Trials@uspto.gov Paper 35
`571-272-7822
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`Date Entered: July 20, 2016
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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 IPR2015-00729
`Patent 7,280,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
`I.
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`INTRODUCTION
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`We have jurisdiction to hear this inter partes review under 35 U.S.C.
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`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
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`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
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`shown by a preponderance of the evidence that claims 1–14, 16–19, 21–32,
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`and 34–38 of U.S. Patent No. 7,280,097 B2 are unpatentable.
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`IPR2015-00729
`Patent 7,280,097 B2
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`A. Procedural History
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`
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`Petitioner, Sony Computer Entertainment America LLC, filed a
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`Corrected Petition requesting an inter partes review of claims 1–14, 16–19,
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`21–32, and 34–38 of U.S. Patent No. 7,280,097 B2 (Ex. 1001, “the ’097
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`patent”). Paper 4 (“Pet.”). Patent Owner, Aplix IP Holdings Corporation,
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`filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). Upon
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`consideration of the Petition and Preliminary Response, on July 22, 2015,
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`we instituted an inter partes review of claims 1–14, 16–19, 21–32, and 34–
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`38, pursuant to 35 U.S.C. § 314. Paper 13 (“Dec.”).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 21 (“PO Resp.”)) and Petitioner filed a Reply (Paper 26
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`(“Reply”)). Patent Owner filed a Motion for Observations (Paper 28) and
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`Petitioner filed a Response to the Observations (Paper 32). An oral hearing
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`was held on March 30, 2016, and a transcript of the hearing is included in
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`the record (Paper 34 (“Tr.”)).
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`B. Related Proceedings
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`The ’097 patent is involved in the following lawsuit: Aplix IP
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`Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
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`(MLW) (D. Mass.). Pet. 59.
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`C. The ’097 Patent
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`The ’097 patent relates to hand-held input acceleration devices that
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`interface with electronic devices, such as cell phones, personal digital
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`assistants (“PDAs”), pocket personal computers, smart phones, hand-held
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`game devices, bar-code readers, MP3 players and other similar input devices
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`having a keypad or one or more input elements. Ex. 1001, 1:10–18. The
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`Patent 7,280,097 B2
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`hand-held input acceleration device transfers data bi-directionally with a
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`
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`hand-held host device. Id. at Abstract.
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`D. Illustrative Claim
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`Claims 1, 16, and 27 are the only independent claims. Claims 2–14,
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`17–19, 21–26, 28–32, and 34–38 directly or indirectly depend from one of
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`claims 1, 16, and 27.
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`Claim 1, reproduced below, is illustrative.
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`An input accelerator device for controlling a hand-held
`1.
`host device, the input accelerator device comprising:
`a communication channel configured to interface with the
`hand-held host device;
`an input assembly comprising a plurality of input
`elements, each input element being configured to be selectively
`mapped to one or more functions of a software application in
`order to minimize actuation required of at least one input element
`of the hand-held host device; and
`an input controller communicatively coupled to the input
`assembly and the communication channel, the input controller
`being configured to generate an input signal upon actuation of at
`least one of the plurality of input elements and being further
`configured to relay the input signal to the communication
`channel for transmission to the hand-held host device to control
`execution of the one or more functions of the software
`application mapped to the actuated input element.
`
`Ex. 1001, 20:32–50.
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`E. Grounds of Unpatentability
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`
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`We instituted an inter partes review of claims 1–11 on the following
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`grounds:
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`Claims
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`Basis
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`Reference(s)
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`1–4, 7, 8, 13, 14, 16–
`18, 21, 23–29, 31, and
`34–38
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`§ 103(a) Mollinari1 and Nishiumi2
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`6, 22, and 32
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`§ 103(a) Mollinari, Nishiumi, and Tu3
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`5, 9, 19, and 30
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`§ 102(b)
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`Shima4
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`10–12
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`
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`§ 103(a) Kerr5 and Lum6
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`II. ANALYSIS
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`A. Level of Skill of Person in the Art
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`We find that the level of ordinary skill in the art is reflected by the
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`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
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`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
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`1 WO 2004/007041 A2; Jan. 22, 2004 (Ex. 1003, “Mollinari”).
`2 U.S. Patent No. 5,903,257; May 11, 1999, (Ex. 1004, “Nishiumi”).
`3 U.S. Patent Application Publication No. 2004/0139254 A1; July 15, 2004
`(Ex. 1005, “Tu”).
`4 U.S. Patent Application Publication No. 2002/0198030 A1; Dec. 26, 2002
`(Ex. 1006, “Shima”).
`5 U.S. Patent Application Publication No. 2004/0137983 A1; July 15, 2004
`(Ex. 1007, “Kerr”).
`6 U.S. Patent Application Publication No. 2005/0221894 A1; Oct. 6, 2005
`(Ex. 1008, “Lum”).
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`B. Claim Interpretation
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`
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
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`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015)
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`(“We conclude that Congress implicitly approved the broadest reasonable
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`interpretation standard in enacting the AIA”), aff’d sub nom. Cuozzo Speed
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`Techs., LLC v. Lee, No. 15–446, 2016 WL 3369425, at *12 (U.S. June 20,
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`2016). Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). Also, we must be careful not to read a particular embodiment
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`appearing in the written description into a claim if the claim language is
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`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
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`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
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`specification.”). However, an inventor may provide a meaning for a term
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`that is different from its ordinary meaning by defining the term in the
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`specification with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`input controller configured to generate an input signal . . . to control
`execution of the one or more functions of the software application
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`
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`In our Decision to Institute, we determined that it was not necessary to
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`construe any terms. Dec. 4–5. Patent Owner subsequently proposed a
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`construction for the claim 1 term an “input controller configured to generate
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`an input signal . . . to control execution of the one or more functions of the
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`software application” to be defined as an “‘input controller’ that can
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`
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`interpret input data and convert it to an input signal ready to be mapped to
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`control functions of a software application.” PO Resp. 27–29.
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`Patent Owner argues that the aforementioned “input signal” must be
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`more than raw, unstructured input data. Id. (citing Ex. 1001, 11:10–17,
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`13:3–5, 15:42–48). Moreover, Patent Owner argues raw, unstructured input
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`data must undergo at least some additional interpretation before it can be
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`mapped to an application function and used to control the function’s
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`execution. Id. at 28 (citing Ex. 2009 ¶¶ 68–70). We are not persuaded to
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`import this narrowing construction from the Specification based on the
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`examples argued, because the Specification of the ’097 patent does not
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`include a special definition or any disavowal. Rather, we agree with
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`Petitioner’s argument that the plain language of claim 1, in light of the
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`Specification of the ’097 patent, does not require the scope of the
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`aforementioned claim 1 limitation to require the input controller to interpret
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`or pre-map input signals to software functions. Reply 12–13 (citing
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`Ex. 1001, 11:41–46). We, therefore, decline to adopt Patent Owner’s
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`narrow construction. We, instead, decline to construe the aforementioned
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`term.
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`hand-held host device
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`Patent Owner also proposed a construction for the term “hand-held
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`host device.” PO Resp. 26–27. Patent Owner asserts that the term covers
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`only devices designed to be used while held in a user’s hand, such as cell
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`phones, PDAs, or tablets, but not devices that merely can be hand-carried,
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`such as “laptop computers and other devices having a keyboard designed to
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`be used with two-handed typing which the device is resting on a table or
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`lap.” Id. Patent Owner argues that the Specification reference to “similar
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`
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`input devices having a keypad” was intended to distinguish from devices
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`with a keyboard. Id. at 27 (citing Ex. 1001, 1:10–18, 2:8–12).
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`In one embodiment, the input accelerator device may communicate
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`“with a variety of hand-held devices such as a cellular phone, PDA, pocket
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`PC, smart phone, laptop, or other similar devices . . . .” See Ex. 1001,
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`14:36–42. Additionally, claim 38 explicitly lists a laptop as a hand-held host
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`device (which can be hand carried) by way of antecedent basis to claim 27.
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`Reply 10–11. We, therefore, decline to adopt Patent Owner’s narrow
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`construction. We, instead, decline to construe the aforementioned term.
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`input element . . . on [a] surface
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`Patent Owner also proposed a construction for the term “input element
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`. . . on [a] surface.” PO Resp. 29–30. Patent Owner asserts that the phrase
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`is most broadly understood as a control element “manipulatable by the user’s
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`finger(s).” Id. (citing Ex. 1001, Abstract). Patent Owner argues that the
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`Specification’s reference to “biomechanical effect of a human user’s
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`opposing thumb and forefinger” was intended to limit the claims to input
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`elements that the fingers actually touch. Id. However, certain claims
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`specifically refer to “biomechanical effect of a human user’s opposing
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`thumb and forefinger,” while others do not. We, therefore, decline to adopt
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`Patent Owner’s narrowing interpretation. Finally, Patent Owner argues that
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`claim 4 lists sixteen alternative embodiments of surface input elements, all
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`of which involve direct manipulation by the fingers. Id. However, as Patent
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`Owner acknowledges, these are merely “alternative embodiments” rather
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`than a special definition, or a disavowal. Id. In addition, claim 4 is a
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`dependent claim and we decline to import a limitation of claim 4 into other
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`claims.
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`Patent Owner has not cited to sufficient evidence from the
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`Specification that the patentee intended to limit the claims to direct contact
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`with the fingers or thumb. We, therefore, decline to adopt Patent Owner’s
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`narrow construction. We, instead, decline to construe the aforementioned
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`term.
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`configured to optimize a biomechanical effect of the human user’s
`opposing thumb and fingers
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`
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`Patent Owner also proposed a construction for the term “configured to
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`optimize a biomechanical effect of the human user’s opposing thumb and
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`fingers.” PO Resp. 30–31. Patent Owner states “A person of skill in the art
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`would understand that input assemblies “configured to optimize a
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`biomechanical effect of the human user’s opposing thumb and fingers’ are
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`those arranged to take advantage of the natural forces and movements
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`achievable by human digits arranged in opposition to each other. Id. at 30.
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`Patent Owner also emphasizes the ability to pinch and squeeze and pull apart
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`that are part of the concept of “opposing,” but does not seek to limit the
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`claims to pinching and squeezing. Id. Patent Owner’s proposed
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`construction primarily rearranges the words of the claim and provides an
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`example without clarifying the meaning of any disputed word. Patent
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`Owner, rather, emphasizes the use of the plain English word “opposing.”
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`We determine that it is not necessary to construe this term for purposes of
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`this decision.
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`C. Obviousness over Mollinari and Nishiumi
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`
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`Petitioner contends that claims 1–4, 7, 8, 13, 14, 16–18, 21, 23–29,
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`31, and 34–38 are unpatentable under 35 U.S.C. § 103 based on Mollinari
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`and Nishiumi. Pet. 7–27. To support its contentions, Petitioner provides a
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`detailed showing, mapping limitations of claims 1–4, 7, 8, 13, 14, 16–18, 21,
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`23–29, 31, and 34–38 to structures taught by Mollinari and Nishiumi. Id.
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`Petitioner also relies upon the Declaration of Dr. Gregory F. Welch
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`(Ex. 1009) to support its position.7
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`Mollinari teaches a game controller holding a releasable mobile
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`telecommunication terminal. Ex. 1003, Abstract. Figure 1 of Mollinari is
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`reproduced below.
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`
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`As shown in Figure 1 of Mollinari, the game controller includes inputs
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`11, 12, 13 on a front surface for user commands. Mollinari teaches a first set
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`of keys 11 that are used to activate certain game functions, while a second
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`set of keys 12 are used for navigational purposes. Id. at 6:30–33. Mollinari
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`7 Patent Owner argues that the Board should give Dr. Welch’s testimony
`little weight. PO Resp. 7–8, 35–36. We are not persuaded by the
`arguments. The evidence to which we are directed does not support the
`conclusion that Dr. Welch is not a credible witness. See id; Ex. 1039 ¶¶ 2–
`13.
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`teaches transmitting the user commands using data transmission means to
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`and from mobile telecommunications terminal 3, 3a, 3b, 3c held by the game
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`controller. Id. at Abstract. Mollinari teaches user commands as a user
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`pressing buttons or moving a joy-stick to react to events of a game installed
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`on their mobile phone and re-mapping the user commands into a scan code
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`required by a game application. Id. at 7:4–12, 11:9–12:21. Mollinari’s data
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`transmission means may include an electromechanical connector, wireless
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`infrared, wired infrared, other optical interfaces, or wireless short range
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`radio data transmission such as Bluetooth. Id. at 6:25–26, 7:15–25, Fig. 9.
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`Nishiumi teaches a game controller having inputs on a front surface
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`and a bottom surface. Ex. 1004, 7:1–5. Figures 7 and 8 of Nishiumi are
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`reproduced below.
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`As shown in Figure 7 of Nishiumi, there are numerous front surface
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`inputs including designation switch 403, input keys 404A–F, and analog
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`joystick 45. See also Ex. 1004, 6:45–67. In addition, as shown in Figure 8
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`
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`of Nishiumi, bottom surface switch 407 is formed approximately at the
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`center of the game controller, and side surface switches 406L, 406R are
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`located on the side of the game controller. See also id. at 6:45–7:1–5.
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`Nishiumi Is Analogous Art
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`Patent Owner argues that Nishiumi is not analogous art because it is
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`neither in the same field of endeavor as the ’097 patent nor reasonably
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`pertinent to the particular problem addressed by the ’097 inventors. PO
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`Resp. 10–19, 32–33. We have considered Patent Owner’s arguments, but do
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`not find them persuasive.
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`The test for determining whether a prior art reference constitutes
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`analogous art to the claimed invention is: (1) whether the prior art is from
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`the same field of endeavor, regardless of the problem addressed, or (2) if the
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`reference is not within the field of the inventor’s endeavor, whether the
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`reference still is reasonably pertinent to the particular problem with which
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`the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
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`2004).
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`Patent Owner conflates the two prong analogous art test. In an
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`attempt to define the field of invention of the ’097 patent, Patent Owner
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`looks to the problems solved by the inventors and argues that the ’097 patent
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`is concerned with streamlining interactions with hand-held host devices like
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`PDAs and smart phones. PO Resp. 14–15. Such a showing is insufficient to
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`establish the field of endeavor.
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`In determining the field of endeavor, we look to the ’097 patent’s
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`written description and claims, including the structure and function of the
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`invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
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`defining the field of invention, and in determining the relevance of Nishiumi
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`to the obviousness inquiry, here a broad approach should be taken. Reply 4–
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`7. Indeed, the Supreme Court provided guidance in determining the
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`applicability of a reference’s teachings in an obviousness inquiry. In KSR
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`Int’l Co. v. Teleflex Inc., the Court explained that if a feature has been used
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`to improve one device, and a person of ordinary skill in the art would have
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`recognized that it would improve a similar device in that field or another,
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`implementing that feature on the similar device is likely obvious. KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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`Here, the appropriate scope of the field of endeavor is at least hand-
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`held input devices for interfacing with electronic devices. Ex. 1001, 1:10–
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`19, 5:48–54, 14:35–41. Patent Owner characterizes Nishiumi as being in the
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`field of recalibrating joystick origin points to address joystick-manufacturing
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`defects. PO Resp. 10–14. However, in arriving at that description, Patent
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`Owner too narrowly characterizes the Nishiumi invention. Nishiumi is
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`within the field of endeavor because it teaches hand-held input devices for
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`interfacing with electronic devices. Ex. 1004, Abstract, 1:5–12, Figs. 7–8.
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`Because we find that Nishiumi is within the same field of endeavor as
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`the claimed invention, we need not consider Patent Owner’s arguments
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`regarding whether Nishiumi is reasonably pertinent to the particular problem
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`with which the inventors are involved. PO Resp. 15–19.
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`Claims 1, 13, 14, 16, 25–27, and 36–388
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`As to claims 1, 16, and 27, Petitioner argues that Mollinari teaches an
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`input accelerator (game controller 2, 2a, 2b, 2c) with a communication
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`8 Patent Owner argues that we should not rely on Petitioner’s anticipation
`arguments to evaluate obviousness, but that we should observe that no
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`channel (data transmission means 57) to interface with a hand-held host
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`device (mobile phone 3c). Pet. 10–22. Petitioner argues that Mollinari
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`teaches mapping selectively one or more input elements (control elements
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`11 and/or 13 to its right and control elements 12 and/or 13 to its left) to one
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`or more functions of a software application running (a game) on the hand-
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`held host device to control the mapped one or more functions of the
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`application in order to minimize actuation required of at least one input
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`element of the hand-held host device (button/key and/or joystick). Id.
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`Petitioner argues that Mollinari teaches an input controller (controller 42)
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`communicatively coupled to the input assembly and communication
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`channel, the input controller being configured to generate an input signal
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`(commanded statement in AT-command format) upon actuation of at least
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`one of the plurality of elements, and further configured to relay the input
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`(scan code) to the communication channel for transmission to the hand held
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`host device to control execution of the one or more functions of the software
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`application mapped to the actuated input element. Id.
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`evidence has been presented about how any proposed combination of prior
`art references renders obvious claims 1, 13, 14, 16, 25–27, and 36–38. PO
`Resp. 5–7. We decline to do so. Although Petitioner alleges claims 1, 13,
`14, 16, 25–27, and 36–38 are unpatentable as obvious, yet appears to present
`a case of anticipation, we determine that such a presentation is not a basis for
`dismissing the petition. It is axiomatic patent law that a disclosure that
`anticipates under 35 U.S.C. § 102 also may render the claim unpatentable
`under 35 U.S.C. § 103, because anticipation is the epitome of obviousness.
`See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled
`that ‘anticipation is the epitome of obviousness.’”) (quoting Connell v.
`Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
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`As to claims 13, 14, 25, 26, 36, and 37, Petitioner argues Mollinari
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`teaches a serial I/O port and a wireless Bluetooth connection. Pet. 16. As to
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`claim 38, Petitioner argues that Mollinari teaches using mobile phones or
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`personal digital assistants. Pet. 22.
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`Patent Owner argues that the combination of Mollinari and Nishiumi
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`fails to teach the claim 1 limitation an “input controller [being] configured to
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`generate an input signal . . . to control execution of the one or more
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`functions of the software application.” PO Resp. 32, 37–40. Patent Owner
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`explains Mollinari teaches merely “raw,” “unstructured” user input data
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`rather than the “raw,” “unstructured” data additionally undergoing
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`processing before it is ready to be used to control execution of the functions
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`of a software application. Id. at 27, 32–35.
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`We disagree with Patent Owner that claim 1 requires “raw,”
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`“unstructured” data undergoing additional data processing before it is ready
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`to be used to control execution of the functions of a software application for
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`the reasons discussed supra in Part II.B. Moreover, as discussed supra in
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`Part II.B., we declined to construe the aforementioned claim 1 term to be
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`limited as Patent Owner suggests.
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`Claims 16 and 27 contain essentially the same limitations as claim 1.
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`Patent Owner does not argue claims 13, 14, 16, 25–27, and 36–38
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`separately. PO Resp. 10–40. We agree with Petitioner’s showing, as recited
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`above, which we adopt as our own, that Mollinari in combination with
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`Nishiumi would have rendered obvious claims 1, 13, 14, 16, 25–27, and 36–
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`38.
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`Claims 2–4, 7, 8, 17, 18, 21, 23, 24, 28, 29, 31, 34, and 35
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`Petitioner argues that Nishiumi’s i) control elements 11 and/or 13 to
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`its right and control elements 12 and/or 13 to its left, ii) bottom surface
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`switch 407 and input keys 404A–F, iii) side surface switches 406L/406R,
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`and iv) analog joystick 45, v) control element 12 (for navigation), vi) control
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`element 11 (to activate a function in a game) meet the limitations of i) “first
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`one of the plurality of input elements being located on a front surface”
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`(claims 2, 17, and 28), ii) “second one of the plurality of input elements, the
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`second one of the plurality of input elements being located on a rear surface”
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`(claims 2, 17, and 28), iii) “a third one of the plurality of input elements, the
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`third one of the plurality of input elements being located on a side surface”
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`(claims 3, 18, and 29), iv) “a miniature analog thumb joystick,” (claims 4,
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`21, and 31), v) “the front input . . . configured to accelerate . . . navigational
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`control” (claims 7, 23, and 34), and vi) the front input . . . configured to
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`accelerate game play” (claims 8, 24, and 35) respectively. Pet. 24–28.
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`Petitioner concludes that one of ordinary skill in the art would have
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`recognized that Mollinari’s game controller could be modified to include
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`elements on the side and rear surfaces, like Nishiumi’s analogous game
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`controller with input elements, to enhance the user’s ability to control a
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`game application running on the mobile telecommunications terminal. Id. at
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`22–24.
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`Claims 2–4, 7, 8, 17, 18, 21, 23, 24, 28, 29, 31, 34, and 35 directly or
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`indirectly depend from claims 1, 16, and 27. Petitioner accounts for
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`dependent claims 2–4, 7, 8, 17, 18, 21, 23, 24, 28, 29, 31, 34, and 35. Pet.
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`15–19. We agree with Petitioner’s showing, which we adopt as our own,
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`that Mollinari in combination with Nishiumi teach the additional limitations
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`of claims 2–4, 6, and 7. Patent Owner does not argue claims 2–4, 7, 8, 17,
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`18, 21, 23, 24, 28, 29, 31, 34, and 35 separately. PO Resp. 28–35.
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`Mollinari and Nishiumi Can Be Combined
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`Patent Owner argues that Mollinari and Nishiumi cannot be combined
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`because Petitioner relies on hindsight and failed to identify a sufficient basis
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`to combine Mollinari and Nishiumi because Petitioner “cherry picks” parts
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`of Nishiumi using hindsight to fit them together. PO Resp. 33–36. We
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`disagree. As stated above, Petitioner asserts that one of ordinary skill in the
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`art would have recognized that Mollinari’s game controller could be
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`modified to include elements on the side and rear surfaces, like Nishiumi’s
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`analogous game controller with input elements, to enhance the user’s ability
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`to control a game application running on the mobile telecommunications
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`terminal. Id. at 22–24. In addition, Dr. Welch explained that arranging
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`inputs in this manner would result in “the ability to concurrently control
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`additional aspects of a game running on the game controller of Mollinari
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`without re-positioning one’s hand [and] would offer a significant
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`advantage.” Reply 18 (citing Ex. 1009 ¶ 44). Thus, Petitioner provided
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`articulated reasoning with rational underpinnings to support the motivation
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`to combine the teachings of Mollinari and Nishiumi (see In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006)).
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`D. Obviousness over Mollinari, Nishiumi, and Tu
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`Petitioner contends that claims 6, 22, and 32 are unpatentable under
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`35 U.S.C. § 103 based on Mollinari, Nishiumi, and Tu. Pet. 28. To support
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`its contentions, Petitioner provides a detailed showing, mapping limitations
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`of claims 6, 22, and 32 to structures taught by Mollinari, Nishiumi, and Tu.
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`Id. at 28–30. Petitioner also relies upon the Declaration of Dr. Welch
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`(Ex. 1009) to support its position.
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`Tu teaches using efficiently an input device, such as a game
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`controller, for alphanumeric character entry. Ex. 1006 ¶ 2. Figure 4 of Tu is
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`reproduced below.
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`As shown in Figure 4 of Tu, a user using a game controller enters data
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`quickly and easily without needing to examine visually an entire list of
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`
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`characters. See also Ex. 1006 ¶¶ 14–17, 32–33.
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`Tu Is Analogous Art
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`Patent Owner argues that Tu is not analogous art because it is neither
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`in the same field of endeavor as the ’097 patent nor reasonably pertinent to
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`the particular problem addressed by the ’097 inventors. PO Resp. 20–24.
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`We have considered Patent Owner’s arguments, but do not find them
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`persuasive.
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`As discussed supra, the two part test for analogous art is: (1) whether
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`the prior art is from the same field of endeavor, regardless of the problem
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`addressed, or (2) if the reference is not within the field of the inventor’s
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`endeavor, whether the reference still is reasonably pertinent to the particular
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`problem with which the inventor is involved.
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`Patent Owner conflates the two prong analogous art test. In an
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`attempt to define the field of invention of the ’097 patent, Patent Owner
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`looks to the improvements to the problems solved by the inventors and
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`argues that the ’097 patent is concerned with serving as a multi-purpose do-
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`all that would improve how users interacted with a wide variety of hand-held
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`devices. PO Resp. 21. Such a showing is insufficient to undermine that Tu
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`is in the same field of endeavor as described in the ’097 patent.
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`In determining the field of endeavor, we look to the ’097 patent’s
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`written description and claims, including the structure and function of the
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`invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
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`defining the field of invention, and in determining the relevance of Tu to the
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`obviousness inquiry, here a broad approach should be taken. Reply 3–5, 7–
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`9. Indeed, the Supreme Court provided guidance in determining the
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`applicability of a reference’s teachings in an obviousness inquiry. In KSR,
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`the Court explained that if a feature has been used to improve one device,
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`and a person of ordinary skill in the art would have recognized that it would
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`improve a similar device in that field or another, implementing that feature
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`on the similar device is likely obvious. KSR, 550 U.S. at 417.
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`Here, the appropriate scope of the field of endeavor is at least hand-
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`held input devices for interfacing with electronic devices. Ex. 1001, 1:10–
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`19, 5:48–54, 14:35–41. Patent Owner characterizes Tu as being in the field
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`of improving a stationary home videogame console having a software-user
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`interface controlled by a game controller. PO Resp. 22. However, in
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`arriving at that description, Patent Owner too narrowly characterizes the Tu
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`invention. Tu is within the field of endeavor because it teaches a hand-held
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`input devices for interfacing with electronic devices. Ex. 1006 ¶¶ 2, 33, 37–
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`–38, Figs. 3, 4, 8A–8B.
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`Because we find that Tu is within the same field of endeavor as the
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`claimed invention, we need not consider Patent Owner’s arguments
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`regarding whether Tu is reasonably pertinent to the particular problem with
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`which the inventors are involved. PO Resp. 22–24.
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`Claims 6, 22, and 32
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`Claims 6, 22, and 32 indirectly depend from claims 1, 16, and 27
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`respectively. Claims 6, 22, and 32 recite “accelerate text[ual] input.”
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`Petitioner relies on Tu’s description of a user using a game controller
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`entering data quickly and easily without needing to examine visually an
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`entire list of characters to meet the limitation of “accelerat[ing] text input.”
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`Pet. 23–25. Petitioner concludes that one of ordinary skill in the art would
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`have recognized that the hand-held device of Mollinari and Nishiumi’s game
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`controller device could be modified with alphanumeric data inputting, like
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`Tu’s game controller, to input rapidly alphanumeric data. Id.
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`Patent Owner argues that applying Tu’s text selection system to
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`Mollinari would decelerate text entry because Mollinari already has a grid of
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`keys available to the user in the native host interface device. PO Resp. 40–
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`41 (citing Ex. 2009 ¶¶ 141–44). We disagree with Patent Owner’s argument
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`because Tu teaches accelerating input on a phone with a keypad. Reply 20–
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`21 (citing Ex. 1006 ¶¶ 11–14). In addition, Tu teaches that embodiments of
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`the invention could be used with cell phones. Id. (citing Ex. 1006 ¶ 33).
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`Thus, Tu’s text selection system would provide a benefit of accelerated input
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`over using Mollinari’s grid of keys.
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`Patent Owner also argues that Mollinari’s host device provides a
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`screen that is too small to be used comfortably with Tu’s character-selection
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`grid showing characters in a large font that works on displays such as a
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`generous sized television screen. PO Resp. 41. We disagree with Patent
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`Owner’s argument because Tu teaches that embodiments of the invention
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`could be used with cell phones, personal digital assistants, car navigation
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`systems, audio/video players, CD players, MD players, and DVD players.
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`Reply 21 (citing Ex. 1006 ¶ 33). In addition, nothing in Tu limits the
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`teachings to television screens and nothing in the claims of the ’097 patent
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`require accelerated input on a host device with a large screen. Id. (citing Ex.
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`1009 ¶ 44).
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`We, therefore, agree with Petitioner’s showing, and adopt it as our
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`own, that Mollinari in combination with Nishiumi and Tu would have
`
`rendered obvious claims 6, 22, and 32.
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`E. Obviousness over Kerr and Lum
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`Petitioner contends that claims 10–12 are unpatentable under
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`35 U.S.C. § 103 based on Kerr and Lum. Pet. 43–59. To support its
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`contentions, Petitioner provides a detailed showing mapping limitations of
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`claims 10–12 to st