UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
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`
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00729
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`Patent No. 7,280,097
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`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00729
`
`Patent No. 7,280,097
`
`
`
`PATENT OWNER APLIX IP HOLDINGS CORPORATION’S
`RESPONSE TO THE PETITION
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`
`FACTUAL BACKGROUND .................................................................. 1
`
`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ............................................................................. iv
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`EXHIBIT LIST .................................................................................................. vi
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`I.
`
`II.
`
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`III. PERSON OF ORDINARY SKILL IN THE ART ................................... 7
`
`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`
`ANALOGOUS ART ................................................................................ 8
`
`
`THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS
`OF CLAIMS 1, 10, 11, 13, 14, 16, 25, 26, 27, 36, 37, and 38 ................. 5
`
`A. Nishiumi (U.S. Patent No. 5,903,257) ......................................... 10
`
`1.
`
`Nishiumi and the ’097 patent occupy different fields of
`endeavor ............................................................................. 10
`
`Nishiumi is not reasonably pertinent to the particular
`problem the ’097 inventors aimed to solve ....................... 15
`
`2.
`
`
` Tu (U.S. Application No. 2004-0139254 A1) ............................ 20
`
`B.
`
`
`1.
`
`2.
`
`Tu and the ’097 patent occupy different fields of
`endeavor ............................................................................. 20
`
`Tu is not reasonably pertinent to the particular
`problem the ’097 inventors aimed to solve ....................... 22
`
`
`CLAIM CONSTRUCTION ................................................................... 24
`
`A. All independent claims: “hand-held host device” ........................ 26
`
`B. All independent claims: an “input controller [being]
`configured to generate an input signal . . . to control
`execution of the one or more functions of the software
`application . . .” ............................................................................ 27
`
`V.
`
`
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`
`ii
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`
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`C.
`
`Claims 2, 16, 28 and all dependent claims: an “input
`element . . . on [a] surface[]” ........................................................ 29
`
`
`D. Dependent claims 5, 19, and 30: “configured to optimize
`a biomechanical effect of the human user’s opposing
`thumb and fingers” ....................................................................... 30
`
`
`E. Dependent claims 17 and 28: “second surface,” and
`“third surface” .............................................................................. 31
`
`
`VI. PETITIONER’S PROPOSED PRIOR-ART COMBINATIONS
`
`DO NOT RENDER THE ’097 PATENT’S CLAIMS OBVIOUS ........ 32
`
`
`A. Mollinari and Nishiumi do not render claims 1-4, 7, 8,
`13, 14, 16-18, 21, 23-29, 31, and 34-38 obvious ......................... 32
`
`1. Mollinari and Nishiumi should not be combined .............. 33
`
`Even if wrongly combined, Mollinari and
`Nishiumi do not disclose claims 1-4, 7, 8, 13, 14,
`16-18, 21, 23-29, 31, and 34-38 ......................................... 37
`
`2.
`
`
`B. Mollinari, Nishiumi, and Tu do not render claims 6, 22,
`and 32 obvious ............................................................................. 40
`
`C. Kerr and Lum do not render claims 10-12 obvious ..................... 41
`
`VII. SHIMA DOES NOT ANTICIPATE CLAIMS 5, 19, AND 30 ............. 45
`
`
`A.
`
`B.
`
`
`C.
`
`Shima does not disclose using his mouse phone with a
`hand-held host device ................................................................... 46
`
`Shima does not disclose three “surfaces” having three
`different “input assemblies” ......................................................... 52
`
`Shima does not disclose input assemblies “configured to
`optimize a biomechanical effect of the human user’s
`opposing thumb and fingers” ....................................................... 54
`
`
`VIII. CONCLUSION ...................................................................................... 56
`
`
`
`iii
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`TABLE OF AUTHORITIES
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` Page
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`
`
`Cases
`
`Circuit Check Inc. v. QXQ Inc.
`
`795 F.3d 1331 (Fed. Cir. 2015) .......................................................... 10
`
`Cohesive Techs., Inc. v. Waters Corp.
`
`543 F.3d 1351 (Fed. Cir. 2008) .............................................................6
`
`Gemtron Corp. v. Saint-Gobain Corp.
`
`572 F.3d 1371 (Fed. Cir. 2009) .......................................................... 46
`
`Graham v. John Deere Co.
`
`383 U.S. 1 (1966) ..................................................................................8
`
`In re Bigio
`
`381 F.3d 1320 (Fed. Cir. 2004) .................................. 10, 11, 15, 20, 22
`
`In re Cortright
`
`165 F.3d 1353 (Fed. Cir. 1999) .......................................................... 25
`
`In re Clay
`
`966 F.2d 656 (Fed. Cir. 1992) ................................................ 11, 15, 22
`
`In re Cuozzo Speed Techs., LLC
`
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................... 24
`
`In re Kahn
`
`441 F.3d 977 (Fed. Cir. 2006) ............................................................ 46
`
`In re Klein
`
`647 F.3d 1343 (Fed. Cir. 2011) ...................................................... 9, 15
`
`In re NTP, Inc.
`
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................... 25
`
`In re Skvorecz
`
`580 F.3d 1262 (Fed. Cir. 2009) .......................................................... 25
`
`
`
`
`iv
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`
`
`
`
`In re Suitco Surface, Inc.
`
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................... 25
`
`In re Translogic Tech., Inc.
`
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................... 25
`
`KSR Int’l Co. v. Teleflex Inc.
`
`550 U.S. 398 (U.S. 2007) ................................................... 9, 34, 35, 46
`
`Leapfrog Enter. Inc. v. Fisher-Price Inc.
`
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................... 35
`
`Microsoft Corp. v. Proxyconn, Inc.
`
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................... 25
`
`Phillips v. AWH Corp.
`
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................... 26
`
`Ruiz v. A.B. Chance Co.
`
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................... 34
`
`Schott Gemtron Corp., v. SSW Holding Company, Inc.
`
`IPR2013-00358 ................................................................................... 16
`
`State Contracting & Eng’g Corp. v. Condotte America, Inc.
`
`346 F.3d 1057 (Fed. Cir. 2004) .......................................................... 10
`
`Structural Rubber Products Co. v. Park Rubber Co.
`
`749 F.2d 707 (Fed. Cir. 1984) ...............................................................6
`
`Synopsys, Inc. v. Mentor Graphics Corp.
`
`IPR2012-00042 ......................................................................................5
`
`Wang Labs., Inc. v. Toshiba Corp.
`
`993 F.2d 858 (Fed. Cir. 1993) ................................................ 11, 15, 22
`
`Other References
`
`Janice M. Mueller, Patent Law (4th ed. 2013) ................................................9
`
`
`
`
`v
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`EXHIBIT LIST
`
`EXHIBITS FILED BY SONY COMPUTER ENTERTAINMENT AMERICA LLC
`(SELECTED)
`
`Exhibit 1001 U.S. Patent 7,280,097
`
`Exhibit 1002
`
`File History of U.S. Patent 7,280,097
`
`Exhibit 1003 WO 2004/007041 to Mollinari et al.
`
`Exhibit 1004 U.S. Patent No. 5,903,257 to Nishiumi et al.
`
`Exhibit 1005 U.S. Patent Publication No. 2004/0139254 to Tu et al.
`
`Exhibit 1006 U.S. Patent Publication No. 2002/0198030 to Shima
`
`Exhibit 1007 U.S. Patent Publication No. 2004/0137983 to Kerr et al.
`
`Exhibit 1008 U.S. Patent Publication No. 2005/0221894 to Lum et al.
`
`Exhibit 1009
`
`Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 1011 Amended Complaint in Aplix IP Holdings Corporation v.
`Sony Computer Entertainment Inc. and Sony Computer
`Entertainment America LLC, Case No. 1:14-cv-12745
`
`
`
`
`
`EXHIBITS FILED BY APLIX IP HOLDINGS CORPORATION
`
`Exhibit 2001 Declaration in support of motion for pro hac vice admission of
`Robert J. Gilbertson
`
`Exhibit 2002 Declaration in support of motion for pro hac vice admission of
`Sybil L. Dunlop
`
`Exhibit 2003 Declaration in support of motion for pro hac vice admission of
`Sherman W. Kahn
`
`Exhibit 2004 Declaration in support of motion for pro hac vice admission of
`X. Kevin Zhao
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`
`
`vi
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`
`
`
`
`Exhibit 2005 Amended Complaint in Aplix IP Holdings Corporation v. Sony
`Computer Entertainment Inc. and Sony Computer
`Entertainment America LLC, Case No. 1:14-cv-12745
`
`Exhibit 2006 Declaration in support of motion for pro hac vice admission of
`Jason Bartlett
`
`Exhibit 2007
`
`Chart prepared by Dr. Gregory F. Welch, exhibit to the Welch
`deposition taken in IPR2015-00729 and IPR2015-00730,
`October 21, 2015
`
`Exhibit 2008 Annotated CV of Dr. Gregory F. Welch, exhibit to the Welch
`deposition taken in IPR2015-00729 and IPR2015-00730,
`October 21, 2015
`
`Exhibit 2009
`
`Expert Declaration of Peng Lim
`
`Exhibit 2010
`
`Professional Summary of Peng Lim
`
`Exhibit 2011
`
`PDA sales soar in 2000,
`http://cnnfn.cnn.com/2001/01/26/technology/handheld,
`January 26, 2001
`
`Exhibit 2012 Wikipedia entry on “Pong” at
`https://en.wikipedia.org/wiki/Pong, accessed 10/31/2015
`
`Exhibit 2013 Wikipedia entry on “Atari 2600” at
`https://en.wikipedia.org/wiki/Atari_2600, accessed 10/31/2015
`
`Exhibit 2014 Wikipedia entry on “Intellivision” at
`https://en.wikipedia.org/wiki/Intellivision, accessed
`10/31/2015
`
`Exhibit 2015 Wikipedia entry on “Nintendo Entertainment System” at
`https://en.wikipedia.org/wiki/Nintendo_Entertainment_System
`, accessed 10/31/2015
`
`Exhibit 2016 Wikipedia entry on “Sega Genesis” at
`https://en.wikipedia.org/wiki/Sega_Genesis, accessed
`10/31/2015
`
`
`
`vii
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`
`
`
`
`Exhibit 2017 Wikipedia entry on “PlayStation” at
`https://en.wikipedia.org/wiki/PlayStation, accessed 10/31/2015
`
`Exhibit 2018 Wikipedia entry on “Xbox” at
`https://en.wikipedia.org/wiki/Xbox, accessed 10/31/2015
`
`Exhibit 2019
`
`A Brief History of Handheld Video Games, Endgadget.com,
`March 3, 2006
`
`Exhibit 2020
`
`Excerpt from 25 Worst Gadgets Flops of All Time, Laptop
`magazine, March 23, 2013
`
`Exhibit 2021
`
`Profile of Elaine Chen at
`https://www.linkedin.com/in/elaineychen, accessed
`10/31/2015
`
`Exhibit 2022
`
`Profile of Beth Marcus at https://www.linkedin.com/pub/beth-
`marcus/2/9b/125, accessed 10/31/2015
`
`Exhibit 2023
`
`Profile of Rob Podoloff at https://www.linkedin.com/pub/rob-
`podoloff/0/912/573, accessed 10/31/2015
`
`Exhibit 2024 MIT Technology Review: Innovators Under 35 at
`http://www2.technologyreview.com/tr35/profile.aspx?TRID=3
`09, accessed 10/31/2015
`
`Exhibit 2025
`
`About Lorraine Wheeler at http://redstoke.com/node/1,
`accessed 10/31/2015
`
`Exhibit 2026 Wikipedia entry on “Pocket PC” at
`https://en.wikipedia.org/wiki/Pocket_PC, accessed 10/31/2015
`
`Exhibit 2027 Wikipedia entry on “List of Computer Size Categories” at
`https://en.wikipedia.org/wiki/List_of_computer_size_categorie
`s, accessed 10/31/2015
`
`Exhibit 2028 University of New Mexico: Types of Computers at
`http://www.unm.edu/~tbeach/terms/types.html, accessed
`9/15/2015
`
`Exhibit 2029
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00229 and IPR2015-00230, July 28-29, 2015
`
`
`
`viii
`
`
`
`
`
`Exhibit 2030
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00396, IPR2015-00476, and IPR2015-00533, August
`19, 2015
`
`Exhibit 2031
`
`Transcript of the deposition of Dr. Gregory F. Welch taken in
`IPR2015-00729 and IPR2015-00730, October 21, 2015
`
`ix
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`
`I.
`
`
`FACTUAL BACKGROUND
`
`In 2003, hand-held electronic devices—like cell phones, PDAs, pocket
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`personal computers, smart phones, hand-held game devices, and MP3 players—
`
`were gaining widespread popularity. But the conventional interface and input
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`systems for these devices remained relatively inflexible, cumbersome, and
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`inefficient to use. (Ex. 1001, 4:26-30.) These devices typically required a user
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`to apply either her thumbs or fingers, or a stylus, to “peck” the desired input
`
`element. (Ex. 1001, 2:20-30.) These “pecks” did not take advantage of the
`
`biomechanics of the human hand and they also required repeated “pecking”—a
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`large number of taps could be required to input a particular instruction. (See,
`
`e.g., ex. 1001, 4:51-55.)
`
`Around this same time, electronic console games—sold since the late
`
`1970’s—remained widely popular. (Ex. 2009, Lim ¶¶ 41-44.) Common
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`systems like the Atari 2600, the Nintendo Entertainment System, and the Sony
`
`PlayStation featured hand-held controllers structured for sustained user input.
`
`(Ex. 2009, Lim ¶¶ 43-44.) These console systems were proprietary and
`
`therefore capable of being paired only with input controllers specifically
`
`designed for them. (Ex. 2009, Lim ¶ 44.) Game-console manufacturers kept
`
`the internal controller components as simple as possible—their aim was to
`
`create controllers that would be more tolerant of abuse and relatively
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`
`
`1
`
`
`
`
`
`inexpensive to replace. (Ex. 2009, Lim ¶ 44.) As a result of this choice, the
`
`more complex controller input-processing circuitry was located within the host
`
`console unit, not the controller itself. (Ex. 2009, Lim ¶¶ 60-62, 69-70.)
`
`A group of MIT-trained inventors at a Boston-area company called
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`Zeemote, led by Dr. Beth Marcus, aimed to address the problems arising from
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`these existing hand-held user interfaces. They invented a Zeemote input
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`accelerator based on their collective training and experience designing
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`independent advanced human-interface system hardware and software. The
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`Zeemote team, and its training and experience, included:
`
` Elaine Chen, a mechanical engineer who began her career in 1996 at
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`an independent joystick manufacturer. Before joining Zeemote, Chen
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`worked with haptic-feedback touch interfaces for wide ranging
`
`applications including dentistry and fine art.
`
` Rob Podoloff, a Zeemote co-founder and CTO, who came to Zeemote
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`after seven years with an interactive game company that he co-
`
`founded. Podoloff’s company developed a unique snowboarding
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`game with a skateboard-sized controller on which players stood to
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`control their avatars.
`
` Lorraine Wheeler, an MIT graduate with dual degrees in computer
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`science and business management. When she joined Zeemote, she
`
`
`
`2
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`
`
`
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`had already founded and sold—for millions of dollars—a company
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`that developed one of the first email programs for Palm hand-helds.
`
` Dr. Marcus, a biomechanical expert who earned her B.A. and M.S. in
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`mechanical engineering from the Massachusetts Institute of
`
`Technology, and her Ph.D. in Biomechanics from the Imperial
`
`College London. Among her activities in the field, she spent seven
`
`years lecturing on Mechanical Engineering before founding Zeemote.
`
`(Ex. 2009, Lim ¶¶ 56-59, Exs. 2021-2024.)
`
`In important ways, Dr. Marcus and her team were industry outsiders.
`
`None came through dominant gaming companies like Nintendo and Sony; they
`
`had little involvement with dominant companies like Palm, Sony Ericson, or
`
`Motorola. Their expertise and experience was in developing advanced human-
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`interface hardware and software independent of such companies. It is perhaps
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`unsurprising then that they viewed hand-held controllers not as mere
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`accessories to larger systems but as products in their own right.
`
`With her particular training in biomechanics, Dr. Marcus recognized that
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`existing hand-held interfaces could be vastly improved by paying attention to
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`“the biomechanics of the human hand.” (Ex. 1001, 4:27-37.) She saw that
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`traditional systems had failed to capitalize on advantages associated with the
`
`unique abilities of the thumb and figures as well as the thumb’s opposition to
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`
`
`3
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`
`
`
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`the fingers. (Ex. 1001, 4:27-37.) Her team imagined a new kind of controller
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`optimized to take advantage of these features.
`
`The Zeemote team saw the potential of their input device to serve as a
`
`multi-purpose do-all that would improve how users interacted with a wide
`
`variety of hand-held devices without having to specially customize each input
`
`device. (Ex. 1001, 5:44-48) To this end, they designed a system that would
`
`output control information in a form that could be readily mapped to software-
`
`application functions on more than one kind of host device. This approach
`
`forced them to incorporate more expensive computing hardware than would
`
`have been typical of simple accessory controllers at the time, but it paid
`
`dividends in broadening the potential applications for their device. (Ex. 2009,
`
`Lim ¶¶ 60-62, 64-65.)
`
`The Zeemote team succeeded. They developed a flexible and efficient
`
`biomechanically optimized human interface and input system that could be
`
`implemented in an input accelerator device, like a remote control. (Ex. 1001,
`
`5:44-48.) The USPTO awarded them several patents, including, on October 9,
`
`2007, the ’097 patent, titled “Human Interface Input Acceleration System.”
`
`(Ex. 2005 at ¶ 13.) The ’097 patent claims an input accelerator device for
`
`controlling a hand-held host device, as well as a method for configuring an
`
`input accelerator device, and a method for controlling more than one hand-held
`
`
`
`4
`
`
`
`
`
`host device. See, e.g., Ex. 1001 at independent claims 1, 16, and 27. The
`
`claims specify that one or more of the input accelerator device’s input elements
`
`are configured to be selectively mapped to one or more functions of a software
`
`application on the hand-held host device. (Id.) (Claims 1 and 27 require that
`
`“each” of “a plurality” of input elements be so configured, while claim 16
`
`requires that “at least one” input element be so configured.)
`
`This patent was originally assigned to Zeemote and later to Aplix, a
`
`Japanese operating company, which eventually acquired Zeemote’s assets,
`
`including the ’097 patent. (Ex. 2005 at ¶ 2.)
`
`
`II. THE PETITION CITES NO EVIDENCE OF OBVIOUSNESS OF
`CLAIMS 1, 10, 11, 13, 14, 16, 25, 26, 27, 36, 37, AND 38.
`
`At the threshold, Petitioner fails to advance any argument at all regarding
`
`the obviousness of claims 1, 10-11, 13-14, 16, 25-27, and 36-38. Petitioner,
`
`however, has the burden to show—by a preponderance of the evidence—that
`
`these claims are invalid. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp.,
`
`IPR2012-00042, Paper No. 60 (Final Written Decision) at 3. Without this
`
`evidence, Petitioner’s invalidity arguments on these claims must fail.
`
`The Petitioner argued, among other things, that Mollinari anticipated
`
`claims 1, 13-14, 16, 25-27, and 36-38 (Corrected Petition (Paper No. 4) at 7-
`
`22), and that Kerr anticipated claims 10 and 11, but the Board did not institute
`
`
`
`5
`
`
`
`
`
`trial on these grounds. (Id. at 43-58.) Petitioner argued in the alternative that a
`
`Mollinari-Nishiumi or Kerr-Lum combination rendered these same claims
`
`obvious. (Id. at 22-27, 58-59.) Petitioner failed, however, to advance a single
`
`argument or piece of evidence as to the obviousness of these combinations.
`
`Instead, Petitioner simply incorporated by reference its arguments that
`
`Mollinari and Kerr anticipated these claims. In other words, Petitioner asks the
`
`Board to find claims 1, 10-11, 13-14, 16, 25-27, and 36-38 invalid under §
`
`103(a) without advancing a single argument that it would have obvious to
`
`combine Mollinari and Nishiumi or Kerr and Lum on these claims.
`
`The law is clear: if anticipation is lacking, Petitioner must introduce
`
`evidence of obviousness to succeed on its invalidity claims. This principle
`
`flows from the fact that “the need to determine obviousness presumes
`
`anticipation is lacking.” Structural Rubber Products Co. v. Park Rubber Co.,
`
`749 F.2d 707, 716 (Fed. Cir. 1984) (quotation omitted). In other words, “[i]f it
`
`is necessary to reach beyond the boundaries of a single reference to provide
`
`missing disclosure of the claimed invention, the proper ground is not § 102
`
`anticipation, but § 103 obviousness.” Cohesive Techs., Inc. v. Waters Corp.,
`
`543 F.3d 1351, 1364 (Fed. Cir. 2008) (citations omitted).
`
`In these circumstances, the Board should now observe that no evidence
`
`has been presented about (1) how a proposed Mollinari-Nishiumi combination
`
`
`
`6
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`
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`
`
`renders claims 1, 13-14, 16, 25-27, and 36-38 or obvious (2) how a proposed
`
`Kerr-Lum combination renders claims 10 and 11 obvious. Where there is no
`
`evidence to support the argument that these claims are obvious, the Board
`
`should reject Petitioner’s obviousness arguments with respect to these claims.
`
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts that the person of ordinary skill in the art of the ’097
`
`patent is:
`
`a person with (1) an undergraduate degree in
`
`computer science, computer engineering, electrical
`
`engineering, or similar technical fields; (2) a working
`
`knowledge of computers - including handheld
`
`computing devices, and their processing, storage,
`
`hardware—including input devices, and software; (3)
`
`two to four years of experience (or, with a graduate
`
`degree in the above-stated fields, one to two years of
`
`experience) with designing and developing human-
`
`computer interfaces and the associated technologies.
`
`(Corrected Petition at 7.)
`
`
`Aplix generally agrees with this standard provided that “working
`
`knowledge” is construed in the manner consistent with Petitioner’s own
`
`expert’s testimony. “Working knowledge” must mean “hands-on experience . . .
`
`
`
`7
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`
`
`
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`learning that came from working with those devices” as opposed to “book
`
`knowledge or didactic learning.” (Ex. 2031 (Welch 10/21/15 depo) at 29:7-18.)
`
`Despite Petitioner’s expert’s testimony on this point, his CV reflects no
`
`such hands-on experience with hand-held user-input device hardware in his
`
`long career in virtual reality systems, apart from two projects that employed off-
`
`the-shelf smartphones. (Ex. 2031 (Welch 10/21/15 depo) at 113:17-114:9,
`
`122:7-14.) It contains no evidence that Petitioner’s expert ever designed user
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`interface hardware as did the ’097 inventors and Aplix’s expert, Peng Lim.
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`Mr. Lim was personally involved in developing Fujitsu’s and Palm’s most
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`successful hand-held devices. (Ex. 2029 (Welch 7/28-29/15 depo) at 42:15-
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`46:4; Ex. 2009, Lim ¶¶ 11-13.)
`
`
`IV. PETITIONER’S OBVIOUSNESS CASE RESTS ON NON-
`ANALOGOUS ART.
`
`Petitioner asks the Board to consider prior art that is not analogous to the
`
`’097 patent. A claim is obvious if the differences between the claimed subject
`
`matter and the prior art are such that the claimed subject matter would have
`
`been obvious at the time the invention was made to a person having ordinary
`
`skill in the art. Graham v. John Deere Co., 383 U.S. 1, 14 (1966). Determining
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`obviousness requires analysis of (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the claimed invention, (3) the level of
`
`
`
`8
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`
`
`
`
`ordinary skill in the field of the invention, and (4) any relevant objective
`
`considerations of nonobviousness. Id. at 17. This framework helps “guard
`
`against slipping into use of hindsight and [ ] resist the temptation to read into
`
`the prior art the teachings of the invention in issue.” Id. at 36 (internal citation
`
`omitted). While an analysis of any teaching, suggestion, or motivation to
`
`combine elements from different prior-art references is useful, the overall
`
`inquiry must be flexible. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
`
`(U.S. 2007). “A factfinder should be aware, of course, of the distortion caused
`
`by hindsight bias. . . .” Id. at 421.
`
`
`
`Evaluating an obviousness contention requires a threshold determination
`
`as to whether the proffered prior-art references are “analogous” to the ’097
`
`patent’s claimed invention. “A reference qualifies as prior art for an
`
`obviousness determination under § 103 only when it is analogous to the claimed
`
`invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
`
`added). “To go beyond analogous art in a § 103 analysis runs the risk of
`
`hindsight reconstruction of a claimed invention by merely finding each of its
`
`constituent elements somewhere in the prior art, without concern for whether a
`
`[person having ordinary skill in the art] would have reasonably considered that
`
`art.” Janice M. Mueller, Patent Law (4th ed. 2013), at 294.
`
`
`
`9
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`
`
`
`
`To avoid such hindsight reconstruction, prior art qualifies as “analogous”
`
`only [1] if it is from the same field of endeavor or [2] if it is reasonably
`
`pertinent to the particular problem the inventor is trying to solve. Circuit Check
`
`Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). The Nishiumi and Tu
`
`references are neither.
`
`A. Nishiumi (U.S. Patent No. 5,903,257)
`
`Nishiumi is neither from the same field of endeavor of the ’097 patent
`
`nor reasonably pertinent to the particular problem the ’097 inventors aimed to
`
`solve.
`
`1.
`
`Nishiumi and the ’097 patent occupy different fields of
`endeavor.
`
`The appropriate field of endeavor is determined by “reference to
`
`explanations of the invention’s subject matter in the patent application,
`
`including the embodiments, function, and structure of the claimed invention.”
`
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Similarity in the structure
`
`and function of the invention and the prior art is indicative that the prior art is
`
`within the inventor’s field of endeavor.” State Contracting & Eng’g Corp. v.
`
`Condotte America, Inc., 346 F.3d 1057, 1069 (Fed. Cir. 2004). Beyond these
`
`guideposts, however, it is necessary to apply common sense in “deciding in
`
`which fields a person of ordinary skill would reasonably be expected to look for
`
`
`
`10
`
`
`
`
`
`a solution to the problem facing the inventor.” Bigio, 381 F.3d at 1326
`
`(citations and quotation marks omitted).
`
`To assess the appropriate field of endeavor, courts decline to accept an
`
`overly broad field description, particularly in the electronics context. In Wang
`
`Labs., Inc. v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993), for example, the
`
`inventor aimed to create compact, modular memories for personal computers.
`
`Id. at 864. Because the prior art concerned SRAM or ROM memory, rather
`
`than DRAM memory as used in the patent-at-issue, the Federal Circuit
`
`concluded that a reasonable jury could have found that the prior art was outside
`
`the claimed invention’s field of endeavor. Id. Reviewing the prior art, the
`
`Federal Circuit emphasized that the art was “not in the same field of endeavor
`
`as the claimed subject matter merely because it relate[d] to memories.” Id.
`
`
`
`Similarly, in an extensively cited 1992 decision, the Federal Circuit
`
`specifically noted that inventions that are part of a common endeavor may
`
`nonetheless not be in the same “field of endeavor” for obviousness purposes. In
`
`re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). There, an invention relating to the
`
`extraction of crude petroleum was held not to be in the same field of endeavor
`
`as an invention relating to the storage of refined petroleum, even though both
`
`“relate[d] to the petroleum industry” and both arguably sought to “maximize[e]
`
`withdrawal of petroleum stored in petroleum reservoirs.” Id.
`
`
`
`11
`
`
`
`
`
`
`
`Here, Petitioner asserts that Nishiumi and the ’097 patent are within the
`
`same field of endeavor because they both aim “to provide small, handheld
`
`devices that enable the user to quickly and efficiently input data though a game
`
`controller.” (Corrected Petition at 23-24.) This, however, is an inaccurate
`
`description of Nishiumi’s function. Nishiumi is narrowly directed to solving a
`
`very particular problem for a particular type of input element—a joystick.
`
`Nishiumi describes its “Field of the Invention,” as follows:
`
`This invention relates to an operating device and an
`
`image processing system using same. More
`
`particularly, this invention is concerned with an
`
`operating device (joystick) with which the function is
`
`extendable for an image processing apparatus, such as
`
`a personal computer, a video game machine, and so
`
`on, to enable transmission and reception of any data.
`
`
`(Ex. 1004 at 1:5-11.)
`
`More specifically, Nishiumi addresses joystick-manufacturing defects by
`
`providing a joystick whose origin point can be recalibrated by a user. Nishiumi
`
`is not directed to an input accelerator device for controlling a hand-held host
`
`device. Confirming this point, Nishiumi does not even mention hand-held host
`
`
`
`12
`
`
`
`
`
`devices or their interfaces.1 It depicts the disclosed controller interacting with
`
`only a typical-size game console, not a hand-held game system.2 Nishiumi does
`
`not discuss in any detail the design of any input elements other than joysticks.3
`
`Nishiumi’s sole focus is on a joystick’s origin-point recalibration and providing
`
`“an image processing apparatus” that can use such a joystick.4
`
`
`1
`Ex. 2009, Lim ¶¶ 81-83; Ex. 2031 (Welch 10/21/15 depo) at 102-
`
`103 (admitting that his statement that Nishiumi discloses “small, handheld
`
`devices” was based on its disclosure of a controller, not of a hand-held host
`
`device).
`
`2
`
`Ex. 2031 (Welch 10/21/15 depo) at 100:21-101:13 (admitting that
`
`Figure 1 of Nishiumi depicts an example of a console system).
`
`3
`
`Ex. 1004 at Fig. 1; Ex. 2009, Lim ¶¶ 81-83; Ex. 2031 (Welch
`
`10/21/15 depo) at 97:13-100:6 (Nishiumi’s interface “could be anything”; a
`
`person of ordinary skill in the art would not “draw any conclusions about the
`
`location” or shape of the interface elements from the “examples” Nishiumi
`
`provides in his figures).
`
`4
`
`Ex. 1004 at 1:24-32 (object of the invention is to provide a joystick
`
`in which “errors incurred through mass production can readily [sic] corrected
`
`and the origin point . . . can be determined and modified freely” and an “image
`
`processing system” using such a joystick); Ex. 2009, Lim ¶¶ 81-83.
`
`
`
`13
`
`
`
`
`
`In contrast to Nishiumi, the ’097 patent is concerned with streamlining
`
`interactions with hand-held host devices like PDAs and smart phones. (Ex.
`
`1001, 1:11-16.) All of the ’097 patent’s independent claims are directed to an
`
`apparatus and methods for controlling a “hand-held host device.” Its input
`
`accelerator is designed to be an accessory device to connect to a hand-held host
`
`device and improve the overall human-computer interface for controlling hand-
`
`held host devices. See Ex. 1001, 5:48-61.
`
`The ’097’s Abstract describes this aim as follows: “The input accelerator
`
`device can control some or all functions of the host device to eliminate the need
`
`to directly interface with the host device.” (Ex. 1001, Abstract.) The patent’s
`
`Summary further explains this objective, noting that the inventors recognized
`
`that “conventional human interface and input systems for hand-held electronic
`
`devices tended to be relatively inflexible” (Ex. 1001, 4:26-30), and,
`
`consequently, the inventors “developed a flexible and efficient human interface
`
`and input system and techniques that may be implemented on a variety of small
`
`hand-held accessory devices or ‘input accelerator’ devices.” (Ex. 1001, 5:44-
`
`48.) This objective of streamlining interaction with hand-held host devices has
`
`nothing to do with Nishiumi’s joystick calibration.
`
`It is true that both inventions broadly apply to the larger world of hand-
`
`held electronic controllers, but that is insufficient to declare them within the
`
`
`
`14
`
`
`
`
`
`same field. See, e.g., Wang Labs., 993 F.2d at 858. The “embodiments,
`
`function, and structure of the claimed invention” are distinct from the cited
`
`prior art. In re Bigio, 381 F.3d at 1325. As such, there is no reason that a
`
`person of ordinary skill would reasonably have been expected to look at
`
`Nishiumi to address the problem of quickly and effi
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