UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`
`
`___________________________________
`
`IPR2015-01023
`Patent 8,035,623
`___________________________________
`
`
`
`PETITIONER’S DEMONSTRATIVE EXHIBITS FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`
`
`___________________________________
`
`IPR2015-01023
`Patent 8,035,623
`___________________________________
`
`
`
`PETITIONER’S DEMONSTRATIVE EXHIBITS FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner
`v.
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`
`Case No. IPR2015‐01023 / Patent 8,035,623
`
`PETITIONER’S DEMONSTRATIVE EXHIBITS
`
`1
`
`
`
`The Three Challenged Claims
`24, 30, & 31
`1. Claim 24 (statutory disclaimer to be filed “in the near future”*)
`
`2. Claim construction of “next likely switch selection” in claims 30
`and 31
`
`3. Invalidity of claims 30 and 31 in view of Hinckley under
`Petitioner’s claim construction of “next likely switch selection”
`
`4. Obviousness of claims 30 and 31 in view of Hinckley under
`Patent Owner’s claim construction of “next likely switch
`selection”
`
`*Paper No. 13 (Patent Owner Response) at 2.
`
`2
`
`
`
`The Three Challenged Claims
`24, 30, & 31
`1. Claim 24 (statutory disclaimer to be filed “in the near future”*)
`
`2. Claim construction of “next likely switch selection” in claims 30
`and 31
`
`3. Invalidity of claims 30 and 31 in view of Hinckley under
`Petitioner’s claim construction of “next likely switch selection”
`
`4. Obviousness of claims 30 and 31 in view of Hinckley under
`Patent Owner’s claim construction of “next likely switch
`selection”
`
`*Paper No. 13 (Patent Owner Response) at 2.
`
`3
`
`
`
`1. Patent Owner stated that it plans to disclaim Claim 24
`
`Patent Owner Has Not Argued for Patentability of Claim 24
`
`Paper No. 13 (Patent Owner Response) at 2.
`
`4
`
`
`
`The Three Challenged Claims
`24, 30, & 31
`1. Claim 24 (statutory disclaimer to be filed “in the near future”*)
`
`2. Claim construction of “next likely switch selection” in claims 30
`and 31
`
`3. Anticipation of claims 30 and 31 in view of Hinckley under
`Petitioner’s claim construction of “next likely switch selection”
`
`4. Obviousness of claims 30 and 31 in view of Hinckley under
`Patent Owner’s claim construction of “next likely switch
`selection”
`
`*Paper No. 13 (Patent Owner Response) at 2.
`
`5
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Exhibit 1001 (623 Patent) 18:48‐56 & 19:15‐20:3.
`
`6
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`“touch”
`
`Exhibit 1001 (623 Patent) 18:48‐56 & 19:15‐20:3.
`
`7
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Paper No. 14 (Petitioner’s Reply) at 2.
`
`8
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`The Statute
`
`35 U.S. Code § 112 - Specification
`
`(a)In General.—
`The specification shall contain a written description of
`the invention, and of the manner and process of making
`and using it, in such full, clear, concise, and exact terms
`as to enable any person skilled in the art to which it
`pertains, or with which it is most nearly connected, to make
`and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying
`out the invention.
`(b)Conclusion.—
`The specification shall conclude with one or more claims
`particularly pointing out and distinctly claiming the
`subject matter which the inventor or a joint inventor
`regards as the invention.
`
`9
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`The Rule
`
`37 CFR 42.100 - Procedure; pendency.
`
`(b) A claim in an unexpired patent shall be
`given its broadest reasonable construction in
`light of the specification of the patent in which
`it appears.
`
`10
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`The U.S. Court of Appeals for the Federal Circuit
`
`“[A] claim construction analysis must begin and
`remain centered on the claim language itself, for
`that is the language the patentee has chosen to
`particularly point[ ] out and distinctly claim[ ] the
`subject matter which the patentee regards as his
`invention.”
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111, 1116 (Fed. Cir. 2004) (internal citations omitted).
`
`Claim language also must always be read in view of the specification, which is
`“highly relevant to the claim construction analysis. Usually it is dispositive; it is
`the single best guide to the meaning of a disputed item.” Vitronics Corp., 90 F.3d
`at 1582.
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (emphasis added).
`
`11
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`The U.S. Court of Appeals for the Federal Circuit
`
`Notably, a claim interpretation which
`“excludes a disclosed embodiment
`from the scope of the claim is rarely, if
`ever, correct.”
`
`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir.
`2013) (citing Accent Pkg., Inc. v. Leggett & Platt, Inc., 707 F.3d
`1318, 1326 (Fed. Cir. 2013).
`
`“It is well settled that . . . the court should look first to the intrinsic evidence of
`record . . . Such intrinsic evidence is the most significant source of the legally
`operative meaning of disputed claim language . . . In most situations, an analysis of
`the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In
`such circumstances, it is improper to rely on extrinsic evidence.”
`
`Vitronics Corp., 90 F.3d at 1582-83.
`12
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Full Context of Claim
`
`Exhibit 1001 (623 Patent) 18:48‐56 & 19:15‐20:3.
`
`13
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Claim 30 language “to be made through physical contact”
`
`Exhibit 1001 (623 Patent) 18:48‐56 & 19:15‐20:3.
`
`14
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Relevance of Claim 32
`
`Exhibit 1001 (623 Patent) 20:8‐14.
`
`15
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Use of “Switch” Across All Claims
`
`Exhibit 1001 (623 Patent) 17:2‐35 & 18:10‐14; Paper No. 14 (Petitioner’s Reply) at 5 (citing claims 1, 2, and 15).
`
`16
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`Embodiments with Physical Buttons
`
`Exhibit 1001 (623 Patent) 14:23‐37.
`
`17
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`Embodiments with Physical Buttons
`
`Exhibit 1001 (623 Patent) 14:57‐64.
`
`18
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`Embodiments with Physical Buttons
`
`Exhibit 1001 (623 Patent) 16:1‐16.
`
`19
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`Embodiments with Physical Buttons
`
`Exhibit 1001 (623 Patent) 16:35‐44.
`
`20
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`
`Petitioner’s expert, the only expert testifying in this matter.
`
`Ex. 1021 (First Horenstein Decl.) at ¶ 52.
`
`21
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`Context of Petitioner’s Expert’s Testimony
`
`Ex. 2001 (Horenstein Transcript) at p. 54, ll. 19‐20.
`
`22
`
`
`
`2. Patent Owner proposes adding “touch” to “next likely switch selection”
`Context of Petitioner’s Expert’s Testimony
`
`Ex. 2001 (Horenstein Transcript) at 55: 4‐20.
`
`23
`
`
`
`The Three Challenged Claims
`24, 30, & 31
`1. Claim 24 (statutory disclaimer to be filed “in the near future”*)
`
`2. Claim construction of “next likely switch selection” in claims 30
`and 31
`
`3. Invalidity of claims 30 and 31 in view of Hinckley under
`Petitioner’s claim construction of “next likely switch selection”
`
`4. Obviousness of claims 30 and 31 in view of Hinckley under
`Patent Owner’s claim construction of “next likely switch
`selection”
`
`*Paper No. 13 (Patent Owner Response) at 2.
`
`24
`
`
`
`3. Patent Owner does not contest invalidity under Petitioner’s construction
`
`Exhibit 1001 (623 Patent) 18:48‐56 & 19:15‐20:3; Paper No. 14 (Petitioner’s Reply) at 16.
`
`25
`
`
`
`The Three Challenged Claims
`24, 30, & 31
`1. Claim 24 (statutory disclaimer to be filed “in the near future”*)
`
`2. Claim construction of “next likely switch selection” in claims 30
`and 31
`
`3. Invalidity of claims 30 and 31 in view of Hinckley under
`Petitioner’s claim construction of “next likely switch selection”
`
`4. Obviousness of claims 30 and 31 in view of Hinckley under
`Patent Owner’s claim construction of “next likely switch
`selection”
`
`*Paper No. 13 (Patent Owner Response) at 2.
`
`26
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`Patent Owner Provided No Argument that Additional
`Claim 31 Limitations Were Nonobvious
`
`Exhibit 1001 (623 Patent) 20:4‐7; Paper No. 14 (Petitioner’s Reply) at 25.
`
`27
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`Overview of Obviousness Argument
`
`Exhibit 1001 (623 Patent) 18:48‐56 & 19:15‐20:3.
`
`28
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`The Statute
`
`35 U.S. Code § 103 - Conditions for patentability;
`non-obvious subject matter
`
`A patent for a claimed invention may not be obtained,
`notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, if the
`differences between the claimed invention and the prior
`art are such that the claimed invention as a whole would
`have been obvious before the effective filing date of the
`claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains. Patentability
`shall not be negated by the manner in which the invention
`was made.
`
`29
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`Supreme Court
`
`[W]hen a patent simply arranges old elements with each
`performing the same function it had been known to
`perform and yields no more than one would expect from
`such an arrangement, the combination is obvious.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
`(2007) (internal citations omitted).
`
`[I]f a technique has been used to improve one device,
`and a person of ordinary skill in the art would recognize
`that it would improve similar devices in the same way,
`using the technique is obvious unless its actual
`application is beyond his or her skill.
`
`Id.
`
`30
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`The U.S. Court of Appeals for the Federal Circuit
`
`Combining two embodiments
`disclosed adjacent to each other
`in a prior art patent does not
`require a leap of inventiveness.
`
`Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d
`982, 991 (Fed. Cir. 2009).
`
`31
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`Obviousness of Guiding the User Toward a Next Likely Touch
`Switch Selection in view of Hinckley
`
`1. Adding touch
`sensing to the
`proximity sensitive
`rocker switch
`
`2. Adding proximity
`sensing to the touch
`sensitive keyboard
`buttons
`
`Paper No. 14 (Petitioner’s Reply) at 17‐25; Ex. 1005 (Hinckley) at Fig. 18(A) & 18(C).
`
`32
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`Motivation of POSIA to modify Hinckley’s rocker switch 315
`• When Hinckley’s user “approaches the rocker switch 315, an on‐
`screen display showing an icon for each currently running
`application may be shown.” Ex. 1005 (Hinckley) at ¶ 0135.
`
`• Hinckley’s rocker switch 315 guides “a user to move forward and
`backward between running applications.” Id.
`
`Paper No. 14 (Petitioner’s Reply) at 18.
`
`33
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`Motivation of POSIA to modify Hinckley’s rocker switch 315
`• “It should be understood that the various
`responses to making contact with or being
`in extreme proximity to a touch sensitive
`control may be used in combination.” Ex.
`1005 (Hinckley) at ¶0148.
`• Dr. Horenstein described in his deposition,
`a contact sensor like that described in
`Hinckley’s keypad may be modified to
`include circuitry that also senses proximity.
`Ex. 2001 (Horenstein Testimony) at p. 55, ll.
`4‐14.
`• Hinckley’s microchip also would have been
`modified to provide different functionality
`in response to proximity events and
`contact events, respectively. Ex. 1022
`(Second Horenstein Decl.) at ¶24.
`
`Paper No. 14 (Petitioner’s Reply) at 18‐19.
`
`34
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`
`Modification Motivations:
`• Hinckley already disclosed displaying icons for each currently running application upon
`proximity detection. Ex. 1005 (Hinckley) at ¶ 0135.
`• Aesthetic and reliability advantages associated with eliminating the moveable aspects of
`the rocker switch. Ex. 1022 (Second Horenstein Decl.) at ¶25.
`• Enabling use of a single sensor for each side of the switch, rather than a touch sensor
`and a push button sensor. Id.
`Paper No. 14 (Petitioner’s Reply) at 20‐21.
`
`35
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`Motivation of POSIA to modify
`Hinckley’s touch‐sensitive keyboard
`•
`“Radial menu 370 includes eight entries arranged in
`a circle 371 around a cancel button 372. Radial
`menu 370 may be manipulated by for example,
`using keyboard 300 of FIG. 18A or by using the
`touch sensors on button 670 of the mouse of FIG.
`10H.” Ex. 1005 (Hinckley) at ¶0130.
`“To highlight a specific entry, the user touches a key
`in keypad 304 that is spatially related to the entry.”
`Id. at ¶0131.
`“[T]o highlight entry 373 of radial menu 370, the
`user touches the key representing the number ‘8’,
`which is located directly above a center key
`representing the number ‘5’ because the spatial
`positioning of the ‘8’ key relative to the ‘5’ key is the
`same as the spatial relationship between entry 373
`and cancel button 372.” Id.
`“To select an entry, the user depresses the key that
`causes the entry to be highlighted.” Id.
`
`•
`
`•
`
`•
`
`Paper No. 14 (Petitioner’s Reply) at 21‐23
`
`36
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`Motivation of POSIA to modify
`Hinckley’s touch‐sensitive keyboard
`
`• Hinckley taught a display (menu 370) on which information (highlighting) is displayed that
`guides the user to a next likely push button selection (pressing one of the number keypad
`keys). Ex. 1022 (Second Horenstein Decl.) at ¶ 29.
`
`• Hinckley would have been modified such that its touch sensors on the keys of the number
`pad could include proximity sensing functionality:
`• Hinckley already generally disclosed using contact sensors and proximity sensors. Id.
`• POSIA would have sought to modify Hinckley’s touch sensor to be able to distinguish
`between contact and proximity in order to provide a first response when a user is
`proximate one of the keys of the number pad (i.e., highlighting one of entries 373), and
`a second response when the user contacts that key (i.e., selection of the entry 373). Id.
`• Such a modification would have yielded the benefits of both of the contact and
`proximity sensing taught by Hinckley in a routine and predictable way. Id.
`
`Paper No. 14 (Petitioner’s Reply) at 23‐24.
`
`37
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`The U.S. Court of Appeals for the Federal Circuit
`
`SAS Institute, Inc. v. Complementsoft, LLC, No.
`2015-1346, 2015-1347 (Fed. Cir. June 10, 2016),
`slip op. at 17.
`
`Responsive to Patent Owner’s Request for Oral Argument, Issue No. 5
`
`38
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`The U.S. Court of Appeals for the Federal Circuit
`
`Genzyme had actual notice of the in vivo references. . .
`the regulations governing inter partes review
`proceedings provide patent owners with procedural
`mechanisms either to respond to evidence raised in the
`petitioner’s reply or to move to exclude it. . . If
`Genzyme had wanted the Board to disregard those
`references, it could have filed a motion to exclude
`them. . . If it had wished to submit a further substantive
`response to those references, it could have asked for
`leave to file a surreply, as longstanding Board practice
`allows.
`
`Genzyme Therapeutics Prods. L.P. v. Biomarin
`Pharma. Inc., No. 2015-1720, 2015-1721 (Fed.
`Cir. June 14, 2016), slip op. at 12.
`
`Responsive to Patent Owner’s Request for Oral Argument, Issue No. 5
`
`39
`
`
`
`3. Obviousness of Claims 30 and 31 Under Global Touch’s Construction
`U.S.P.T.O. Patent Trial & Appeals Board
`
`We are mindful that Patent Owner’s Response
`presents arguments in support of patentability of
`claims 9 and 10 over a combination of three
`references. We discern no prejudice to Patent
`Owner, however, in our reconsideration of the
`patentability of claims 9 and 10 based on two
`separate grounds under 35 U.S.C. § 103(a) . . .
`
`IPR2014-00971, Paper No. 36, p. 13, April 27, 2016.
`
`Responsive to Patent Owner’s Request for Oral Argument, Issue No. 5
`
`40
`
`
`
`The Three Challenged Claims
`24, 30, & 31
`1. Claim 24 (statutory disclaimer to be filed “in the near future”*)
`
`2. Claim construction of “next likely switch selection” in claims 30
`and 31
`
`3. Invalidity of claims 30 and 31 in view of Hinckley under
`Petitioner’s claim construction of “next likely switch selection”
`
`4. Obviousness of claims 30 and 31 in view of Hinckley under
`Patent Owner’s claim construction of “next likely switch
`selection”
`
`*Paper No. 13 (Patent Owner Response) at 2.
`
`41
`
`
`
`
`
`Case IPR2015-01023
`U.S. Patent No. 8,035,623
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing
`
`PETITIONER’S DEMONSTRATIVE EXHIBITS FOR ORAL ARGUMENT
`
`was served via email this 8th day of July, 2016, on the following:
`
`
`
`SUGHRUE MION PLLC
`c/o William H. Mandir
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`gts@sughrue.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Daniel J. Goettle/
`Daniel J. Goettle (Registration No. 50,983)
`BAKER HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`P: (215) 568-3100
`F: (215) 568-3439
`dgoettle@bakerlaw.com
`
`Attorney for Petitioner
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