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.
`
`
`
`IPR2015-01151
`U.S. Patent No. 8,288,952
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`

`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`Patent Owner’s Arguments for Why Jahagirdar and Schultz Would Not
`Have Been Combined Contradict Obviousness Law and Statements
`Made by Its Expert, Dr. Morley. ..................................................................... 1
`
`A. Dr. Morley’s Declaration and testimony confirm that touch
`sensors provide all of the advantages identified by Petitioner. ............. 2
`
`B.
`
`Patent Owner’s Arguments Fail Under the Correct Law of
`Obviousness. .......................................................................................... 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`Patent Owner fails to appreciate that obviousness does not
`require explicit teaching of a recognized problem in the
`prior art. ....................................................................................... 5
`
`Patent Owner’s argument that Jahagirdar’s push buttons
`would have been replaced with membrane switches, rather
`than touch sensors, is also irrelevant to the obviousness
`analysis. ....................................................................................... 6
`
`Patent Owner ignores that one of ordinary skill is also one
`of ordinary creativity. .................................................................. 8
`
`Patent Owner fails to show that the combination of
`Jahagirdar and Schultz would have been inoperable. ............... 10
`
`III.
`
`Patent Owner Incorrectly Argues that Jahagirdar Lacked an “Activating
`a Visible Indication in Response to an Activation Signal Received from
`the User Interface.” ........................................................................................ 11
`
`A.
`
`Patent Owner ignores the critical sentence in Jahagirdar that
`shows that Jahagirdar taught the claimed activation of a visible
`indication. ............................................................................................ 12
`
`IV. Patent Owner’s Argument that Jahagirdar Did Not Disclose Automatic
`Deactivation Fails Because it is Based on the Same Mischaracterization
`of Jahagirdar Described in Section III. .......................................................... 15
`
`V.
`
`Conclusion ..................................................................................................... 16
`
`- i -
`
`

`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ACCO Brands Corp. v. Fellowes, Inc.,
`813 F.3d 1361 (Fed. Cir. 2016) ............................................................................ 6
`
`Apple Inc. v. Samsung Elecs. Co.,
`816 F.3d 788 (Fed. Cir. 2016) .......................................................................... 7, 8
`
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
`555 F.3d 984 (Fed. Cir. 2009) .............................................................................. 5
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ........................................................................ 7, 8
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ............................................................................ 9
`
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 2, 5, 6, 9
`
`Plas-Pak Industries, Inc. v. Sulzer Mixpac AG,
`600 Fed. Appx. 757 (Fed. Cir. 2015) .................................................................. 10
`
`Q. I. Press Controls, B.V. v. Lee,
`752 F.3d 1371 (Fed. Cir. 2014) ............................................................................ 6
`
`In re Urbanski,
`809 F.3d 1237 (Fed. Cir. 2016) ............................................................................ 3
`
`
`
`
`
`- ii -
`
`

`
`
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 8,288,952 (filed July 25, 2011) (“’952 patent”)
`
`Prosecution history for the ’952 patent (“’952 prosecution history”)
`
`U.S. Patent No. 6,249,089 (filed Oct. 9, 1998) (“’089 Patent”)
`
`U.S. Patent No. 6,125,286 (filed June 5, 1997) (“Jahagirdar”)
`
`U.S. Patent No. 4,053,789 (filed Aug. 27, 1976) (“Schultz”)
`
`U.S. Patent No. 5,329,577 (filed Dec. 29, 1992) (“Norimatsu”)
`
`William Buxton et al., Issues and Techniques in Touch-Sensitive
`Tablet Input, 85 PROC. SIGGRAPH CONF. ON COMPUTER GRAPHICS
`AND INTERACTIVE TECHS. 215, 215-24 (1985) (“Buxton”)
`
`U.S. Patent No. 4,963,793 (filed Mar. 8, 1988) (“DePauli”)
`
`U.S. Patent No. 4,764,708 (filed Dec. 8, 1986) (“Roudeski”)
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Expert Declaration of Dr. Horenstein (“Horenstein Decl.”)
`
`Reserved
`
`Reserved
`
`Transcript of Deposition of Robert E. Morley, Jr. (“Morley Tr.”)
`
`Reserved
`
`- iii -
`
`

`
`
`
`Exhibit
`No.
`
`1019
`
`1020
`
`1021
`
`1022
`
`
`
`Description
`
`Reserved
`
`Reserved
`
`Reserved
`
`Second Declaration of Mark Horenstein (“Second Horenstein Dec.”)
`
`- iv -
`
`

`
`U.S. Patent No. 8,288,952
`
`I.
`
`Introduction
`
`Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40 (the “Challenged
`
`Claims”) of the ’952 patent (Ex. 1001) are invalid. Patent Owner’s arguments to
`
`the contrary ignore crucial passages of the primary reference Jahagirdar; contradict
`
`its own expert, Dr. Morley; and contradict well-established obviousness law.
`
`II.
`
`Patent Owner’s Arguments for Why Jahagirdar and Schultz Would Not
`Have Been Combined Contradict Obviousness Law and Statements
`Made by Its Expert, Dr. Morley.
`
`Patent Owner’s expert, Dr. Morley, admits the fundamental reasons why the
`
`Challenged Claims would have been obvious: the flip-phone of Jahagirdar and
`
`touch sensor of Schultz are prior art; there was no technical barrier to combining
`
`them; and the result of combining them was predictable. Ex. 1017 (Morley Tr.) at
`
`176:2- 77:13; Ex. 2002 (Morley Dec.) at ¶ 32 (correctly stating that this is a
`
`rationale for obviousness). As Dr. Morley explains, the Schultz touch sensors were
`
`not limited by size or arrangement, and a person of ordinary skill could have taken
`
`the Schultz sensors and put them into touch sensors the size of the buttons on
`
`Jahagirdar. Ex. 1017 (Morley Tr.) at 138:17-21; 140:2-13. And, in any event, as
`
`Dr. Morley acknowledges, the claims of the ’952 patent contain no limitations as to
`
`the physical form, internal architecture, or arrangement of the touch sensors. Id. at
`
`172:12-173:10. Patent Owner’s remaining arguments that one of ordinary skill
`
`- 1 -
`
`

`
`U.S. Patent No. 8,288,952
`
`would not have found this simple combination obvious contradict its own expert
`
`and are legal error.
`
`A. Dr. Morley’s Declaration and testimony confirm that touch
`sensors provide all of the advantages identified by Petitioner.
`
`Petitioner showed that one of ordinary skill in the art would have sought to
`
`incorporate touch sensors such as those taught in Schultz into Jahagirdar’s flip-
`
`phone in order to: (1) minimize accidental actuation; (2) eliminate problems of
`
`contamination and mechanical failures; and (3) to enhance convenience and
`
`aesthetics for the user. Patent Owner’s argument that “not one of these reasons
`
`amounts to a rational basis for combining the references” (Paper No. 14 (Patent
`
`Owner Response), p. 13), is fatally undermined by Dr. Morley’s contradictory
`
`testimony, which clearly shows “some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness” of the Challenged
`
`Claims. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`First, Dr. Morley admits that Schultz’s touch sensors would have alleviated
`
`the problem of accidental actuation by inanimate objects, such as clothes, objects
`
`in a bag, surfaces of furniture, and so on. Ex. 1017 (Morley Tr.) at 157:20-158:23;
`
`See also Ex. 2002 (Morley Dec.) at ¶ 60. Thus, Patent Owner’s argument that the
`
`touch sensors would increase inadvertent actuation by a person’s hand — even if
`
`true — does nothing to dispel the motivation of one of ordinary skill seeking to
`
`reduce inadvertent inanimate-object actuation. Ex. 1022 (Second Horenstein Dec.)
`
`- 2 -
`
`

`
`U.S. Patent No. 8,288,952
`
`at ¶3; see also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (affirming
`
`PTAB decision that one of ordinary skill would have been motivated to pursue the
`
`desirable properties taught by a secondary reference, even if that meant foregoing a
`
`benefit of the primary reference, and noting that the claims at issue did not require
`
`the benefit of the primary reference). Furthermore, even if one of the buttons 144
`
`were inadvertently actuated by a hand, the only consequence of this would be a
`
`backlight turning on or a display changing, which even Dr. Morley admits
`
`“wouldn’t be detrimental to the operation” of the phone. Ex. 1017 (Morley Tr.) at
`
`164:3-8.
`
`Second, Dr. Morley recognizes that in the switch art, skilled artisans would
`
`have sought to reduce contamination and mechanical failures. Ex. 2002 (Morley
`
`Dec.) at ¶63. Specifically, Dr. Morley posits that prior art membrane switches
`
`would have been combined with Jahagirdar to reduce contamination and
`
`mechanical failures. Id. But in arguing that membrane switches would alleviate
`
`this problem, Dr. Morley is also admitting that this problem exists, and that
`
`eliminating it would enhance Jahagirdar’s design. And Dr. Morley further admits
`
`that touch sensors would provide this precise advantage, explaining that touch
`
`sensors in an elevator would lead to “[p]robably less maintenance or something,
`
`you know, less — less movement, mechanical things eventually, you know, break,
`
`whereas things that don't move, the fewer moving parts, less to go bad.” Ex. 1017
`
`- 3 -
`
`

`
`U.S. Patent No. 8,288,952
`
`(Morley Tr.) at 171:16-21. Dr. Morley suggests that membrane sensors would
`
`have been an alternative or better solution for Jahagirdar’s flip phones, but cannot
`
`deny that touch sensors, too, would provide this same benefit.
`
`Third, although in his declaration, Dr. Morley avoids discussing Petitioner’s
`
`argument that touch sensors would have enhanced the aesthetics of Jahagirdar’s
`
`flip phone, at his deposition Dr. Morley had to admit this potential advantage (to
`
`the extent he was capable of addressing it). Ex. 1017 (Morley Tr.) at 171:24-172:3
`
`(“[T]here’s aesthetics where people might use the touch sensor because it’s sexier,
`
`you know, somehow it has advantages beyond those known to an engineer.”). Dr.
`
`Morley offers no reason why at least some phone designers or users would not be
`
`attracted to the aesthetics of touch sensors. Indeed, Norimatsu (Ex. 1006), DePauli
`
`(Ex. 1008), and Roudeski (Ex. 1009) — ignored by Dr. Morley in his
`
`declaration — all provided examples of user interfaces that their designers thought
`
`would be enhanced by touch sensors.
`
`Surely, no flip-phone design is perfect, and any user interface design has
`
`advantages and disadvantages. But Petitioner identified three distinct reasons why
`
`one of skill in the art would have sought to incorporate touch sensors into
`
`Jahagirdar’s flip phone, and Dr. Morley’s testimony confirms these advantages.
`
`Thus, Patent Owner’s argument that Petitioner’s obviousness reasoning is not
`
`“rational” is baseless.
`
`- 4 -
`
`

`
`U.S. Patent No. 8,288,952
`
`B.
`Patent Owner’s Arguments Fail Under the Correct Law of
`Obviousness.
`
`Patent Owner’s arguments boil down to pointing out alleged disadvantages
`
`of the combination of the Jahagirdar and Schultz, and arguing that one of skill
`
`would have chosen an alternative design instead. As a matter of law, these
`
`arguments fail.
`
`1.
`Patent Owner fails to appreciate that obviousness does not
`require explicit teaching of a recognized problem in the prior art.
`
`Patent Owner asserts that Petitioner’s proposed motivations to combine are
`
`inadequate because “the evidence of record does not in any way show or establish
`
`that [these reasons were] even a recognized problem at the time of the invention
`
`(or ever).” Paper No. 14 (Patent Owner Response) at p. 14. But obviousness does
`
`not require a showing of “a recognized problem.” KSR, 550 U.S. at 418 (“[T]he
`
`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.”); Ball Aerosol &
`
`Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
`
`(motivation to combine need not be explicit in prior art). Thus, regardless of
`
`whether Jahagirdar recognized the existence of a problem with its buttons, it is
`
`entirely proper for Petitioner to rely on Schultz’s discussion of “inadvertent[]
`
`actuat[ion]” and “contamination and mechanical failures,” Dr. Horenstein’s
`
`- 5 -
`
`

`
`U.S. Patent No. 8,288,952
`
`testimony, and the other prior art of record, in explaining why it would have been
`
`obvious to modify Jahagirdar.
`
`The combination of Jahagirdar and Schultz is a good example of how “a
`
`person of ordinary skill will be able to fit the teachings of multiple patents together
`
`like pieces of a puzzle,” using her “ordinary creativity.” KSR, 550 U.S. at 421. As
`
`Dr. Morley himself states in his declaration, an exemplary rationale that may
`
`support a conclusion of obviousness is “[c]ombining prior art elements according
`
`to known methods to yield predictable results.” Ex. 2002 (Morley Dec.) at ¶ 32.
`
`And Dr. Morley admits that the combination of Jahagirdar and Schultz meets the
`
`elements of that rationale. Ex. 1017 (Morley Tr.) at 176:2-177:13. Thus, the
`
`Challenged Claims would have been obvious. See e.g., ACCO Brands Corp. v.
`
`Fellowes, Inc., 813 F.3d 1361, 1366 (Fed. Cir. 2016) (observing that the prior art
`
`was well-known and could be combined with predictable effect, and finding
`
`obviousness as a matter of law); Q. I. Press Controls, B.V. v. Lee, 752 F.3d 1371,
`
`1379-80 (Fed. Cir. 2014) (noting that combination would yield predictable results).
`
`2.
`Patent Owner’s argument that Jahagirdar’s push buttons
`would have been replaced with membrane switches, rather than touch
`sensors, is also irrelevant to the obviousness analysis.
`
`Patent Owner wrongly concludes that Petitioner’s reasons for modifying
`
`Jahagirdar are not “rational” because another design alternative exists — in
`
`particular, replacing Jahagirdar’s push-button keys with membrane switches.
`
`- 6 -
`
`

`
`U.S. Patent No. 8,288,952
`
`Paper No. 14 (Patent Owner Response) at p. 17. Although Patent Owner appears
`
`to have provided a good argument for why it would also have been obvious to
`
`modify Jahagirdar with membrane switches, this argument has nothing to do with
`
`whether Petitioner’s proposed combination would have been obvious (except that,
`
`as discussed above, it illustrates that one of skill would have sought to improve the
`
`buttons on Jahagirdar). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
`
`(holding that the disclosure of desirable alternatives does not necessarily negate a
`
`suggestion for modifying the prior art to arrive at the claimed invention).
`
`A recent Federal Circuit decision illustrates why Patent Owner’s argument is
`
`incorrect. Apple Inc. v. Samsung Elecs. Co., 816 F.3d 788, 801 (Fed. Cir. 2016).
`
`In Apple, it was undisputed that the prior art disclosed all but one element of the
`
`claim at issue: a touchscreen-based toggle switch. Id. at 800. The defendant cited
`
`another reference that disclosed this switch, but the patent owner responded by
`
`arguing that the secondary reference taught away from Samsung’s proposed
`
`modification because the secondary reference indicated that other types of
`
`touchscreen switches were superior. Id. at 801. The court disagreed, finding that
`
`“‘mere disclosure of more than one alternative’ does not amount to teaching away
`
`from one of the alternatives.” Id. (quoting Fulton, 391 F.3d at 1201). The court
`
`went on to note that “a motivation to use the teachings of a particular prior art
`
`- 7 -
`
`

`
`U.S. Patent No. 8,288,952
`
`reference need not be supported by a finding that that feature be the ‘preferred, or
`
`the most desirable.’” 816 F.3d at 801 (quoting Fulton, 391 F.3d at 1200).
`
`Similarly, here, it does not matter that a skilled artisan would have allegedly
`
`viewed using membrane switches in Jahagirdar as a useful (or even preferable)
`
`alternative to touch sensors because “the question is whether there is something in
`
`the prior art as a whole to suggest the desirability, and thus the obviousness, of
`
`making the combination,” not whether there is something in the prior art as a
`
`whole to suggest that the combination is the most desirable combination available.
`
`Fulton, 391 F.3d at 1200.
`
`3.
`Patent Owner ignores that one of ordinary skill is also one
`of ordinary creativity.
`
`Patent Owner’s position that a skilled artisan would not have sought to
`
`modify Jahagirdar with Schultz’s touch sensors turns on Dr. Morley’s view that the
`
`drawbacks of accidental actuations by human touch far outweigh the advantages of
`
`touch sensors relied upon by Petitioner. As discussed above, the mere presence of
`
`disadvantages does not render a combination nonobvious. And furthermore, both
`
`Dr. Morley and Dr. Horenstein recognize the significant advantage of avoiding
`
`accidental actuation by inanimate objects when the Jahagirdar phone is in its
`
`holster, a pocket, or a bag. Ex. 1022 (Second Horenstein Dec.) at ¶3. But setting
`
`these points aside, Patent Owner’s argument also ignores that an ordinarily creative
`
`artisan could have easily reduced or eliminated accidental actuation by human
`
`- 8 -
`
`

`
`U.S. Patent No. 8,288,952
`
`touch. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
`
`ordinary creativity, not an automaton.”); see also In re ICON Health & Fitness,
`
`Inc., 496 F.3d 1374 (Fed. Cir. 2007) (noting that the modifications that one skilled
`
`in the art would make to a device borrowed from the prior art should not be
`
`ignored in determining whether the prior art combination meets the limitations of a
`
`claim).
`
`For example, Patent Owner’s argument mistakenly relies on the assumption
`
`that keys 144 must be on the side of Jahagirdar’s device and thus vulnerable to
`
`accidental actuation. The claims of the ’952 patent contain no limitations as to the
`
`arrangement of the touch sensors. As explained by Dr. Horenstein (and not
`
`rebutted by Patent Owner), the keys 144 could be relocated to a variety of places
`
`on the phone to suit the design need. Ex. 1014 (First Horenstein Dec.) at ¶ 71; Ex.
`
`2001 (Horenstein Testimony) at 60:10-61:11 (“It’s the function of those keys and
`
`what they do and not their location that is relevant.”). Dr. Morley, too admits that
`
`it would “certainly [have been] possible to move the buttons.” Ex. 1017 (Morley
`
`Tr.) at 176:15-16. This flexibility is further supported by Jahagirdar’s statement
`
`that components like the display area “may be placed along any suitable side of”
`
`the phone housing (Ex. 1004 (Jahgirdar) at col. 8 ll. 7-9), and Dr. Morley’s
`
`recognition that “the inventors of Jahagirdar were acquainted with a variety of
`
`circuitry approaches.” (Ex. 2002 (Morley Dec.) at ¶ 49).
`
`- 9 -
`
`

`
`U.S. Patent No. 8,288,952
`
`4.
`Patent Owner fails to show that the combination of
`Jahagirdar and Schultz would have been inoperable.
`
`Citing Plas-Pak Industries, Inc. v. Sulzer Mixpac AG, Patent Owner argues
`
`that the potential for accidental actuation goes so far as to change the basic
`
`principles under which the prior art operates, or render it inoperable for its
`
`intended purpose. Paper No. 14 (Patent Owner Response) at p. 19 (citing Plas-Pak
`
`600 Fed. Appx. 755, 757 (Fed. Cir. 2015). The record squarely contradicts this
`
`assertion.
`
`As discussed above, both Dr. Horenstein and Dr. Morley agree that the
`
`combination of Jahagirdar and Schultz is no more than replacing one known switch
`
`with another known switch that serves the same purpose (activating some function
`
`in the phone) and produces predictable results. After the combination proposed by
`
`Petitioner, Jahagirdar is still a flip phone, Schultz’s touch sensors are still touch
`
`sensors, and a user of the phone can perform all the same tasks as before. And, in
`
`any event, the only alleged disadvantage that Patent Owner identified “wouldn’t be
`
`a detriment to the operation” of the phone. Ex. 1017 (Morley Tr.) at 164:3-8. All
`
`the evidence shows that the proposed combination of Jahagirdar and Schultz would
`
`not only have been fully operative, but also would have had significant advantages
`
`recognizable to those skilled in the art at the time.
`
`
`
`- 10 -
`
`

`
`U.S. Patent No. 8,288,952
`
`III. Patent Owner Incorrectly Argues that Jahagirdar Lacked an
`“Activating a Visible Indication in Response to an Activation Signal
`Received from the User Interface.”
`
`Patent Owner disputes that Jahagirdar disclosed a “step of activating a
`
`visible indication in response to an activation signal received from the user
`
`interface,”1 as required by each of the Challenged Claims. According to Patent
`
`Owner, the visible indication identified by Petitioner (first display 516) was never
`
`“activated” upon the pressing of one of keys 144.2 Petitioner’s argument is
`
`hopelessly flawed because it ignores a critical sentence in Jahagirdar that disclosed
`
`exactly what Patent Owner claims Jahagirdar failed to teach.
`
`1 Unlike related U.S. Patent Nos. 7,329,970, 7,498,749, 7,781,980, and
`
`7,994,726, for which Petitioner has concurrently filed Responses for instituted
`
`Inter Partes Reviews (IPR2015-01149, IPR2015-01148, IPR2015-1150, and
`
`IPR2015-01147), the Challenged Claims of the ’952 patent are broader in that they
`
`do not require that the load is off or unaffected when the visible indication is
`
`activated.
`
`2 With very little support from the specification, and none from its expert
`
`(Ex. 1017 (Morley Tr.) at 95:11-16), Patent Owner argues that activation and
`
`deactivation mean turning on and turning off, respectively. Jahagirdar disclosed
`
`the “activation” limitation under either Petitioner’s plain meaning interpretation or
`
`Patent Owner’s proposed construction.
`
`- 11 -
`
`

`
`U.S. Patent No. 8,288,952
`
`A.
`Patent Owner ignores the critical sentence in Jahagirdar that
`shows that Jahagirdar taught the claimed activation of a visible indication.
`
`Patent Owner contends that the only way to activate the first display 516 in
`
`Jahagirdar is “by flipping the phone closed, which is not an operation of the keys
`
`144 alleged to correspond to the claimed user interface.” Paper No. 13 (Patent
`
`Owner Response) at p. 20. Patent Owner relies on a portion of Jahagirdar that
`
`described in relation to Figure 8A that display element 516 displays “visual
`
`information, preferably status information, in display area 130 (step 804)” when
`
`the phone is flipped closed. Ex. 1004 (Jahagirdar) at col. 5 ll. 25-35. Since,
`
`according to Patent Owner, display element 516 was already displaying visual
`
`information prior to actuation of key 150 (after the phone is flipped closed), key
`
`150 cannot be said to have activated display element 516 when display element
`
`516 later displayed “new visual information in display area 130.” See Paper No.
`
`14 (Patent Owner Response) at pp. 21-22; Ex. 1004 (Jahagirdar) at col. 5 ll. 57-58.
`
`How, Patent Owner asks, can key 150 “activate” display 516 if it is already
`
`displaying visual information?
`
`Patent Owner ignores that Jahagirdar answered this very question by
`
`describing a configuration in which display element 516 was not activated prior to
`
`actuation of key 150. Specifically, Jahagirdar described that while display area
`
`130 may display status information when the phone was flipped closed,
`
`“[a]lternatively, the status information may include little or no information, where
`
`- 12 -
`
`

`
`U.S. Patent No. 8,288,952
`
`display area 130 is cleared” when the phone was closed. Ex. 1004 (Jahagirdar) at
`
`col. 5 ll. 43-44 (emphasis added). According to this alternative configuration,
`
`when key 150 was pressed to display “new visual information” relative to the
`
`cleared screen, display element 516 would then change from blank to displaying
`
`information, and thus be activated (or turned on) in the process. Id. at col. 5 ll. 43-
`
`57; Ex. 1022 (Second Horenstein Dec.) at ¶ 5.
`
`In attempting to cure this fatal defect in Patent Owner’s argument, Dr.
`
`Morley repeatedly contradicted himself during his deposition. Dr. Morley initially
`
`asserted that “activation” of Jahagirdar’s display element 516 occurred not when
`
`the LEDs of display element 516 were illuminated, but rather when power was
`
`enabled to display element 516. Ex. 1017 (Morley Tr.) at 148:4-7. But moments
`
`later, he reversed positions by confirming that in relation to use of the term
`
`“activation” in the ’952 patent, “there’s no way for the LED to be activated yet
`
`nonetheless not lit up.” Id. at 149:3-8. He reinforced this view by explaining that
`
`individual LED segments in an array are likewise turned on and off when current is
`
`directed to a respective segment. Id. at 217:19-24. Dr. Morley also admitted that
`
`in the context of a light bulb, “if there is a small amount of current going through
`
`the filament but it’s not serving any purpose of illuminating anything, [one of skill
`
`in the art] might call the thing off.” Id. at 215:12-116:9.
`
`- 13 -
`
`

`
`U.S. Patent No. 8,288,952
`
`In fact, neither Patent Owner in its Response, nor Dr. Morley in his
`
`declaration, mention that the display 516 could be an LED rather than an LCD.
`
`Ex. 1004 (Jahagirdar) at col 4 ll. 43-46, col. 7 l. 61- col. 8 l. 4. Nor does either
`
`offer an explanation of why, simply because power was previously “enable[ed]” to
`
`an LED display, that LED display nonetheless would not have been activated when
`
`it changed from blank to lit up with information. In his deposition, Dr. Morley
`
`referred to ambiguous “other circuitry” that “could be consuming power” when the
`
`display was blank, but admitted that “you couldn’t tell by looking at it whether it
`
`was on or off.” Ex. 1017 (Morley Tr.) at 145:1-146:16. An LED screen changing
`
`from blank to displaying information meets any understanding of “activation” or
`
`“turning on,” and Patent Owner should not be allowed to rewrite the reference on
`
`the fly to avoid this common-sense outcome. Ex. 1022 (Second Horenstein Dec.)
`
`at ¶ 5.
`
`Patent Owner places heavy weight on its argument — disputed by Petitioner
`
`above — that the user of the Jahagirdar flip phone cannot “activate” the LED
`
`display element through the user interface because it is supposedly always on when
`
`the phone lid is closed. But in a related proceeding, Patent Owner admits in
`
`relation to Jahagirdar that “a touching [] turn[ed] on the LED display.” (IPR2015-
`
`01149, Paper No. 17 (Patent Owner Response), p. 12). Dr. Morley expressed a
`
`similar interpretation of Jahagirdar’s LED in his deposition, indicating that in a
`
`- 14 -
`
`

`
`U.S. Patent No. 8,288,952
`
`situation where a timer turned off Jahagirdar’s LED display, Jahagirdar’s key 146
`
`could have been used to turn it back on. Ex. 1017 (Morley Tr.) at 199:12-17. This
`
`reactivation of the timed-out LED described by Patent Owner and Dr. Morley is an
`
`independent reason that Jahagirdar satisfies the claimed “activation” by the user
`
`interface switch.
`
`Petitioner further notes that even in embodiments where display 516 was
`
`merely changed from “status information” to “new visual information,” at least
`
`portions of the display 130 that were not previously activated did become activated
`
`in response to key 150 when the “new visual information” appeared, constituting
`
`the claimed activation of display 516. Ex. 1022 (Second Horenstein Dec.) at ¶6;
`
`Ex. 1017 (Morley Dec.) at 215:12-116:9 (discussing activation of individual LED
`
`segments). Thus, for all these reasons, Patent Owner’s argument that Jahagirdar
`
`did not disclose activation of display element 516 in response to actuation of key
`
`150 fails.
`
`IV. Patent Owner’s Argument that Jahagirdar Did Not Disclose Automatic
`Deactivation Fails Because it is Based on the Same Mischaracterization of
`Jahagirdar Described in Section III.
`
`As already explained in detail in Section III, Patent Owner ignores that
`
`Jahagirdar clearly described a configuration in which display element 516 was not
`
`activated prior to actuation of key 150. Patent Owner repeats this mistake in
`
`relation to claim 23 by making the assumption that Jahagirdar’s disclosure of
`
`- 15 -
`
`

`
`U.S. Patent No. 8,288,952
`
`controller 504’s use of a timer to deactivate “new display information” at step 818
`
`would merely result in a display of old information, rather than deactivation of
`
`display element 516. See Ex. 1004 (Jahagirdar) at col. 5 ll. 55-65.
`
`But as described above, Jahagirdar disclosed an embodiment in which
`
`display element 516 was blank prior to actuation of key 146. Thus, when
`
`controller 504’s timer timed out and the “new display information” was
`
`deactivated, display element 516 was itself deactivated, because it would return
`
`either to a blank screen, or to a screen with at least some LED segments
`
`deactivated. Ex. 1022 (Second Horenstein Dec.) at ¶ 7.
`
`V. Conclusion
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`Respectfully submitted,
`
`/Daniel J. Goettle/
`Daniel J. Goettle (Registration No. 50,983)
`BAKER HOSTETLER LLP
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`dgoettle@bakerlaw.com
`Attorney for Petitioner
`
`find the challenged claims invalid.
`
`
`
`
`Dated: June 2, 2016
`
`
`
`
`
`
`
`- 16 -
`
`

`
`U.S. Patent No. 8,288,952
`
`
`
`CERTIFICATION OF WORD COUNT
`
`I hereby certify that the foregoing PETITIONER’S REPLY TO PATENT
`
`OWNER’S RESPONSE TO PETITION contains 3,700 words in the applicable
`
`sections according to 37 C.F.R § 42.24(a)(1) and is in compliance with the 5,600
`
`word requirement of 37 C.F.R. § 42.24(c)(1).
`
`
`
`
`
`
`
`
`
`
`
`/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
`
`
`
`- 17 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`U.S. Patent No. 8,288,952
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`
`PETITION was served via email this 2nd day of June, 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 18 -