IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`Attorney Docket No.: 30146-0011IP2
`
`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 ............................ 3
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 3
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ................. 4
`SUMMARY OF THE ’059 PATENT ............................................................. 5
`
`V.
`
`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ..................................... 7
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’059 PATENT IS UNPATENTABLE .................... 10
`
`A. Ground 1: Claims 1-4 and 10 are Obvious under § 103 over U.S.
`Pat. No. 6,009,338 to Iwata (“Iwata”) in view of U.S. Pat. No.
`5,347,477 to Lee (“Lee”) .......................................................................... 10
`B. Ground 2: Claims 5-9 are Obvious under § 103 over Iwata in view
`of Lee and U.S. Pat. No. 5,347,295 to Agulnick (“Agulnick”) ............... 16
`C. Ground 3: Claims 11, 14 & 17 are Obvious under § 103 over Iwata
`in view of U.S. Pat. No. 5,526,422 to Keen (“Keen”) ............................. 19
`D. Ground 4: Claims 12 & 15 are Obvious under § 103 over Iwata in
`view of Keen and Lee ............................................................................... 23
`E. Ground 5: Claims 13 & 16 are Obvious under § 103 over Iwata in
`view of Keen and Agulnick ...................................................................... 25
`XIII. CONCLUSION .............................................................................................. 47
`
`
`
`i
`
`

`
`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. 6,009,338 to Iwata (“Iwata”)
`
`APPLE1005
`
`U.S. Pat. No. 5,347,477 to Lee (“Lee”)
`
`APPLE1006
`
`U.S. Pat. No. 5,347,295 to Agulnick (“Agulnick”)
`
`APPLE1007
`
`U.S. Pat. No. 5,526,422 to Keen (“Keen”)
`
`APPLE1008
`
`Prosecution History of App. Serial No. 11/078,916
`
`APPLE1009
`
`APPLE1010
`
`APPLE1011
`
`Patent Owner’s Infringement Contentions for In re Certain
`Electronic Devices, Inv. No. 337-TA-952 (U.S. Int’l Trade
`Commission)
`
`Patent Owner’s Proposed Claim Constrictions 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
`
`APPLE1012
`
`U.S. Pat. No. 3,911,215 to Hurst (“Hurst”)
`
`ii
`
`

`
`APPLE1013
`
`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)
`
`
`
`iii
`
`

`
`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 touch-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 on the sides of the device housing 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. But the ’059 patent does not
`
`describe any patentable innovation over touchscreen-equipped mobile phones that
`
`existed before December 1997, the ’059 patent’s alleged priority date. Rather, as
`
`explained below and in the attached declaration of Dr. Welch, the claims of the
`
`’059 patent cover subject matter that was widely known in the prior art. For ex-
`
`ample, prior to December 1997, Iwata (Ex. 1004) disclosed a touchscreen cell-
`
`phone in which the touch input of the touchscreen is disabled in a second mode
`
`1
`
`

`
`when the keypad of the cellphone is being used. See, infra, Section VII.A.
`
`Although Iwata was listed on an IDS during the original prosecution of the
`
`’059 patent, it was not discussed in an office action or substantively considered. If
`
`it had been, the ’059 patent never would have issued—especially now that the Pa-
`
`tent Owner contends that the claims cover touchscreen-equipped mobile phones,
`
`rather than distinct “touch strips” described in the specification. Petitioner there-
`
`fore requests the Board to institute IPR of claims 1-17 on the grounds set forth be-
`
`low.
`
`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.
`
`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
`
`Commission, 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
`
`2
`
`

`
`and over six hundred claims. Ericsson also has pending patent cases against Apple
`
`in the United Kingdom, Germany, and the Netherlands, where Ericsson has assert-
`
`ed thirteen 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 IPR30146-0011IP2@fr.com (referencing No.
`
`30146-0011IP2 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
`
`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 Petition-
`
`3
`
`

`
`er 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).
`
`Basis for Rejection
`Ground Claims
`Ground
`1-4 & 10 Obvious under § 103 over U.S. Pat. 6,009,338 to Iwata
`
`1
`
`(“Iwata”) in view of U.S. Pat. 5,347,477 to Lee (“Lee”)
`
`Ground
`
`5-9
`
`Obvious under § 103 over Iwata in view of Lee and
`
`2
`
`U.S. Pat. 5,347,295 to Agulnick (“Agulnick”)
`
`Ground
`
`11, 14, 17 Obvious under § 103 over Iwata in view of U.S. Pat.
`
`3
`
`5,526,422 to Keen (“Keen”)
`
`Ground
`
`12, 15
`
`Obvious under § 103 over Iwata in view of Keen and
`
`4
`
`Lee
`
`Ground
`
`13, 16
`
`Obvious under § 103 over Iwata in view of Keen and
`
`5
`
`Agulnick
`
`Iwata qualifies as prior art under 35 U.S.C. § 102(e), as it is a patent for
`
`which the application was filed before the purported priority date of the ’059 pa-
`
`tent. Lee, Agulnick, and Keen all qualify as prior art under 35 U.S.C. § 102(b) as
`
`patents issued over a year prior to the purported priority date.
`
`While Iwata and Lee are among the over one hundred references listed as
`
`4
`
`

`
`“References Cited” on the ’059 patent (see Ex. 1001 at p. 1-2), neither reference
`
`was substantively addressed by the examiner during prosecution either alone or as
`
`combined herein (see Ex. 1002, passim). In the present Petition, the Petitioner
`
`“presents different arguments regarding new combinations of references and new
`
`supporting evidence that were not previously before the Office” including new ar-
`
`guments and new supporting evidence related to the Iwata and Lee references.
`
`Permobil, Inc. v. Pride Mobility Products Corp., IPR2013-00407 Paper 13, Institu-
`
`tion Decision at p. 9. For at least these reasons, the Iwata and Lee references
`
`should be addressed on the merits.
`
`V.
`
`SUMMARY OF THE ’059 PATENT
`
`The ’059 patent is directed to a radiotelephone having one or more touch
`
`sensitive areas (“contact-sensitive strips” 150a-c) for receiving user input. The ra-
`
`diotelephone 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 alleges that prior art radiotelephone user input 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 pur-
`
`ported 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
`
`5
`
`

`
`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 (annotated above); see also 6:41-44, 10:53-57; Ex. 1003 at ¶
`
`17.
`
`According to 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; Figure 2 (reproduced below). For example, the
`
`controller is apparently capable of scrolling the display based upon the output sig-
`
`nal generated by the touch strip. Id. at 9:27-31.
`
`6
`
`

`
`For embodiments like Fig. 3, where the device utilizes two (or more) touch
`
`strips 150a-b, the patent describes 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 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 gripping of
`
`the radiotelephone.” Id.; see also 6:41-47.
`
`As shown in detail below with respect to each of the claims, prior to the pur-
`
`ported December 30, 1997 priority date of the ’059 patent, multiple publications
`
`existed that already implemented or described the material claimed in the ’059 pa-
`
`tent. Ex. 1003 at ¶¶ 16, 21, 28-116; see also ¶ 20. In view of the prior art below,
`
`the ’059 patent claims a radiotelephone device and user input methods that were
`
`previously known, or an obvious variant of well-known devices and methods. Ex.
`
`1003 at ¶¶ 21, 28-116.
`
`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
`
`patent are to be given their broadest reasonable interpretation as understood by one
`
`of ordinary skill in the art in view of the specification of the ’059 patent in accord-
`
`ance with 37 CFR §§ 42.100(b) and 104(b)(3); see also In re Cuozzo Speed Tech-
`
`nologies, LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015). The Federal Circuit has rec-
`
`7
`
`

`
`ognized that the “broadest reasonable interpretation” (“BRI”) standard used in this
`
`proceeding is fundamentally different from the claim construction standard that
`
`applies in litigation. Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x 864,
`
`869 (Fed. Cir. 2014). As such, Petitioner offers no position on the proper claim
`
`construction for any purpose outside the instant IPR, including for the purposes of
`
`litigation (including whether any terms should be construed as means-plus-function
`
`claims), and in fact, in some instances Petitioner’s constructions under the BRI
`
`standard are based on the Patent Owner’s asserted interpretations of claim elements
`
`in the co-pending litigation. Ex. 1009; 1010. The broadest reasonable construc-
`
`tions below should also be understood as not waiving any arguments concerning
`
`indefiniteness or claim scope that may be raised in any litigation, which requires
`
`different construction standards.
`
`Also for purposes of this IPR only, Petitioner submits that, other than the
`
`term below, the terms in the challenged claims should be given their plain mean-
`
`ing. In fact, Patent Owner’s asserted interpretations of the claims (in the co-
`
`pending litigation) also indicate an agreement that many terms in the challenged
`
`claims do “not need to be construed,” which would further apply under the BRI
`
`standard for this proceeding. See Ex. 1010 at p. 9; see also Ex. 1009. In light of
`
`these facts, Petitioner notes that the following terms should be construed:
`
`“image” (claim 1) – graphical object, including but not limited to alphanu-
`
`8
`
`

`
`meric characters. Ex. 1003 at ¶ 25. This interpretation is consistent with the
`
`broadest reasonable interpretation of these terms and the specification of the ’059
`
`patent. See Ex. 1001 at 4:26-30; Ex. 1003 at ¶ 25. For example, the ’059 patent
`
`states that the “controller is configured to selectively display an image, e.g., a
`
`graphical object such as a row of alphanumeric characters, on the display re-
`
`sponsive to the output signal of the contact-sensitive transducer.” Ex. 1001 at
`
`10:57-67. The testimony evidence here confirms that this broadest reasonable in-
`
`terpretation is consistent with what would have been recognized by a person of or-
`
`dinary skill in the art at the time. Ex. 1003 at ¶ 25.
`
`“selectively display” (claim 3) – display in response to a selection. Ex.
`
`1003 at ¶¶ 26-27. This interpretation is consistent with the broadest reasonable in-
`
`terpretation of these terms and the specification of the ’059 patent. See Ex. 1001 at
`
`10:57-67; Ex. 1003 at ¶¶ 26-27. For example, the ’059 patent explains that “the
`
`transducer 150 may be used to selectively display column-organized graphical ob-
`
`jects on the display 120 based on contact of an object, e.g., a finger or stylus, with
`
`the contact-sensitive transducer 1500.” Ex. 1001 at 10:57-62 (emphasis added);
`
`see also 10:62-67 (describing selecting icons); 6:24-33. Further, the testimony ev-
`
`idence here confirms that this broadest reasonable interpretation is consistent with
`
`what would have been recognized by a person of ordinary skill in the art at the
`
`time. Ex. 1003 at ¶¶ 26-27.
`
`9
`
`

`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’059 PATENT IS UNPATENTABLE
`
`As detailed below, each of claims 1-17 of the ’059 patent are rendered obvi-
`
`ous (Grounds 1-5). Each of the Grounds independently shows a reasonable likeli-
`
`hood that one or more claims of the ’059 patent are unpatentable. The Grounds are
`
`not cumulative or redundant. See Ex. 1003 at ¶¶ 28-118.
`
`A. Ground 1: Claims 1-4 and 10 are Obvious under § 103 over U.S. Pat.
`No. 6,009,338 to Iwata (“Iwata”) in view of U.S. Pat. No. 5,347,477 to
`Lee (“Lee”)
`
`Referring to Ground 1 (charted below), claims 1-4 and 10 are rendered obvi-
`
`ous by Iwata in view of Lee. Iwata describes a touchscreen mobile device with a
`
`sliding cover for switching between two modes: a “telephone mode” and an “in-
`
`formation terminal mode.” Ex. 1004 at FIGS. 1-2, 47; 12:43-47, 13:14-63; 5:60-
`
`66; 7:24-60. Iwata’s device is depicted in the form of a mobile telephone having
`
`the claimed housing and transceiver (e.g., claim elements [1.1]-[1.2] below). Ex.
`
`1004 at FIGS. 1-2; 12:35-65; 13:9-37; see also Ex. 1009 at p. 11-25 (Patent Owner
`
`alleging a mobile phone housing and transmitter meet the claim limitations for the
`
`claimed housing and radiotelephone communications transceiver). Also, regarding
`
`the claimed “contact-sensitive display” (e.g., claim elements [1.3]-[1.4] below), the
`
`touchscreen in Iwata is overlaid on the LCD display such that the touch-sensitive
`
`display is configured to perform the recited functions. Ex. 1004 at 12:29-37;
`
`15:50-54; FIGS. 6-12; see also Ex. 1009 at p. 25-30 (Patent Owner alleging a
`
`10
`
`

`
`touchscreen of a mobile phone meets this claim element). Regarding the claimed
`
`“controller” (e.g., claim elements [1.5]-[1.8] below), the device in Iwata has a con-
`
`troller with two modes: a first “information terminal mode” (e.g. a computer mode)
`
`and a second “telephone mode.” Id. at 12:43-47, 23:24-26; Ex. 1003 at ¶¶ 28, 44;
`
`see also Ex. 1009 at 34-39 (Patent Owner alleging a mobile phone processor meets
`
`this claim element of a controller). The first mode is the “cover opened status”
`
`where touch input is accepted. Ex. 1004 at 12:65-13:3, 13:14-24; FIG. 2, 48; Ex.
`
`1003 at ¶ 44; see also Ex. 1009 at 40-42 (Patent Owner alleging a normal touch
`
`screen operating mode meets the claim element for a “first mode”). The second
`
`mode in Iwata is the “covered closed status,” where the touchscreen does not re-
`
`spond to touch input. Ex. 1004 at 13:47-63, 13:21-24, FIGS. 1, 47; Ex. 1003 at ¶
`
`49; see also Ex. 1009 at 42-44 (Patent Owner alleging putting a touch screen to
`
`sleep meets this claim element for the “second mode”). Iwata’s device is shown
`
`below in the first and second modes:
`
`11
`
`

`
`
`Ex. 1004 at FIGS. 1-2 (annotated); see also Ex. 1003 at ¶ 39. In the second mode,
`
`the cover 7 may cover only part of the display, yet Iwata’s controller stops the op-
`
`eration of the entire touch screen 20 in that mode. See Ex. 1003 at 13:21-24 (“pro-
`
`cessor 21 stops the operation of touch screen 20 in the cover closed status”), 13:61-
`
`63 (“In the cover closed status, touch screen 20 is in a sleeping status, and thus
`
`does not respond to a touch made with a pen or a finger”); 13:54-56.
`
`Referring to the “moving contact” and “scrolling” recitations recited in the
`
`claims (e.g., claim elements [1.4] and [1.6] below), Iwata’s touchscreen accepts in-
`
`put by a user’s hand or by a pen, and allows the user to draw hand-written charac-
`
`ters or diagrams. Ex. 1004 at 12:29-31, 12:65-13:3, 15:50-54; Ex. 1003 at ¶¶ 29,
`
`36, 46. Iwata also shows that the touchscreen is capable of displaying and scrolling
`
`12
`
`

`
`through lists. Ex. 1004 at FIG. 6; 14:18-48; Ex. 1003 at ¶¶ 29, 42. Iwata further
`
`discloses displaying “characters and symbols” (13:53-57) and other “icons dis-
`
`played on the screen” (30:40-41) throughout the text and in the figures (e.g. FIGS.
`
`4-12, 24-31). The processor detects selection by the user of such items by sensing
`
`touch input on the screen. Ex. 1004 at 12:65-13:13, 14:19-24. The touchscreen in
`
`Iwata also contains touchscreen buttons, physical keys, and switches supported by
`
`the housing. Id. at 14:46-48, 30:38-41, 2:8-10, 12:54-55, 32:48-49, FIG. 1, FIG.
`
`47.
`
`To the extent that Iwata does not explicitly disclose “scrolling” in response
`
`to an output signal in response to moving contact, such a scrolling feature was
`
`commonly implemented in similar prior art portable computing devices. Ex. 1003
`
`at ¶ 37. For example, Lee discloses a touch-based mobile computing device that
`
`utilize various “gestures” to perform touch screen based functions, such as tradi-
`
`tional swipe-to-scroll functions. Ex. 1005 at 1:8-10; 3:10-25; FIGS. 1A-1E; Ex.
`
`1003 at ¶¶ 30, 37. Like Iwata, Lee also discloses scrolling on the touchscreen. Ex.
`
`1005 at 5:67-6:2, 6:16-17, FIGS. 11, 15. Lee’s disclosure shows detecting and
`
`“scrolling” rows of text in response to a swipe motion on a touch screen was also
`
`well known. Ex. 1005 at FIG. 15, 6:16-17; FIG. 11 (describing flicks in four direc-
`
`tions to allow scrolling in four directions), 5:67-6:2; Ex. 1003 at ¶¶ 29, 37, 43, 46.
`
`Excerpts from FIGS. 11 and 15 are shown below:
`
`13
`
`

`
`
`
`Ex. 1005 at FIGS. 11, 15 (annotated); see also Ex. 1009 at p. 30-33 (Patent Owner
`
`alleging a touch screen with drag and swipe gestures meets the claim element of
`
`producing an output signal in response to moving contact); p. 39-40 (Patent Owner
`
`alleging drag and swipe gestures on a touch screen meets the claim element for
`
`scrolling). The evidence here shows that the resulting combination of Iwata in
`
`view of Lee would produce an output signal in response to moving contact of an
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`object along a contact-sensitive surface to scroll rows of text along an axis of the
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`contact-sensitive display. Ex. 1003 at ¶¶ 36-37.
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`Multiple reasons would have prompted a person of ordinary skill in the art
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`(“POSITA”) to implement this traditional form of detecting swiping-to-scroll (as
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`suggested by Lee) using Iwata’s devices. First, a POSITA would have been
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`prompted to do so for purposes of providing the ability to operate the device “by a
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`pen through gestures” (including the scrolling “gestures” 97-100) “for permitting
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`the people who lack the knowledge of computer science to operate the computer
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`easily.” Ex. 1003 at ¶ 38; Ex. 1005 at 8:44-53, 5:49-52, 15:44-57.
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`Second, a POSITA would have been prompted to modify Iwata’s system to
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`incorporate these traditional forms of swipe touch input (as suggested by Lee) to
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`provide a system that includes “gestures” that make operations “simplified so that
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`users are able to spare the concentrations for some other issues while they are us-
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`ing the [device].” Ex. 1003 at ¶ 39; Ex. 1005 at 1:40-44; see also 1:11-22 (describ-
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`ing the concentration issue addressed by the gestures disclosed in Lee).
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`Third, a POSITA would have been prompted to modify Iwata’s system to
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`incorporate these traditional forms of touch input (as suggested by Lee) because
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`doing so would be merely the application of a known technique (e.g., using detect-
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`able forms of touch input on a touch input surface) to a known device (e.g., Iwata’s
`
`touchscreen device) ready for improvement to yield predictable results. Ex. 1003
`
`at ¶ 40. Indeed, “when a patent ‘simply arranges old elements with each perform-
`
`ing 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). Here, both Iwata and Lee disclose
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`portable computing devices having touch input options, and a POSITA would have
`
`recognized that applying Lee’s suggestions to Iwata’s device would have led to
`
`predictable results without significantly altering or hindering the functions per-
`
`formed by the system of Iwata. Ex. 1003 at ¶ 40.
`
`For at least these reasons and the additional explanations described in the
`
`chart below and the Welch Declaration, there is a reasonable likelihood that claims
`
`1-4 and 10 of the ’059 patent are unpatentable under § 103 based upon the obvious
`
`combination of Iwata in view of Lee. Ex. 1003 at ¶¶ 28-50.
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`B. Ground 2: Claims 5-9 are Obvious under § 103 over Iwata in view of
`Lee and U.S. Pat. No. 5,347,295 to Agulnick (“Agulnick”)
`
`Referring to Ground 2 (charted below), claims 5-9 are rendered obvious by
`
`Iwata in view of Lee and Agulnick. Iwata in view of Lee, as explained in Ground
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`1, discloses a touchscreen device that renders claims 1-4 obvious, on which claims
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`5-9 depend (claims 5 & 6 depend on claim 4; claims 7-9 depend on claim 1). Iwa-
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`ta further discloses that the user may select “buttons and icons” on the screen of the
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`device by “directly touching” them. Ex. 1004 at 30:40-41. Ex. 1003 at ¶¶ 51, 55.
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`To the extent that Iwata in view of Lee does not specifically identify the
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`ways in which a touchscreen can detect a tap by a user, such operations were
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`commonly implemented in similar prior art systems. Ex. 1003 at ¶¶ 52, 55-56, see
`
`also 57-69 (describing traditional touch-screen devices that specify selection via a
`
`single tap or double tap operation). For example, Agulnick discloses a touchscreen
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`based system utilizing “gestural commands,” such as accepting input via taps on
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`the touchscreen. Ex. 1006 at 9:7-8; 10:2-5. Agulnick describes that a number of
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`different types of taps can be accepted by the system, including single taps (11:4-
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`6), double taps (11:7-12; 10:47-48; 16:6-7), and triple taps (10:47-49). See also id.
`
`at FIG. 45. Taps are some of the gestures listed in FIG. 45, reproduced below:
`
`
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`Ex. 1006 at FIG. 45 (annotated).
`
`Multiple reasons would have prompted a POSITA to implement this tradi-
`
`tional form of tapping (as suggested by Agulnick) using Iwata’s devices as modi-
`
`fied by Lee. First, a POSITA would have been prompted to do so for purposes of
`
`providing a series of tap gestures that offer a suite of different selecting options,
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`including the “select/invoke” (single tap 621), selecting a word (double-tap 622),
`
`selecting a sentence (triple tap 512), or selecting a paragraph (quad-tap 514). Ex.
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`1003 at ¶¶ 57-58 (providing reasons that would have prompted a POSITA to modi-
`
`fy Iwata’s touch screen to detect a single tap, double tap, or multiple tap operation
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`at a location of an icon, as suggested by Agulnick); Ex. 1006 at 10:44-49, 11:4-11,
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`FIG. 45. Second, a POSITA would have been prompted to modify Iwata’s system
`
`to add the tapping gesture commands as suggested by Agulnick because such
`
`commands are “quick and convenient” and because they are “complementary” to
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`the approach of “visible controls.” Ex. 1003 at ¶ 58; Ex. 1006 at 9:7-17.
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`Agulnick’s teaching of the tapping gesture commands being “complimentary” to
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`visible controls is particularly complementary to the system of Iwata, because Iwa-
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`ta already employs visible controls in the form of buttons and icons on its display.
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`Ex. 1003 at ¶ 58; Ex. 1004 at 30:40-41, FIGS. 4-12, 24-31.
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`Third, a POSITA would have been prompted to modify Iwata’s system of
`
`selecting, cutting, and pasting to incorporate these traditional forms of tapping ges-
`
`ture commands (as suggested by Agulnick) because doing so would be merely the
`
`application of a known technique (e.g., using detectable forms of touch input on a
`
`touch input surface) to a known device (e.g., Iwata’s touchscreen device) ready for
`
`improvement to yield predictable results. Ex. 1003 at ¶ 59. Indeed, “when a patent
`
`‘simply arranges old elements with each performing the same function it had been
`
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`known to perform’ and yields no more than one would expect from such an ar-
`
`rangement, the combination is obvious.” KSR, 550 U.S. at 417. Here, both Iwata
`
`and Agulnick disclose portable computing devices having touch input options, and
`
`a POSITA would have recognized that applying Agulnick’s suggestions to Iwata’s
`
`device would have led to predictable results without significantly altering or hin-
`
`dering the functions performed by the system of Iwata. Ex. 1003 at ¶ 59.
`
`For at least these reasons and the additional explanations described in the
`
`chart below and the Welch Declaration, there is a reasonable likelihood that claims
`
`5-9 of the ’059 patent are unpatentable under § 103 based upon the obvious com-
`
`bination of Iwata in view of Lee. Ex. 1003 at ¶¶ 51-69.
`
`C. Ground 3: Claims 11, 14 & 17 are Obvious under § 103 over Iwata in
`view of U.S. Pat. No. 5,526,422 to Keen (“Keen”)
`
`Referring to Ground 3 (charted below), claims 11, 14, and 17 are rendered
`
`obvious by Iwata in view of Keen. Iwata describes a touchscreen mobile phone
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`device. Ex. 1004 at FIGS. 1-2, 48; Ex. 1003 at ¶¶ 70, 72. The device in Iwata has a
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`mode called the “cover opened status” where touch input is accepted. Ex. 1004 at
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`12:65-13:3, 13:14-24; FIGS. 2, 48.
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`In Iwata, when the user opens the cover (indicating that the device should
`
`enter the “cover opened status”), the device determines which screens, characters,
`
`and icons are displayed. Id. at 17:5-11, 17:43-18:8, FIGS. 13-14. Iwata discloses
`
`that the screen can display “characters and symbols” and that it can detect touching
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`at such characters and symbols, or icons. Ex. 1004 at 13:53-57; 16:39-48; 30:40-
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`41. In the first mode (e.g., claim elements [11.2]-[11.5] below), Iwata generates
`
`various output signals and takes action in response, including inputting characters
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`(15:50-54) and scrolling the display (14:39-42, 14:46-48). Iwata further discloses
`
`that the user may select buttons on the touchscreen to operate device “functions
`
`such as redial, speed dial and one-touch dial . . . enabling a telephone call to be
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`easily made by simply touching it.” Id. at 16:49-59, FIG. 12; Ex. 1003 at ¶¶ 72, 79-
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`83, 88.
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`To the extent that Iwata does not disclose a mode in which the screen can be
`
`cleaned but “no action” is taken in response to touches (e.g., claim elements [11.6]-
`
`[11.8] below), such a mode was implemented in similar prior art systems. Ex. 1003
`
`at ¶ 73. For example, Keen discloses a method for cleaning a touchscreen tele-
`
`phone whereby the input portion of the touchscreen can be turned on and off with-
`
`out turning the display portion of the touchscreen off during cleaning. Ex. 1007 at
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`2:42-49, 4:42-47. The “clean screen” mode is entered when the user presses the
`
`“clean screen” button. Id. at 5:15-19, 5:31-32. In the “clean screen” mode, the
`
`controller “ignores all signals sent from the touch screen module 114 to the proces-
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`sor 104.” Id. at 5:45-51. The display is never turned off, but the processor simply
`
`ignores all signals so that the user does not “inadvertently” operate any features of
`
`the phone. Id. at 5:47-67; Ex. 1003 at ¶¶ 73, 84.
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`Multiple reasons would have prompted a POSITA to implement this clean
`
`screen mode (as suggested by Keen) using Iwata’s devices. First, a POSITA
`
`would have been prompted to do so “for cleaning a display screen in a touch screen
`
`based telephone such that features of the telephone are not inadvertently activat-
`
`ed.” Ex. 1003 at ¶¶ 74-75 (providing reasons that would have prompted a POSITA
`
`to modify Iwata’s touch screen de