INTER PARTES REVIEW
`U.S. PATENT NO. 7,280,097
`
`O R A L A R G U M E N T, M A R . 3 0 , 2 0 1 6
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`Sony Computer Entertainment America LLC v. Aplix IP Holdings Corporation
`Case IPR2015-00729; U.S. Patent No. 7,280,097
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`Petitioner’s DX-1
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`U.S. PATENT NO. 7,280,097
`
`O R A L A R G U M E N T, M A R . 3 0 , 2 0 1 6
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`
`
`Sony Computer Entertainment America LLC v. Aplix IP Holdings Corporation
`Case IPR2015-00729; U.S. Patent No. 7,280,097
`
`Petitioner’s DX-1
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`‘097 PATENT - ABSTRACT
`‘O97 PATENT - ABSTRACT
`
`Ex. 1001 at Abstract
`Ex. 1001 of Abs’rro<:’r
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`Petitioner’s DX-2
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`‘097 PATENT – EXEMPLARY CLAIM
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`Ex. 1001 at Claim 1
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`Petitioner’s DX-3
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`INSTITUTED GROUNDS
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`• Claims 1-4, 7, 8, 13, 14, 16-28, 21, 23-29, 31, and 34-38 obvious over
`Mollinari and Nishiumi
`• Claims 6, 22, and 32 obvious over Mollinari, Nishiumi, and Tu
`• Claims 10-12 obvious over Kerr and Lum
`• Claims 5, 9, 19, and 30 anticipated by Shima
`
`• PO’s Challenges in Response
`• Claim Construction
`• Nishiumi and Tu are not analogous art
`• Prior art missing limitations
`
`Paper 13, Institution Decision at 14; Paper 21, Response
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`Petitioner’s DX-4
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`HAND-HELD HOST DEVICE
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`• The term hand-held host device must at least include laptops,
`because the inventors of the ‘097 Patent described it that way.
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`Paper 26, Reply at 10-11; Ex. 1001 at 14:36-42
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`Petitioner’s DX-5
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`HAND-HELD HOST DEVICE
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`Paper 26, Reply at 10-11; Ex. 1001 at Claims 27, 38
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`Petitioner’s DX-6
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`PATENT OWNER’S VIEW
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`• Inclusion of laptops in specification is a “typo.”
`
`• But “where claims can reasonably [be] interpreted
`to include a specific embodiment, it is incorrect to
`construe the claims to exclude that embodiment,
`absent probative evidence [to] the contrary.”
`• Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008).
`• See also In re Katz, 639 F.3d 1303, 1324 (Fed. Cir. 2011)
`(“there is a strong presumption against a claim construction
`that excludes a disclosed embodiment.”).
`
`Ex. 1041, 3rd Lim Tr. At 113:12-121:21; Paper 26, Reply at 9-11
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`Petitioner’s DX-7
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`INPUT CONTROLLER
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`• The term input controller is not limited to devices
`that interpret signals before transmitting to the host
`• The claims just require the input controller to
`generate and relay an input signal:
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`Ex. 1001 at Claim 1
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`Petitioner’s DX-8
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`PATENT OWNER’S VIEW
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`• The input controller must “interpret input data and
`convert it to an input signal ready to be mapped to
`control functions of a software application.”
`• But this requirement is not in the claims.
`• And the specification includes an embodiment where the
`interpretation occurs at the host, not the input controller.
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`Paper 21, Response at 27-29; Ex. 1001 at 11:41-46
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`Petitioner’s DX-9
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`INPUT ELEMENT ON A SURFACE
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`• The term “input element” should be understood to
`include any input or selection type known to one of
`skill in the art, just as the ‘097 Patent describes.
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`Ex. 1001 at 18:27-31
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`Petitioner’s DX-10
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`PATENT OWNER’S VIEW
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`• Input elements must be limited to “structure[s]
`designed to be interacted with by way of direct
`contact with the thumb or finger.”
`• But this requirement is not in the claims.
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`Paper 21, Response at 29-30; Ex. 1001 at Claim 2
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`Petitioner’s DX-11
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`CONFIGURED TO OPTIMIZE A
`BIOMECHANICAL EFFECT
`• The term should be defined to mean exactly what
`the inventors of the ‘097 Patent defined it to mean.
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`Ex. 1001, at Abstract
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`Petitioner’s DX-12
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`PATENT OWNER’S VIEW
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`• The term requires pinching or squeezing.
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`• But this is not required by the claims.
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`• And limiting the term to pinching or squeezing is at-odds
`with the explicit definition provided by the ‘097 Patent itself.
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`Paper 21, Response at 30-31
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`Petitioner’s DX-13
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`PRIOR ART - MOLLINARI
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`Ex. 1003 at Fig. 1a
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`Petitioner’s DX-14
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`PRIOR ART - NISHIUMI
`PRIOR ART - NISI-IIUMI
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`Ex. 1004 at Figs. 7, 8
`EX- 1004 C” H95 7/ 8
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`Pe’ri’rioner’s DX—15
`Petitioner’s DX-15
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`NISHIUMI – SAME FIELD OF ENDEAVOR
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`• The field of endeavor should be defined to include
`at least “hand-held input devices for interacting
`with electronic devices”
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`Ex. 1001 at 1:11-18
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`Petitioner’s DX-16
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`NISHIUMI – SAME FIELD OF ENDEAVOR
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`• Not limited to hand-held hosts like cellular phones
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` •
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` Indeed, PO has accused Sony game controllers of
`infringement in the related district court litigation
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`Ex. 1001 at 19:42-48; Paper 26, Reply at 4; Ex. 2005 at ¶¶ 18, 20, 53
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`Petitioner’s DX-17
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`NISHIUMI – REASONABLY PERTINENT
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`• Nishiumi describes a Nintendo controller with a
`joystick (i.e., analog input)
`• Inventors expressly stated a desire to include analog
`input features from commercial game controllers
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`Ex. 1001 at 5:8-17; see also generally Ex. 1004
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`Petitioner’s DX-18
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`PRIOR ART – TU
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`Ex. 1005 at Fig. 4
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`Petitioner’s DX-19
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`TU – SAME FIELD OF ENDEAVOR
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`• Tu describes a game controller, i.e., a hand-held
`input device for interacting with electronic devices
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`Ex. 1005 at [0033]
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`Petitioner’s DX-20
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`TU – REASONABLY PERTINENT
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`• Tu describes the same problem as the ‘097 Patent
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`Compare Ex. 1001 at 12:30-36 with Ex. 1005 at [0012]
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`Petitioner’s DX-21
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`MOLLINARI-NISHIUMI
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`• PO’s Arguments
`• 1. No motivation to combine
`• 2. Mollinari does not disclose the claimed input controller
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`• Motivation to Combine
`• Including input elements on the rear and side of a device
`was an obvious design choice with predictable results
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`Paper 21, Response at 33-36; see also Ex. 1009, Welch Decl. at ¶¶ 41-45
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`Petitioner’s DX-22
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`MOLLINARI-NISHIUMI
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`• Input Controller
`• PO alleges that the claims exclude raw unstructured data,
`and that Mollinari teaches only raw unstructured data
`• In reality, neither the claims nor Mollinari say this
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`Ex. 1001 at Claim 1
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`Petitioner’s DX-23
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`MOLLINARI-NISHIUMI
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`• Input Controller – Mollinari:
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`Ex. 1003 at 10:36-11:7
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`Petitioner’s DX-24
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`MOLLINARI-NISHIUMI
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`• Input Controller – Dr. Welch:
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`Ex. 1039 at ¶ 27
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`Petitioner’s DX-25
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`MOLLINARI-NISHIUMI-TU
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`• Tu teaches rapid text input for claims 6, 22, and 32
`• PO contends Tu’s text entry would not work with a host that
`had a hardware interface like a keypad
`• PO also contends that Tu’s text entry would not work on
`screens smaller than a “generous television screen”
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`• Tu explicitly teaches otherwise:
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`Paper 21, Response at 40-41; Ex. 1005 at [0033]
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`Petitioner’s DX-26
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`KERR-LUM
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`• Claims 10-12 are obvious over Kerr-Lum
`• PO criticizes the combination because Kerr fails to articulate
`“what kind of ‘processing’ it might perform”
`
`• Claims 10-11 do not recite a processor; claim 12 requires:
`
`• That is what Kerr describes:
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`Paper 21, Response at 41-44; Ex. 1001 at Claim 12; Ex. 1007 at [0087]
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`Petitioner’s DX-27
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`KERR-LUM
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`• PO also asserts:
`• “[N]othing in Kerr discloses or suggests that Processor 805
`‘stores and executes instructions relating to firmware or a
`gaming application’”
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`• None of the claims require this:
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`Paper 21, Response at 44; Ex. 1001 at Claims 10-12
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`Petitioner’s DX-28
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`KERR-LUM
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`• In any event, Kerr discloses a processor with memory and
`executing firmware and gaming functions
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` •
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` Further, a PHOSITA would have understood that in order to
`receive an act on instructions, a processor would store them
`• See Ex. 1039 at ¶¶ 46-47
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`Ex. 1007 at [0087]-[0088]
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`Petitioner’s DX-29
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`KERR-LUM
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`• Finally, PO asserts that Kerr fails to disclose an input controller
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`• But Kerr explicitly describes monitoring operating states of
`buttons and transferring that data to a wireless phone:
`
` •
`
` A PHOSITA would have understood that state monitoring is one
`of the more important roles of an input controller
`• See Ex. 1039 at ¶ 29
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`Paper 21, Response at 44-45; Ex. 1007 at [0089]
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`Petitioner’s DX-30
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`SHIMA
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`• Shima anticipates claims 5, 9, 19, and 30
`• For example, compare claim 5 and Shima:
`
`Ex. 1001 at Claim 5; Ex. 1006 at Figs. 3, 4
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`Petitioner’s DX-31
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`SHIMA
`
`• PO contends that the device described in Shima is
`not used with a hand-held host
`• This is a claim construction issue, because there is no dispute
`that Shima discloses using the device with a laptop
`• And as discussed before, the ‘097 Patent defines and claims
`the term hand-held host to include a laptop
`
`• PO contends that the device described in Shima
`does not teach three surfaces with input assemblies
`• Again this is a claim construction issue, and the claims do
`not require direct contact with fingers or a thumb
`• The mouse device in Shima is an input element on a surface
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`Paper 21, Response at 46-53; Paper 26, Reply at 23-25; Ex. 1006 at Figs. 3, 4
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`Petitioner’s DX-32
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`SHIMA
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`• Finally, PO contends that the device
`disclosed in Shima is not optimized
`• Again this is a claim construction issue
`• In the ‘097 Patent, this means: including,
`on one surface, input element(s)
`manipulatable by the user’s thumbs or
`fingers and, on another surface, input
`element(s) manipulatable by the user’s
`fingers
`• Shima discloses a device that meets this
`limitation
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`Paper 21, Response at 54-56; Paper 26, Reply at 23-25; Ex. 1006 at Figs. 3, 4
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`Petitioner’s DX-33
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`INTER PARTES REVIEW
`U.S. PATENT NO. 7,932,892
`
`O R A L A R G U M E N T, M A R . 3 0 , 2 0 1 6
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`
`
`Sony Computer Entertainment America LLC v. Aplix IP Holdings Corporation
`Case IPR2015-00730; U.S. Patent No. 7,932,892
`
`Petitioner’s DX-34
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`INSTITUTED GROUNDS
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`• Claims 1-4, 6, and 7 obvious over Mollinari and Nishiumi
`• Claim 11 obvious over Mollinari and Jacobi
`• Claim 5 obvious over Mollinari, Nishiumi, and Tu
`• Claims 8-10 obvious over Kerr and Lum
`
` •
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` Substantial overlap with the issues in the ‘097 Proceeding
`• No need for claim construction and analysis related to Shima
`• One unique issue: combination of Mollinari and Jacobi for Claim 11
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`Paper 11, Institution Decision at 18
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`Petitioner’s DX-35
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`MOLLINARI-JACOBI
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`• Jacobi teaches the concepts of claim 11:
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`Compare Ex. 1001 at Claim 11 with Ex. 1005 at ¶ [0030]
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`Petitioner’s DX-36
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`MOLLINARI-JACOBI
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`• PO asserts that there would have been no reason to
`modify the controller disclosed in Mollinari
`• But Jacobi describes embodiments
`integrated into remote controls:
`
`Paper 19, Response at 35-38; Ex. 1003 at Fig. 1a; Ex. 1005 at [0017]
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`Petitioner’s DX-37
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`U.S. Patent No. 7,280,097
`IPR2015-00729
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 25, 2016
`the foregoing Petitioner’s Demonstrative Exhibits was served via electronic filing with
`the Board on the following counsel of record for Patent Owner:
`
`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
`
`
`skahn@mkwllp.com
`
`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
`
`
`sdunlop@greeneespel.com
`
`
`kzhao@greeneespel.com
`
`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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`U.S. Patent No. 7,280,097
`IPR2015-00729
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`Respectfully submitted,
`
`ERISE IP, P.A.
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`
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`
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`BY: /s/ Abran J. Kean
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`
`
`Eric A. Buresh, Reg. No. 50,394
`
`Abran J. Kean, Reg. No. 58,540
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`ATTORNEYS FOR PETITIONER
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`Dated: March 25, 2016
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