Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 13
`
`
` Entered: July 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00729
`Patent 7,280,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 13
`
`
` Entered: July 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00729
`Patent 7,280,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`
`I.
`INTRODUCTION
`Petitioner, Sony Computer Entertainment America LLC, filed a
`corrected Petition requesting an inter partes review of claims 1–14, 16–19,
`21–32, and 34–38 of U.S. Patent No. 7,280,097 B2 (Ex. 1001, “the ’097
`patent”). Paper 4 (“Pet.”). In response, Patent Owner, Aplix IP Holdings
`Corporation, filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
`review may not be instituted “unless . . . the information presented in the
`petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`For the reasons set forth below, we institute an inter partes review of
`claims 1–14, 16–19, 21–32, and 34–38 of the ’097 patent.
`
`A. Related Matter
`The ’097 patent is involved in the following lawsuit: Aplix IP
`Holdings Corporation v. Sony Computer Entertainment, Inc. et al.,
`No. 1:14-cv-12745 (MLW) (D. Mass.). Pet. 59.
`
`B. The ’097 Patent
`The ’097 patent relates to hand-held input acceleration devices that
`interface with electronic devices, such as cell phones, personal digital
`assistants (“PDAs”), pocket personal computers, smart phones, hand-held
`game devices, bar-code readers, MP3 players, and other similar input
`devices having a keypad or one or more input elements. Ex. 1001, 1:11–18.
`
`2
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`The hand-held input acceleration device transfers data bi-directionally with a
`hand-held host device. Id. at Abstract.
`
`C. Illustrative Claim
`Claims 1, 16, and 27 are only independent claims. Claims 2–14, 17–
`19, 21–26, 28–32, and 34–38 depend from one of claims 1, 16, and 27.
`Claim 1, reproduced below, is illustrative.
`1.
`An input accelerator device for controlling a hand-held
`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, 20:31–50.
`
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Mollinari WO 2004/007041 A2
`Jan. 22, 2004
`(Ex. 1003)
`Nishiumi US 5,903,257
`
`May 11, 1999
`(Ex. 1004)
`Tu
`
`US 2004/0139254 A1
`July 15, 2004
`(Ex. 1005)
`Shima
`US 2002/0198030 A1 Dec. 26, 2002
`(Ex. 1006)
`3
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`Kerr
`Lum
`
`July 15, 2004
`US 2004/0137983 A1
`US 2005/0221894 A1 Oct. 6, 2005
`
`(Ex. 1007)
`(Ex. 1008)
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`1, 13, 14, 16, 17, 25–28,
`and 36–38
`1–4, 7, 8, 13, 14, 16–18,
`21, 23–29, 31, and 34–
`38
`1–4, 6–8, 13, 14, 16–18,
`21–32, and 34–38
`1–5, 7, 9, 16–19, 21, 23,
`27–31, and 34
`1, 10–14, 16, 17, 25–28,
`and 36–38
`
`Basis
`
`References
`
`§ 102(b) Mollinari
`
`§ 103(a) Mollinari and Nishiumi
`
`§ 103(a) Mollinari, Nishiumi, and Tu
`
`§ 102(b)
`
`Shima
`
`§ 102(b) Kerr
`
`1 and 10–12
`
`§ 103(a) Kerr and Lum
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir. 2015) (“Congress
`implicitly adopted the broadest reasonable interpretation standard in
`enacting the AIA,” and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable interpretation standard, claim
`
`4
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`terms are given their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). At this juncture, we do not need to explicitly construe any term.
`
`B. Principles of Law
`Anticipation requires the disclosure in a single prior art reference of
`each and every element of the claimed invention, arranged as in the claim.
`Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730
`F.2d 1452, 1458 (Fed. Cir. 1984). A patent claim is unpatentable under
`35 U.S.C. § 103(a) if the differences between the claimed subject matter and
`the prior art are such that the subject matter, as a whole, would have been
`obvious at the time the invention was made to a person having ordinary skill
`in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on
`the basis of underlying factual determinations including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of ordinary skill in the art; and
`(4) objective evidence of nonobviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`
`5
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`established when the prior art itself would appear to have suggested the
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`531 F.2d 1048, 1051 (CCPA 1976).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`C. Obviousness of Claims over Mollinari and Nishiumi
`Petitioner asserts that claims 1–4, 7, 8, 13, 14, 16–18, 21, 23–29, 31,
`and 34–38 are unpatentable under 35 U.S.C. § 103(a) as obvious over the
`combination of Mollinari and Nishiumi. Pet. 22. To support its contentions,
`Petitioner provides detailed explanations as to how the prior art meets each
`claim limitation. Id. at 7–28. Petitioner also relies upon a Declaration of
`Dr. Gregory F. Welch, who has been retained as an expert witness by
`Petitioner for the instant proceeding. Ex. 1009.
`Mollinari describes a game controller holding a releasable mobile
`telecommunication terminal. Ex. 1003, Abstract. Figure 1 of Mollinari is
`reproduced below.
`
`
`
`6
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`
`As shown in Figure 1 of Mollinari, the game controller includes inputs
`11, 12, 13 on a front surface for user commands. Mollinari discloses a first
`set of keys 11 are used to activate certain game functions, while a second set
`of keys 12 are used for navigational purposes. Id. at 6:30–33. Mollinari
`discloses transmitting the user commands using data transmission means to
`and from a mobile telecommunications terminal 3, 3a, 3b, 3c held by the
`game controller. Id. at Abstract. Mollinari describes user commands as a
`user pressing buttons or moving a joy-stick to react to events of a game
`installed on their mobile phone and re-mapping the user commands into a
`scan code required by a game application. Id. at 7:4–12; 11:9–12:21.
`Mollinari’s data transmission means may include an electromechanical
`connector, wireless infrared, wired infrared, other optical interfaces, or
`wireless short range radio data transmission such as Bluetooth. Id. at 7:15–
`25; 6:25–26; Fig. 9.
`Nishiumi teaches a game controller having inputs on a front surface
`and a bottom surface. Ex. 1004, 7:1–5. Figures 7–8 of Nishiumi are
`reproduced below.
`
`
`
`7
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`
`As shown in Figure 7 of Nishiumi, there are numerous front surface
`inputs including a designation switch 403, input keys 404A–F, and an
`analog joystick 45. See also, id. at 6:45–67. In addition, as shown in Figure
`8 of Nishiumi, a bottom surface switch 407 is formed approximately at the
`center of the game controller, and a pair of side surface switches 406L, 406R
`are located on the side of game controller. See also, id. at 6:45–7:1–5.
`The present record supports the contention that Mollinari describes an
`input accelerator with a communication channel to control a hand-held host
`device. Pet. 7–15; Ex. 1003 (multiple paragraphs and figures cited in
`Petition). The present record also supports the contention that Mollinari
`describes selectively mapping one or more input elements 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. Pet. 7–15; Ex.
`1003 (multiple paragraphs and figures cited in Petition).
`Petitioner relies on Nishiumi’s bottom surface switch 407, a pair of
`side surface switches 406L, input keys 404A–F, designation switch 403, and
`an analog joystick 45 to meet the limitations of input elements on the front,
`side and rear surface, “a key,” “a D-pad,” and “a miniature analog thumb
`joystick,” respectively. Pet. 22–28; Ex. 1004 (multiple paragraphs and
`figures cited in Petition). Petitioner concludes that one of ordinary skill in
`the art would have recognized that Mollinari’s game controller could be
`modified to include elements on the side and rear surfaces, like Nishiumi’s
`analogous game controller with input elements, to enhance the user’s ability
`to control a game application running on the mobile telecommunications
`terminal. Pet. 23–24; Ex. 1009 ¶¶ 41–45. Patent Owner does not make
`8
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`arguments, at this time, regarding the merits of this ground of unpatentability
`against challenged claims 1, 6, and 7.
`Petitioner also accounts for all of the challenged dependent claims.
`Pet. 7–28. Patent Owner argues that, with respect to this ground, the Petition
`does not map any part of Nishiumi to claims 1, 13, 14, 16, 25, 26, 27, 36, 37,
`and 38, but rather cites to Mollinari alone for challenging those claims.
`Prelim. Resp. 4. We are not persuaded by this argument.
`We have reviewed the proposed ground of obviousness over Mollinari
`and Nishiumi against claims 1–4, 7, 8, 13, 14, 16–18, 21, 23–29, 31, and 34–
`38, and we are persuaded, at this juncture of the proceeding, that Petitioner
`has established a reasonable likelihood that Petitioner would prevail in its
`challenge to claims 1–4, 7, 8, 13, 14, 16–18, 21, 23–29, 31, and 34–38 on
`this ground.
`We also have considered Patent Owner’s argument that the Petition
`improperly incorporates arguments and evidence from the Declaration of
`Dr. Gregory F. Welch into the Petition. Prelim. Resp. 14–17. We find,
`however, that the explanation of the grounds that we are instituting on in the
`Petition is sufficient and, therefore, we are not persuaded by this argument.
`We have reviewed those portions of Dr. Welch’s Declaration to which we
`are directed, with respect to the grounds upon which we institute, and have
`determined that there is nothing unusual about this Declaration or the way in
`which Petitioner relies on the Declaration.
`Lastly, we have considered Patent Owner’s argument that the Petition
`improperly relies on arguments presented in claim charts. Id. at 17–18. We
`
`9
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`have considered the argument given by Patent Owner, but do not find that
`argument to be sufficient to dismiss the Petition.
`
`D. Obviousness of Claims over Mollinari, Nishiumi, and Tu
`Petitioner asserts that claims 6, 22, and 32 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Mollinari, Nishiumi,
`and Tu. Pet. 28. To support its contentions, Petitioner provides detailed
`explanations as to how the prior art meets each claim limitation. Id. at 28–
`30. Petitioner also relies upon a Declaration of Dr. Gregory F. Welch, who
`has been retained as an expert witness by Petitioner for the instant
`proceeding. Ex. 1009.
`Tu describes efficiently using an input device, such as a game
`controller, for alphanumeric character entry. Ex. 1005 ¶ 2. Figure 4 of Tu is
`reproduced below.
`
`
`As shown in Figure 4 of Tu, a user using a game controller enters data
`quickly and easily without needing to visually examine an entire list of
`characters. See also id. ¶¶ 14–17 and 32–33.
`Claims 6, 22, and 32 depend indirectly from claims 1, 16, and 27
`respectively. Claim 6, 22, and 32 each recite “accelerat[ing] text[ual]
`input[s].”
`
`10
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`
`Petitioner relies on Tu’s description of a user using a game controller
`entering data quickly and easily without needing to visually examine an
`entire list of characters to meet the limitation of “accelerat[ing] text[ual]
`input[s].” Pet. 28–30; Ex. 1005 ¶¶ 2, 14–17, and 32–33. Petitioner
`concludes that one of ordinary skill in the art would have recognized that the
`hand-held device of Mollinari and Nishiumi’s game controller device could
`be modified with alphanumeric data inputting, like Tu’s game controller, to
`rapidly input alphanumeric data. Pet. 29; Ex. 1009 ¶¶ 47–48. Patent Owner
`does not make arguments, at this time, regarding the merits of this ground of
`unpatentability against challenged claim 5.
`Patent Owner argues that, with respect to this ground, the Petition
`does not map any part of Tu to claims 6, 22, and 32, but rather cites to
`Mollinari and Nishiumi for challenging those claims. Prelim. Resp. 4. We
`are not persuaded by this argument.
`We have reviewed the proposed ground of obviousness over
`Mollinari, Nishiumi, and Tu against claims 6, 22, and 32 and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`6, 22, and 32 on this ground.
`
`E. Anticipation of Claims by Shima
`Petitioner asserts that claims 5, 9, 19, and 30 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Shima. Pet. 30. To support its
`contentions, Petitioner provides detailed explanations as to how the prior art
`meets each claim limitation. Id. at 30–43. Petitioner also relies upon a
`
`11
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`Declaration of Dr. Gregory F. Welch, who has been retained as an expert
`witness by Petitioner for the instant proceeding. Ex. 1009.
`Shima discloses a portable telephone set having input elements used
`to control cursor functions on a “portable type personal computer” such as a
`laptop, a notebook-sized personal computer, or a handheld personal
`computer. Ex. 1006 ¶¶ 1, 8, 30, Fig. 14. Specifically, the portable telephone
`set includes mouse input element 5 that is selectively mapped to cursor
`control or scrolling functions of a software application on the personal
`computer. Id. ¶¶ 32–33, 50, 65–66, Figs. 14, 15. Likewise, keys 4 may be
`selectively mapped to character and numerical input functions. Id. ¶ 33.
`Shima discloses that the mouse input element on the portable telephone is to
`be used in lieu of a “mouse incorporated in a personal computer body”
`because of the poor operability in comparison with an external mouse. Id.
`¶ 9. The portable telephone set also includes display section 8, control
`section 3 that is communicatively coupled to the input elements 4 and 5 and
`external interface 6. Id. ¶¶ 30–31, 59, Figs. 2, 3, 13. Control section 3
`generates a transmission signal upon actuation of input elements such as the
`mouse input element 5 or selection/execution button. Id. ¶¶ 31–0032, 59,
`61–62, Fig. 2. The control section 3 transmits the transmission signal to the
`personal computer through the external interface 6. Id. ¶¶ 64–66, Fig. 15.
`The transmission signal controls execution of cursor and scrolling functions
`on application software running on the personal computer. Id.
`The present record supports the contention that Shima discloses an
`input accelerator with a communication channel to interface with a hand-
`held host device. Pet. 30–36; Ex. 1007 (multiple paragraphs and figures
`12
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`cited in Petition). The present record also supports the contention that
`Shima describes selectively mapping one or more input elements to one or
`more functions of a software application running on the hand-held host
`device to control the mapped one or more functions of the application to
`minimize actuation of at least one input element of the hand-held host
`device. Pet. 30–36; Ex. 1007 (multiple paragraphs and figures cited in
`Petition). The present record also supports the contention that Shima
`describes an input controller. Pet. 30–36; Ex. 1007 (multiple paragraphs and
`figures cited in Petition).
`Petitioner relies on Shima’s button on the front side of the main body
`of the portable telephone set that is to be manipulated by the user’s index or
`middle finger, key 33 on the side surface of the main body to be manipulated
`by the user’s thumb, and mouse input section 5 on the bottom surface of the
`main body (Pet. 31, 36 (citing Ex. 1006 ¶ 38, 41, Fig. 5.)) to meet the
`limitation of “the front input assembly, the rear input assembly, and the side
`input assembly are further configured to optimize a biomechanical effect of
`the human user’s opposing thumb and fingers.” Pet. 31, 36, 38, 40, 42; Ex.
`1007 (multiple paragraphs and figures cited in Petition). Petitioner relies on
`Shima’s display section 8 to meet the limitation of the input accelerator
`“comprising a display unit” as recited in claim 9. Pet. 39. Patent Owner
`does not make arguments, at this time, regarding the merits of this ground of
`unpatentability against challenged claims 5, 9, 19, and 30.
`We have reviewed the proposed ground of anticipation by Shima
`against claims 5, 9, 19, and 30, and we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`13
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`Petitioner would prevail in its challenge to claims 5, 9, 19, and 30 on this
`ground.
`
`F. Obviousness of Claims over Kerr and Lum
`Petitioner asserts that claims 10–12 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the combination of Kerr and Lum. Pet. 58–59. To
`support its contentions, Petitioner provides detailed explanations as to how
`the prior art meets each claim limitation. Id. at 43–59. Petitioner also relies
`upon a Declaration of Dr. Gregory F. Welch, who has been retained as an
`expert witness by Petitioner for the instant proceeding. Ex. 1009.
`Kerr describes a gaming shell structure for receiving a handheld
`wireless device, such as wireless phone 100. Ex. 1007 ¶ 66. Figure 7 of
`Kerr is reproduced below.
`
`
`As shown in Figure 7 of Kerr, the gaming shell includes interface
`connector 708a that connects to accessory port 115 of wireless device 100.
`Id. ¶ 72. Alternatively, Kerr also discusses the interface device may include
`a Universal Serial Bus, RS-232 Transceiver, Universal Asynchronous
`Receiver/Transmitter, microchip, other circuitry to receive and transmit
`information such as infrared data. Id. ¶ 86. In addition, Kerr discloses
`mapping input elements 713a–d on the gaming shell structure to various
`14
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`gaming functions, such as launching a missile in a shooting game, jumping,
`kicking, punching, flipping in an action game. Id. ¶ 79. Further, Kerr
`discloses the user’s data inputs are in the form of instructions and hardware
`memory processor 805 receives the instructions and acts on these
`instructions. Id. ¶¶ 86–88. Kerr discloses transferring the user’s data inputs
`from the gaming shell to the wireless phone, and then the wireless phone
`performs an action on the gaming operation in response to the data. Id. ¶ 89.
`Lum teaches a game controller having central processing unit 402,
`memory 404, 406, 408, and input elements 420/422. Ex. 1008 ¶¶ 46–47.
`Figure 4 of Lum is reproduced below.
`
`
`As shown in Figure 4 of Lum, one or more bussing structures connect
`central processing unit 402, memory 404, 406, 408, and input elements
`420/422 together. Id.
`Each of claims 10–12 depends ultimately from claim 1. Claim 10
`recites a storage device configured to store one or more instructions. Claim
`11 recites the one or more instructions comprising at least one of a text
`
`15
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`application, a mapping software, a firmware, a gaming application, or a
`scrolling application. Claim 12 recites a processor interpreting the input
`signal and executing the one or more instructions, a main memory
`configured to load one or more instructions executed by the processor, and a
`bus configured to direct communications to and from the processor.
`The present record supports the contention that Kerr discloses a
`hardware processor that is also a storage device that stores and executes one
`or more instructions relating to firmware or a gaming application to meet the
`limitations of claims 10 and 11. Pet. 50–52; Ex. 1008 ¶¶ 86–89 and 93.
`Petitioner relies on Lum’s one or more bussing structures to connect
`central processing unit 402, memory 404, 406, 408, and input elements
`420/422 together to meet the limitations “a bus configured to direct
`communications to and from the processor” as recited in claim 12. Pet. 59;
`Ex. 1008 ¶¶ 86–89 and 93; Fig. 4. Petitioner concludes that one of ordinary
`skill in the art would have recognized that Kerr’s game controller could be
`modified as a simple design choice to include well known bus components,
`like Lum’s similar game controller with input elements, to enable the
`processor to communicate with other electronic components using a bus.
`Pet. 58–59; Ex. 1008 ¶ 73. Patent Owner does not make arguments, at this
`time, regarding the merits of this ground of unpatentability against
`challenged claims 10–12.
`Petitioner accounts for all of the challenged claims. Pet. 43–59.
`Patent Owner argues that, with respect to this ground, the Petition does not
`map any part of Lum to claims 10 and 11, but rather cites to Kerr alone for
`
`16
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`challenging these claims. Prelim. Resp. 4–5. We are not persuaded by this
`argument.
`We have reviewed the proposed ground of obviousness over Kerr and
`Lum against claims 10–12, and we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 10–12 on this ground.
`
`G. Remaining Grounds Challenging the Claims of the ’097 Patent
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings were
`promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R.
`§ 42.108(b).
`We have considered Patent Owner’s arguments that the Petition
`improperly presents vertically and horizontally redundant grounds, and as
`such, the Board only should consider one challenge. Prelim. Resp. 5–14.
`Based on the record before us, Patent Owner’s arguments are moot, as we
`exercise our discretion and decline to institute review based on any of the
`other asserted grounds advanced by Petitioner that are not identified below
`as being part of the trial. See, e.g., Pet. 6; 37 C.F.R. § 42.108(a).
`
`17
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in challenging claims 1–14, 16–19, 21–32, and 34–
`38 of the ’097 patent. At this juncture, we have not made a final
`determination with respect to the patentability of the challenged claims, nor
`with respect to claim construction.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`
`Claims
`1–4, 7, 8, 13, 14, 16–
`18, 21, 23–29, 31, and
`34–38
`6, 22, 32
`
`Basis
`
`References
`
`§ 103(a) Mollinari and Nishiumi
`
`§ 103(a) Mollinari, Nishiumi, and Tu
`
`5, 9, 19, and 30
`
`§ 102(b)
`
`Shima
`
`10–12
`
`§ 103(a) Kerr and Lum
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`18
`
`
`
`IPR2015-00729
`Patent 7,280,097 B2
`
`will commence on the entry date of this decision.
`
`PETITIONER:
`Eric A. Buresh
`Abran J. Kean
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`abran.kean@eriseip.com
`
`PATENT OWNER:
`Michael Mauriel
`Sherman W. Kahn
`MAURIEL KAPOUYTIAN WOODS LLP
`mmauriel@mkwllp.com
`skahn@mkwllp.com
`
`Robert J. Gilbertson
`Sybil L. Dunlop
`X. Kevin Zhao
`GREENE ESPEL PLLP
`BGilbertson@GreeneEspel.com
`SDunlop@greeneespel.com
`kzhao@greeneespel.com
`
`19
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
