IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`Attorney Docket No.: 30146-0011IP1
`
`In re Patent of: Hayes, Jr. et al.
`U.S. Pat. No.: 8,812,059 B2
`Issue Date:
`Aug. 14, 2014
`Appl. Serial No.: 13/682,566
`Filing Date: Nov. 20, 2012
`Title:
`RADIOTELEPHONES HAVING CONTACT-SENSITIVE USER
`INTERFACES AND METHODS OF OPERATING SAME
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,812,059
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8 .................................... 2
`
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................... 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................... 2
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................... 3
`D. Service Information .................................................................................... 3
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 3
`
`III.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 4
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 4
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ................. 4
`SUMMARY OF THE ’059 PATENT ............................................................. 5
`
`V.
`
`A. Brief Description ........................................................................................ 5
`B. The ‘059 Patent is a Continuation-in-Part that Claims New Matter
`Added to the Specification in November 2012, as Acknowledged
`by the Examiner during Prosecution .......................................................... 8
`C. Because the ’059 Patent is a “Bauman type Continuation
`Application” (not a “Continuing Reissue”), the Earliest Possible
`Priority Date of the ‘059 Patent is no Earlier Than the Filing Date
`of the Parent Reissue Application: March 11, 2005................................. 11
`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ................................... 14
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’059 PATENT IS UNPATENTABLE .................... 17
`
`A. Ground 1: Claims 1-10 & 18-20 are Obvious under § 103 over
`U.S. Pat. No. 6,246,862 to Grivas (“Grivas”) in view of U.S. Pat.
`No. 6,131,047 to Hayes (“Hayes”) ........................................................... 17
`B. Ground 2: Claims 11-12, 14-15 & 17 are Anticipated under § 102
`by U.S. Pat. Pub. No. 2012/0105358 to Momeyer (“Momeyer”) ............ 21
`C. Ground 3: Claim 13 is Obvious under § 103 over Momeyer in view
`of U.S. Pat. No. 5,347,295 to Agulnick (“Agulnick”) ............................. 23
`D. Ground 4: Claim 16 is Obvious under § 103 over Momeyer in view
`of U.S. Pat. No. 8,624,851 to Kim (“Kim”) ............................................. 25
`E. Ground 5: Claims 1-17 are Anticipated under § 102 by Hayes ............... 27
`
`i
`
`

`
`VIII. [GROUND 1 CLAIM CHART] – Obviousness of Claims 1-10 under
`§103 by Grivas in view of Hayes .................................................................. 29
`
`IX.
`
`X.
`
`XI.
`
`XII.
`
`[GROUND 2 CLAIM CHART] – Anticipation of claims 11-12, 14-
`15, & 17 under § 102(e) by U.S. Pat. Pub. No. 2012/0105358 to
`Momeyer et al. (“Momeyer”) ........................................................................ 39
`
`[GROUND 3 CLAIM CHART] – Obviousness of Claims 13 under
`§103 by Momeyer in view of U.S. Pat. No. 5,347,295 to Agulnick
`(“Agulnick”) .................................................................................................. 44
`
`[GROUND 4 CLAIM CHART] – Obviousness of Claim 16 under
`§103 by Momeyer in view of U.S. Pat. No. 8,624,851 to Kim (“Kim”) ...... 45
`
`[GROUND 5 CLAIM CHART] – Anticipation of Claims 1-17 under
`§102(b) by Hayes ........................................................................................... 46
`
`XIII. CONCLUSION .............................................................................................. 57
`
`
`
`ii
`
`

`
`EXHIBITS
`
`APPLE1001
`
`U.S. Pat. No. 8,812,059 to Hayes et al. (“the ‘059 patent”)
`
`APPLE1002
`
`Prosecution History of the ‘059 patent (Serial No. 13/682,566)
`
`APPLE1003
`
`Declaration of Dr. Gregory Welch
`
`APPLE1004
`
`U.S. Pat. No. 6,246,862 to Grivas et al. (“Grivas”)
`
`APPLE1005
`
`U.S. Pat. No. 6,131,047 to Hayes et al. (“Hayes”)
`
`APPLE1006
`
`U.S. Pat. Pub. No. 2012/0105358 to Momeyer et al.
`
`(“Momeyer”)
`
`APPLE1007
`
`U.S. Pat. No. 5,347,295 to Agulnick et al. (“Agulnick”)
`
`APPLE1008
`
`U.S. Pat. No. 8,624,851 to Kim et al. (“Kim”)
`
`APPLE1009
`
`Prosecution History of the ’931 patent (Serial No. 11/078,916)
`
`APPLE1010
`
`APPLE1011
`
`APPLE1012
`
`Patent Owner’s Infringement Contentions for Ericsson Inc. et al
`v. Apple, Inc., Case No. 2:15-cv-293-JRG (E.D. Tex.)
`
`Patent Owner’s Proposed Claim Constructions for In re Certain
`Electronic Devices, Inv. No. 337-TA-952 (U.S. Int’l Trade
`Commission)
`
`Beck, F. and Stumpe, B. Two Devices for Operator Interaction
`in the Central Control of the New CERN Accelerator, CERN
`report 73-6, Geneva, 24 May 1973
`
`APPLE1013
`
`U.S. Pat. No. 3,911,215 to Hurst (“Hurst”)
`
`iii
`
`

`
`APPLE1014
`
`Ward, Jean Renard, Annotated Bibliography in On-line Charac-
`ter Recognition, Pen Computing, Gesture User Interfaces and
`Tablet and Touch Computers, at
`http://www.ruetersward.com/biblio.html (reviewed September
`10, 2015)
`
`APPLE1015
`
`pdQ Basics Handbook, Qualcomm, Oct. 26, 1998.
`
`
`
`iv
`
`

`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of claims
`
`1-17 of U.S. Patent 8,812,059 (“the ’059 patent”). The specification of the ‘059
`
`patent describes a mobile telephone device 100 with contact-sensitive transducers
`
`150a-b or 150c to allow for contact-based user input. Ex. 1001 at 6:41-44, 10:53-
`
`57. The contact-sensitive transducers take the form of elongate strips 150a-b or
`
`150c that are distinct from, and are spaced apart from, the device’s display 120. Id.
`
`at FIGS. 3 and 11; 6:4-22. In embodiments with multiple contact-sensitive strips,
`
`the ’059 patent teaches that unused strips can be disabled. Id. at 6:47-50.
`
`Despite this narrow disclosure of contact sensing technology that is separate
`
`from the device display, Patent Owner alleges that the ’059 patent broadly covers
`
`age-old touchscreen technology—a concept found nowhere in the original applica-
`
`tion family to which the ’059 patent claims priority. The only reference to device
`
`displays that can receive touch input is the bare mention of a “contact-sensitive dis-
`
`play” in the new “Summary” section that was added in November 2012. Thus, de-
`
`spite being labeled a “continuation” of parent U.S. Reissue Patent 43,931
`
`(“RE931”), the ’059 patent is truly a “continuation-in-part” and entitled to a prior-
`
`ity date of no earlier than November 20, 2012, and is anticipated or rendered obvi-
`
`ous by pre-2012 publications such as Grivas (Ex. 1004) and Momeyer (Ex. 1006),
`
`each of which disclosed the new matter found in the ’059 patent (Grounds 1-4).
`
`1
`
`

`
`Even if the Board finds that the ’059 patent claims do not rely upon the new
`
`matter added in November 2012 (i.e., the parent RE931 patent somehow provides
`
`support for the ‘059 patent claims), the ‘059 patent is a “Bauman type continuation
`
`application” that is entitled to a priority date no earlier than the filing date of the
`
`parent reissue application: March 11, 2005. In re Bauman, 683 F.2d 405, 410
`
`(C.C.P.A. 1982); MPEP § 1451 (citing to Bauman and defining “a Bauman type
`
`continuation application”). In this alternative scenario, the grandfather patent
`
`(Hayes, Ex. 1005) that published years before March 2005 is a §102(b) reference
`
`that necessarily anticipates the ‘059 patent (Ground 5), and the claims are also ren-
`
`dered obvious by Grivas and Hayes (Ground 1).
`
`In either scenario, the ’059 patent was improvidently granted and never
`
`should have issued. The Board should institute IPR on the grounds below.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc. is the real party-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The Patent Owner filed complaints alleging infringement of the ’059 patent
`
`in lawsuits against Apple Inc., in the U.S. Int’l Trade Commission (In re Certain
`
`Electronic Devices, Inv. No. 337-TA-952), and in the Eastern District of Texas
`
`(Ericsson Inc. v. Apple Inc., No. 2:15-cv-293). Both complaints were filed Febru-
`
`ary 26, 2015. Petitioner is not aware of other pending litigation of the ‘059 patent.
`
`2
`
`

`
`Ericsson and Apple are involved in multiple patent cases in the U.S. and Eu-
`
`rope. In the U.S., there are two cases pending in the U.S. International Trade Com-
`
`mission, one in the Northern District of California, and eight in the Eastern District
`
`of Texas. In those cases, Ericsson has asserted more than forty patents and over
`
`six hundred claims. Ericsson also has pending patent cases against Apple in the
`
`United Kingdom, Germany, and the Netherlands, where Ericsson has asserted thir-
`
`teen EP patents.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Michael T. Hawkins, Reg. No. 57,867
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-337-2569 / Fax 612-288-9696
`
`BACK-UP COUNSEL
`Patrick J. Bisenius, Reg. No. 63,893
`Tel: 612-776-2048
`Stuart A. Nelson, Reg. No. 63,947
`Tel: 612-337-2538
`Christopher O. Green, Reg. No. 52,964
`Tel: 404-724-2777
`Ruffin Cordell, Reg. No. 33,487
`Tel: 202-626-6449
`
`D. Service Information
`Please address all correspondence to the address above. Petitioner consents
`
`to electronic service by email at IPR30146-0011IP1@fr.com (referencing No.
`
`30146-0011IP1 and cc’ing hawkins@fr.com, bisenius@fr.com, snelson@fr.com,
`
`cgreen@fr.com, and cordell@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`3
`
`

`
`the petition fee set in 37 C.F.R. § 42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’059 patent is available for IPR and that Peti-
`
`tioner is not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of claims 1-17 of the ’059 patent on the grounds
`
`listed below. In support, this Petition includes claim charts for each of these
`
`grounds and a supporting declaration of Dr. Gregory Welch (Ex. 1003).
`
`Ground
`
`Claims
`
`Ground 1
`
`1-10
`
`Basis for Rejection
`
`
`Obvious under § 103 over U.S. Pat. No. 6,246,862 to
`
`Grivas in view of U.S. Pat. No. 6,131,047 to Hayes
`
`Ground 2 11-12, 14-
`
`Anticipation under § 102(e) by U.S. Pat. Pub. No.
`
`15, and 17
`
`2012/0105358 to Momeyer
`
`Ground 3
`
`13
`
`Obvious under § 103 over Momeyer in view of U.S.
`
`Pat. No. 5,347,295 to Agulnick
`
`Ground 4
`
`16
`
`Obvious under § 103 over Momeyer in view of U.S.
`
`Pat. No. 8,624,851 to Kim
`
`Ground 5
`
`1-17
`
`Anticipation under § 102(b) by Hayes
`
`Grivas, Hayes, Agulnick, and Kim qualify as prior art under 35 U.S.C.
`
`4
`
`

`
`§ 102(b) as they all published over one year before the November 20, 2012 priority
`
`date of the ’059 patent. Momeyer qualifies as prior art under 35 U.S.C. § 102(a)
`
`and (e), as it is an application that was filed on November 3, 2010 and was pub-
`
`lished on May 3, 2012, both dates before the November 20, 2012 priority date.
`
`Furthermore, to the extent the Board disagrees that the ’059 patent is a con-
`
`tinuation-in-part that claims new matter added in 2012 (i.e., the parent case some-
`
`how provides support for the ‘059 patent claims asserted to cover “touchscreen”
`
`smartphones), Hayes, Grivas, and Agulnick still qualify as prior art under 35
`
`U.S.C. § 102(b) because they published more than a year before March 11, 2005
`
`(the earliest possible priority date that could apply here in accordance with Bau-
`
`man and MPEP § 1451 because the ’059 patent is a “Bauman type continuation”).
`
`V.
`
`SUMMARY OF THE ’059 PATENT
`A. Brief Description
`The ‘059 patent is directed to a radiotelephone having one or more contact
`
`sensitive areas (“touch strips” 150a-c) for receiving user input. The radiotelephone
`
`can perform functions in response to the received user input including scrolling
`
`displayed rows of text or placing a phone call. Ex. 1001 at 6:41-52; 9:20-44. The
`
`‘059 patent claims priority to an application filed on December 30, 1997 that is-
`
`sued as U.S. Pat. No. 6,131,047 in 2000 (“Hayes”). The ’059 patent and Hayes
`
`largely share a common specification. The differences in the two are notable, and
`
`5
`
`

`
`in part form the basis for this petition. But the background of the alleged invention
`
`can be understood from the disclosure common to both.
`
`Both the ’059 patent and Hayes allege that prior art radiotelephone user in-
`
`put systems were imperfect. Prior art techniques using keys for scrolling through
`
`the display or wheeled inputs consumed valuable space on the device, and wheeled
`
`inputs also required moving parts that were prone to failure. Ex. 1001 at 1:61-2:2.
`
`The purported solution uses a contact sensitive transducer, such as touch strips
`
`mounted on the telephone, to receive input. Id. at 3:46-51. The touch strips have a
`
`thin profile and can be mounted on the housing without taking up too much space,
`
`and offer improved reliability because they do not require moving parts. Id. at 4:1-
`
`12. For example, as seen in Figures 3 and 11, the touch strips (items 150a and
`
`150b mounted on left and right side surfaces in Figure 3, and item 150c mounted
`
`on the front surface in Figure 11) allow the user to provide input, without taking up
`
`the large amount of space required of the prior art alternatives, such as arrow keys
`
`or mechanical radial wheels. Id. at FIGS. 3 and 11; see also 6:41-44, 10:53-57. In
`
`all instances, however, the touch strips take the form of elongate strips 150a-b or
`
`150c that are distinct from, and are spaced apart from, the device’s display 120:
`
`6
`
`

`
`
`
`Ex. 1001 at FIGS. 3 and 11 (annotated above); 6:4-22; Ex. 1003 at ¶ 17.
`
`The very purpose of the touch strips is to control the display of items on the
`
`display. According to Hayes and the ‘059 patent, a controller detects contact with
`
`the touch strip and, using that input, controls the display and the radiotelephone
`
`communications transceiver. Ex. 1001 at 6:24-35; Fig. 2. For example, the con-
`
`troller is apparently capable of scrolling the display based upon the output signal
`
`generated by the touch strip. Id. at 9:27-31.
`
`For embodiments like Fig. 3, where the device utilizes two (or more) touch
`
`strips 150a-b, both patents describe disabling all but one strip so that “preferably,
`
`only one of the strips 150a, 150b is active at any given time.” Id. at 6:47-50. Ac-
`
`cording to Hayes and the ’059 patent, providing multiple touch strips on the device
`
`allows use by right and left handed users, so inactivating strips that are not being
`
`used will “prevent inadvertent generation of signals to the controller caused by
`
`7
`
`

`
`gripping of the radiotelephone.” Id.; see also 6:41-47. Thus, this disclosure, com-
`
`mon to the two patents, at most describes the use of touch strips, something distinct
`
`from and serving a different purpose than conventional touchscreen technology.
`
`But in 2012, with the filing of the application that issued as the ’059 patent,
`
`Patent Owner inserted an entirely new “Summary” section that described a new
`
`embodiment for utilizing a “contact-sensitive display.” Id. at 2:30-36. The Patent
`
`Owner then claimed this new matter, requiring the use of a “contact-sensitive dis-
`
`play” or “providing on a contact-sensitive surface a display including . . .”, which
`
`it asserts against modern smartphone touchscreens. See Ex. 1010 at pp. 25-33.
`
`B. The ‘059 Patent is a Continuation-in-Part that Claims New Matter
`Added to the Specification in November 2012, as Acknowledged by the
`Examiner during Prosecution
`
`Consequently, the ‘059 patent is clearly and unambiguously a “continuation-
`
`in-part” because it adds new matter (e.g., the new “Summary” section) not de-
`
`scribed by the parent RE’931 patent and recites that new matter in claims 1-17.
`
`Compare ‘059 patent at 2:10-67, with Ex. 1009 at pp. 1109-1126.1
`
`
`1 The other changes included retitling certain sections, moving the description of
`
`the drawings, altering the description of Figures 6A and 6B, incorporating the
`
`RE931 “Summary” section verbatim into the ‘059 “Detailed Description” section
`
`with a new introductory sentence, and reformatting mathematical equations.
`
`8
`
`

`
`In a first example of the new matter added in 2012, the newly-added portion
`
`of the “Summary” section is the only place in the ‘059 patent specification that dis-
`
`closes a “display” having a contact-sensitive surface—an element alleged to cover
`
`touchscreens of modern smartphones. Ex. 1001 at 2:18-20 (disclosing the “con-
`
`tact-sensitive display” element required by claims 1-10); 2:30-42 (disclosing the
`
`“providing on a contact-sensitive surface a display including . . . ” element re-
`
`quired by claims 11-17). Tellingly, none of the patents in the priority chain of the
`
`’059 patent contemplate a touchscreen or otherwise use the claim term “contact-
`
`sensitive display.” Ex. 1003 at ¶¶ 18-20.
`
`
`
`In fact, the “contact-sensitive display” of the ’059 patent would not provide
`
`several of the advantages that the original specification touts for the touch strips
`
`150a-c that are distinct from the display 120, such as a “thin profile” that can be
`
`“mounted at a surface of the radiotelephone without taking up an inordinate
`
`amount of valuable space” (’059 Pat. at 4:1-5) or the mounting of a contact-sensi-
`
`tive surface on the sides of housing or otherwise apart from the display 120. See,
`
`e.g., Ex. 1001 at Figs. 7A, 7B, 7C.
`
`During prosecution, the examiner recognized that the introduction of the
`
`phrase “contact-sensitive display” departed from the original disclosure, stating
`
`that “‘contact-sensitive display’ of the present application is different from the
`
`‘contact-sensitive transducer’.” Ex. 1002 at p. 133 (emphasis in original). The
`
`9
`
`

`
`examiner went on to explain that because the ’059 patent used the phrase “contact-
`
`sensitive display” within its claims, it “may not get the benefit of earlier filing date
`
`of U.S. Patent No. 6,131,047 or U.S. Patent No. 43,931.” Id. The applicants did
`
`not dispute this finding by the examiner, and instead addressed other issues without
`
`citing any support for the contact-sensitive display of the ’059 patent or otherwise
`
`defending that the contact-sensitive display was not new matter.
`
`In a second example, the new “Summary” of the ‘059 patent provides the
`
`only description for the steps in claim 11 requiring “detecting contact,” “generating
`
`an output signal,” and “taking no action in response the output signal” (in the sec-
`
`ond mode). Ex. 1001 at 2:39-51 (elements required by claims 11-17). This se-
`
`quence of steps appears to be claiming the ’059 patent’s disclosure of turning off
`
`one or more touch strips, as discussed at column 6, lines 41 to 50. The purpose of
`
`disabling the touch strips in the original disclosure is to avoid “inadvertent genera-
`
`tion of signal” on an unused transducer when the device has multiple transducers—
`
`and not to generate an output signal from the transducer that is selectively ignored
`
`as suggested in the new “Summary.” Id. at 6:41-50. The detailed description sec-
`
`tion of the ’059 patent certainly does not go so far as to teach a “second mode” that
`
`includes generation of an output signal and ignoring of that signal (rather than
`
`simply deactivating the contact-sensitive transducer so that no output signal is gen-
`
`erated at all).
`
`10
`
`

`
`Because of this new matter, the ‘059 patent is only entitled to a priority date
`
`of its filing date: November 20, 2012. Grounds 1-4 apply in these circumstances.
`
`C. Because the ’059 Patent is a “Bauman type Continuation Application”
`(not a “Continuing Reissue”), the Earliest Possible Priority Date of the
`‘059 Patent is no Earlier Than the Filing Date of the Parent Reissue
`Application: March 11, 2005
`
`To the extent the Board somehow finds that any of the ’059 patent claims
`
`are fully supported by the disclosure in the grandfather Hayes patent (Ex. 1005)
`
`and do not rely upon the new matter added in November 2012, the ‘059 patent is a
`
`“Bauman type continuation application” (MPEP § 1451–also referred to as a “con-
`
`tinuation of a reissue application”) and thus the law mandates its priority date is no
`
`earlier than the filing date of the reissue parent application—March 11, 2005. Bau-
`
`man, 683 F.2d at 410; MPEP § 1451 (citing to Bauman and other legal authority).
`
`In this scenario, the Hayes patent, which published years before March 2005, qual-
`
`ifies as prior art under 35 U.S.C. § 102(b), and invalidates the ’059 patent.
`
`The ’059 patent states on its face that it is a “continuation of [reissue] appli-
`
`cation 11/078,916 . . . which is an application for the reissue of [Hayes],” i.e., what
`
`is commonly known as a “Bauman type continuation application.” Ex. 1001 at
`
`1:5-11. A Bauman type continuation application is “a regular application continu-
`
`ing from a reissue application” and it “is not entitled to the filing date of the pa-
`
`tent” for which the reissue application was filed. Bauman, 683 F.2d at 410;
`
`Conover v. Downs, 35 F.2d 59 (C.C.P.A. 1929). The priority date of a Bauman
`
`11
`
`

`
`type continuation application is the date of the filing of the reissue application,
`
`which in the case of the ’059 patent is March 11, 2005. Bauman, 683 F.2d at 410.
`
`By way of background, Patent Owner could have maintained the 1997 prior-
`
`ity date if it had filed a “continuing reissue.” MPEP § 1451 (citing to Bauman and
`
`other legal authority). As the court in Bauman explains, “if a patentee desires a re-
`
`issue application with its earlier effective filing date [i.e., a continuing reissue], he
`
`must accept reissue restrictions.” In re Bauman, 683 F.2d at 409. However,
`
`“[t]here must be an identification, on filing, that the application is a continuation
`
`reissue application, as opposed to a continuation of a reissue application (i.e., a
`
`Bauman type continuation application).” MPEP § 1451. The MPEP identifies five
`
`such distinctive criteria that the USPTO promulgates for the filing of a “continuing
`
`reissue application”:
`
`(1) a 37 CFR 1.175 reissue oath/declaration;
`
`(2) a specification and/or claims in proper double column format per 37 CFR
`
`1.173;
`
`(3) amendments in proper format per 37 CFR 1.175;
`
`(4) a correct transmittal letter identifying the application as a reissue filing;
`
`and
`
`(5) identification of the application as “a reissue continuation” or “a continu-
`
`ation and reissue” or equivalent.
`
`12
`
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`MPEP § 1451.2 Here, ’059 patent application meets none of the requisite criteria.3
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`See Ex. 1002 at pp. 701-706 (no 37 CFR 1.175 reissue oath or declaration and no
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`transmittal letter identifying the application as a reissue filing); 707 (application
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`not identified as “a reissue continuation,” “a continuation and reissue,” or equiva-
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`lent); 709-710 (amendments to Summary section not in proper format per 37 CFR
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`1.175); 728-733 710 (amendments to Claims and Abstract not in proper format per
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`37 CFR 1.175); 707-733 (specification and claims not in proper double column
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`format per 37 CFR 1.173). The purpose of these criteria is to certify that the claim
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`scope of the continuation reissue application is limited in the same manner as the
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`parent reissue application. But here, Patent Owner filed the application as a “Bau-
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`2 There is a sixth criteria for publishing a continuing reissue, and it requires a 37
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`CFR 3.73 statement of assignee ownership, but that criteria is not unique to contin-
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`uing reissues and is required any time the assignee seeks to take action.
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`3 Notably, the applicant did not submit a 37 CFR 1.175 reissue oath or declaration
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`that certifies the basis for the reissue and that the reissue is not being used to
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`broaden the scope of the patent. Applicant’s refusal to confirm that the ’059 patent
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`was not broader than its original disclosure additionally supports Petitioner’s asser-
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`tion of a 2012 priority date.
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`13
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`man type continuation” that disregards those restrictions, and in the process noti-
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`fied the public that the reissue filing date (March 11, 2005) was the priority date.
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`See Bauman, 683 F.2d at 409 (“If [the applicant] desires a regular application with-
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`out such restrictions [i.e., a Bauman type continuation], he must accept a later fil-
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`ing date.”); MPEP § 1451 (describing that a “continuation of a reissue” application
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`provides notice to the public that the continuation application is a “Bauman type
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`application”).
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`The Board can only reach this scenario if it finds that claims of the ’059 pa-
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`tent do not recite new matter added in 2012 but instead are supported by the origi-
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`nal disclosure in Hayes. Then, because Hayes published more than a year before
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`the earliest possible priority date of March 11, 2005, it necessarily anticipates
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`claims 1-17 (Ground 5). Additionally, claims 1-10 are rendered obvious by Grivas
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`and Hayes (Ground 1) in these circumstances because both references are prior art
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`publications before March 11, 2005.
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`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`For the purposes of IPR only, Petitioner submits that the terms of the ‘059
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`patent are to be given their broadest reasonable interpretation as understood by one
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`of ordinary skill in the art in view of the specification of the ‘059 patent in accord-
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`ance with 37 CFR §§ 42.100(b) and 104(b)(3); see also In re Cuozzo Speed Tech-
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`14
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`nologies, LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015). The Federal Circuit has rec-
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`ognized that the “broadest reasonable interpretation” (“BRI”) standard used in this
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`proceeding is fundamentally different from the claim construction standard that ap-
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`plies in litigation. Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x 864, 869
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`(Fed. Cir. 2014). As such, Petitioner offers no position on the proper claim con-
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`struction for any purpose outside the instant IPR, including for the purposes of liti-
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`gation (including whether any terms should be construed as means-plus-function
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`claims), and in fact, in some instances Petitioner’s constructions under the BRI
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`standard are based on the Patent Owner’s asserted interpretations of claim elements
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`in the co-pending litigation. Ex. 1010; Ex. 1011. The broadest reasonable con-
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`structions below should also be understood as not waiving any arguments concern-
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`ing indefiniteness or claim scope that may be raised in any litigation, which re-
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`quires different construction standards.
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`Also for purposes of this IPR only, Petitioner submits that, other than the
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`terms below, the terms in the challenged claims should be given their plain mean-
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`ing. In fact, Patent Owner’s asserted interpretations of the claims (in the co-pend-
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`ing litigation) also indicate an agreement that many terms in the challenged claims
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`do “not need to be construed,” which would further apply under the BRI standard
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`for this proceeding. See Ex. 1011 at p. 9; see also Ex. 1010. In light of these facts,
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`Petitioner notes that the following terms should be construed:
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`15
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`“image” (claim 1) – graphical object, including but not limited to alphanu-
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`meric characters. Ex. 1003 at ¶ 26. This interpretation is consistent with the
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`broadest reasonable interpretation of these terms and the specification of the ’059
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`patent. See Ex. 1001 at 4:26-30; Ex. 1003 at ¶ 26. For example, the ‘059 patent
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`states that the “controller is configured to selectively display an image, e.g., a
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`graphical object such as a row of alphanumeric characters, on the display re-
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`sponsive to the output signal of the contact-sensitive transducer.” Ex. 1001 at
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`10:57-67. The testimony evidence here confirms that this broadest reasonable in-
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`terpretation is consistent with what would have been recognized by a person of or-
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`dinary skill in the art at the time. Ex. 1003 at ¶ 26.
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` “selectively display” (claim 3) – display in response to a selection. Ex.
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`1003 at ¶ 27. This interpretation is consistent with the broadest reasonable inter-
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`pretation of these terms and the specification of the ’059 patent. See Ex. 1001 at
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`10:57-67; Ex. 1003 at ¶ 27. For example, the ‘059 patent explains that “the trans-
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`ducer 150 may be used to selectively display column-organized graphical objects
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`on the display 120 based on contact of an object, e.g., a finger or stylus, with the
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`contact-sensitive transducer 1500.” Ex. 1001 at 10:57-62 (emphasis added); see
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`also 10:62-67 (describing selecting icons); 6:24-33. Further, the testimony evi-
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`dence here confirms that this broadest reasonable interpretation is consistent with
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`what would have been recognized by a person of ordinary skill in the art at the
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`16
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`time. Ex. 1003 at ¶ 27.
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`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’059 PATENT IS UNPATENTABLE
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`As detailed below, each of claims 1-17 of the ’059 patent are anticipated or
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`rendered obvious by at least two different references or combinations of references
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`(Grounds 1-5). Each of the Grounds independently shows a reasonable likelihood
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`that one or more claims of the ’059 patent are unpatentable. The Grounds are not
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`cumulative or redundant. Instead, they rely upon different combinations of refer-
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`ences that individually assert unique benefits to the user and, additionally, they ad-
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`dress the dependent claims in different ways (including using different statutory
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`grounds, §§ 102 and 103). See Ex. 1003 at ¶¶ 28-82.
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`A. Ground 1: Claims 1-10 & 18-20 are Obvious under § 103 over U.S. Pat.
`No. 6,246,862 to Grivas (“Grivas”) in view of U.S. Pat. No. 6,131,047 to
`Hayes (“Hayes”)
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`Referring to Ground 1 (charted below), claims 1-10 are rendered obvious by
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`Grivas in view of Hayes. Grivas describes a touchscreen mobile phone having a
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`touch screen that is deactivated when the phone is brought in close proximity to an
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`object (such as the user’s face). Ex. 1004 at 3:17-32; 4:42-57. Grivas’ phone in-
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`cludes the claimed housing and transceiver (e.g., claim elements [1.1]-[1.2] be-
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`low). Ex. 1004 at 2:47-53, FIGS. 1-2; Ex. 1003 at ¶¶ 33-42. The touchscreen is
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`“integrated into the display.” Id. at 2:47-53. Also, regarding the claimed “contact-
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`17
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`sensitive display” (e.g., claim elements [1.3]-[1.4] below), Grivas’ touchscreen dis-
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`play responds to input from a user’s finger or stylus, and “replicate[s] or track[s]
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`the user’s touches to the surface of the touch screen.” Id. at 4:42-57. In response to
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`the user’s touches, Grivas discloses performing various functions, including high-
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`lighting buttons and displaying handwriting. Id. at 4:53-57. The display in Grivas
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`shows, various information, including “an array of graphical buttons.” The device
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`in Grivas also has a conventional keyboard. Id. at 2:42-44. Regarding the claimed
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`“controller” (e.g., claim elements [1.5]-[1.8] below), the phone of Grivas has a first
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`mode where the controller is “responsive to signals from the touch screen driver
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`circuit.” Id. at 4:52-57. Grivas also discloses that the phone has a “sensor that trig-
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`gers when brought into close proximity to the user and, while triggered, disables
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`the touch sensitive input device.” Id. at 3:17-20; see also 2:3-9, 5:32-45. This is a
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`second mode in which the controller is unresponsive to touch input.
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`To the extent that Grivas does not disclose all forms of touch input described
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`by the ‘059 patent (including “scrolling” displayed rows along an axis of the dis-
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`play based upon the output signal of a contact sensitive surface),