Observation was served via
`electronic filing with the Board on the following counsel of record for Patent Owner:
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`Michael Mauriel, USPTO Reg. No. 44,226
`Sherman W. Kahn (pro hac vice)
`MAURIEL KAPOUYTIAN WOODS LLP
`15 West 26th Street, Floor 7
`New York, NY 10010
`Telephone: (212) 529-5131 Ex. 101
`Facsimile:
`(212) 529-5132
`E-mail:
`mmauriel@mkwllp.com
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`skahn@mkwllp.com
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`Robert J. Gilbertson (pro hac vice)
`Sybil L. Dunlop (pro hac vice)
`X. Kevin Zhao (pro hac vice)
`GREENE ESPEL PLLP
`222 South Ninth Street, Ste. 2200
`Minneapolis, MN 55402
`Telephone: (612) 373-0830
`Facsimile:
`(612) 373-0929
`E-mail:
`bgilbertson@greeneespel.com
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`sdunlop@greeneespel.com
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`kzhao@greeneespel.com
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`Jason Bartlett (pro hac vice)
`MAURIEL KAPOUYTIAN WOODS LLP
`1517 North Point Street, #454
`San Francisco, CA 94123
`Telephone: (415) 992-3420
`Facsimile: (415) 992-3421
`E-mail:
`JBartlett@mkwllp.com
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`IPR2015-00729
`U.S. Patent No. 7,280,097
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/ Abran J. Kean
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`Eric A. Buresh, Reg. No. 50,394
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`Abran J. Kean, Reg. No. 58,540
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`ATTORNEYS FOR PETITIONER
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`Dated: March 11, 2016
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