Paper 7
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 17, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01985
`Patent 8,713,476 B2
`____________
`
`Before JAMESON LEE, DAVID C. MCKONE, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 17, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01985
`Patent 8,713,476 B2
`____________
`
`Before JAMESON LEE, DAVID C. MCKONE, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2015-01985
`Patent 8,713,476 B2
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`I. INTRODUCTION
`Petitioner, LG Electronics, Inc., filed a Petition requesting an inter
`
`partes review of claims 1, 4–6, 8, 9, 20, 26, 27, and 29 of U.S. Patent No.
`8,713,476 B2 (Ex. 1001, “the ’476 patent”) under 35 U.S.C. §§ 311–319.
`Paper 1 (“Petition” or “Pet.”). Patent Owner, Core Wireless Licensing
`S.A.R.L., filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Under
`35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1, 4–6, 8, 9, 20, 26, 27, and 29 of the ’476 patent.
`A. Related Proceedings
`According to Petitioner and Patent Owner, the ’476 patent is involved
`in, at least, the following lawsuits: Core Wireless Licensing S.A.R.L. v.
`Apple, Inc., No. 6:14-cv-00751 (E.D. Tex.), Core Wireless Licensing
`S.A.R.L. v. Apple, Inc., No. 6:14-cv-00752 (E.D. Tex.), and Core Wireless
`Licensing S.A.R.L. v. LG Electronics, Inc., No. 2:14-cv-00911 (E.D. Tex.).
`Pet. 1; Paper 5, 2. Petitioner indicates that the cases involving Apple, Inc.,
`are being transferred to the Northern District of California. Pet. 1. The ’476
`patent is also subject to IPR2015-01899. Paper 5, 1. Related patent, U.S.
`Patent No. 8,434,020, is at issue in IPR2015-01898 and IPR2015-01984.
`Patent Owner also indicates that pending U.S. Application No. 10/343,333 is
`a continuation of the application that issued as the ’476 patent. Paper 5, 2.
`
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`B. The ’476 Patent
`The ’476 patent relates to a computing device with an improved user
`interface for applications. Ex. 1001, 1:23–24. The ’476 patent describes a
`“snap-shot” view of an application that brings together, in one summary
`window, a limited list of common functions and commonly accessed stored
`data. Id. at 2:37–41. Preferably, where the summary window for a given
`application shows data or a function of interest, the user can select that data
`or function directly, which causes the application to open and the user to be
`presented with a screen in which the data or function of interest is
`prominent. Id. at 2:42–46. The ’476 patent explains that this summary
`window functionality saves the user from navigating to the required
`application, opening it up, and then navigating within that application to
`enable the data of interest to be seen or a function of interest to be activated.
`Id. at 2:46–50. Figure 2 of the ’476 patent is reproduced below.
`
`
`Figure 2 illustrates an implementation of the summary window of the
`’476 patent. Ex. 1001, 3:42–43.
`
`3
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`C. Illustrative Claim
`Claim 1, a device claim, and claim 20, a method claim, are the only
`independent claims of the ’476 patent that are challenged here. Claims 4–6,
`8, and 9 depend directly from claim 1. Claims 26, 27, and 29 depend
`directly from claim 20. Claim 1 is illustrative of the subject matter in this
`proceeding, and is reproduced below (formatting added).
`1. A computing device comprising a display
`screen,
`the computing device being configured to
`display on the screen a menu listing one or more
`applications, and
`additionally being configured to display on
`the screen an application summary that can be
`reached directly from the menu,
`wherein the application summary displays a
`limited list of data offered within the one or more
`applications,
`each of the data in the list being selectable to
`launch the respective application and enable the
`selected data to be seen within the respective
`application, and
`is
`summary
`application
`the
`wherein
`displayed while the one or more applications are in
`an un-launched state.
`
`Id. at 5:59–6:3.
`
`D. Evidence Relied Upon
`Petitioner relies upon the following prior art references.
`Blanchard US 6,415,164 B1
`
`July 2, 20021
`
`
`Ex. 1002
`
`
`1 Blanchard was filed March 17, 1999.
`4
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`IPR2015-01985
`Patent 8,713,476 B2
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`Ex. 1003
`May 29, 20072
`
`Schnarel US 7,225,409 B1
`
`Petitioner also relies upon the Declaration of Vernon Thomas
`
`Rhyne, III, dated September 26, 2015 (“Rhyne Declaration”). Ex. 1004.
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Challenged Claims
`Blanchard
`§ 103(a)
`1, 4–6, 8, 9, 20, 26, 27, and 29
`Schnarel
`§ 103(a)
`1, 4–6, 8, 9, 20, 26, 27, and 29
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b). Under the broadest
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`term must be set forth with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms
`which are in controversy need be construed, and only to the extent necessary
`to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`2 Schnarel was filed August 25, 1999.
`5
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` “application summary”
`Although neither party requests that we construe “application
`summary,” we determine that, based on Patent Owner’s contentions, it
`would be useful also to construe this phrase. Patent Owner contends that
`“an application summary operates as an alternative vehicle by which a user
`may launch an application (or, more specifically, a function associated with
`an application).” Prelim. Resp. 12 (citing Ex. 1001, 2:66–3:10). In other
`words, Patent Owner submits that “the application summary presents an
`alternative to launching the application directly from the menu.”
`Id. (citing Ex. 1001, 3:16–33).
`We do not agree with Patent Owner that the broadest reasonable
`construction of the term “application summary” requires that it be an
`“alternative” way of launching the application. The claim only states that
`the menu “list[] one or more applications.” Ex. 1001, 5:61. There is no
`discussion in any of the claims or the Specification of any further required
`functionality of the “menu.” Moreover, the cited portion of the
`Specification, Ex. 1001, 3:16–33, makes clear that it is just an example.
`Thus, on this record, we decline to read into the claim a requirement that the
`application summary be an “alternative” way to reach the applications.
`With that explanation, we find that no other construction of the term is
`necessary, at this time.
`“mobile telephone”
`Although neither party requests construction of the term “mobile
`telephone” recited in claim 9, we determine that, based on Patent Owner’s
`contentions, it would be useful to construe this term. The ’476 patent states:
`
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`The term ‘mobile telephone’ refers to any kind of mobile device
`with communications capabilities and includes radio (mobile)
`telephones, smart phones, communicators, PDAs and Wireless
`information devices. It includes devices able to communicate
`using not only mobile radio such as GSM or UMTS, but also any
`other kind of wireless communications system, such as
`Bluetooth.
`Ex. 1001, 1:28–34. We determine that this amounts to a lexicographic
`definition of the term “mobile telephone” because it sets forth the
`meaning of this term with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d at 1480. Thus, we adopt it for
`purposes of this proceeding.
`Remaining Terms
`Petitioner proposes a construction for the term “computing device,”
`but that does not appear to be in dispute at this time. Thus, we determine
`that construction of no other term is necessary at this time.
`B. Asserted Obviousness over Blanchard
`Petitioner contends that claims 1, 4–6, 8, 9, 20, 26, 27, and 29 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Blanchard. To
`support its contention, Petitioner provides a detailed showing mapping
`limitations of claims 1, 4–6, 8, 9, 20, 26, 27, and 29 to structures described
`by Blanchard. Pet. 14–22. Petitioner also cites the Rhyne Declaration for
`support. See Ex. 1004 ¶¶ 39–61.
`Blanchard (Ex. 1002)
`Blanchard, titled “Arrangement for Dynamic Allocation of Space on a
`Small Display of a Telephone Terminal,” discloses a telephone terminal
`configurable for accessing features available on the terminal through an
`interactive display arrangement. Ex. 1002, 1:11–14. In particular, Blanchard
`
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`describes a user-interface for a mobile telephone, which is based on a “parent
`menu,” and has a window with selectable sub-level menu choices for each of
`the five options in the “parent menu.” Id. at 3:54–63. Figure 3 of Blanchard
`provides a display screen flow diagram.
`
`
`Figure 3 illustrates the various display screens of one embodiment of
`Blanchard.
`The top row of Figure 3 illustrates the top level of the menu in five
`
`parent screens 210, 320, 330, 340, and 350. Id. at 5:39–41. Each of the five
`screens corresponds to one of the five options in the “parent menu,” which is
`the row of icons containing “the Home symbol, the Phone Book symbol, the
`Mailbox symbol, the Lock, and the Tools symbol.” Id. at 3:54–63. The user
`presses the “Left” or “Right” arrow keys to cycle through these screens.
`Id. at 5:39–46. In the leftmost screen, which is displayed when the “Home”
`symbol is selected in the parent menu, the window below that menu provides
`the name of the cellular service provider, the time and date, and two
`
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`Patent 8,713,476 B2
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`“selectable menu choices”: “Last Number” and “View Own Number.”
`Id. at 6:47–64. Similarly, in the middle screen, which is displayed when the
`“Mailbox” symbol is selected in the parent menu, the window provides three
`selectable menu choices, which are used to access “voice messages, text
`messages, and call logs,” respectively. Id. at 3:67–4:3.
`In each screen, “the Up and Down arrow keys 222 and 224 can be used
`to move the darkened elliptical cursor.” Id. at 6:7–15. The darkened elliptical
`cursor identifies the function in the sub-level menu that will be activated if the
`user presses “Select.” Id. at 6:42–44.
`Analysis
`Claim 1 is drawn to an apparatus and claim 20 is drawn to a method.
`The method steps recited in claim 20 correspond to the respective functions
`the device of claim 1 is configured to perform. We regard claim 1 as
`representative. Our discussion with respect to claim 1 also applies to claim
`20.
`
`With regard to the level of ordinary skill in the art, we determine that
`no express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`In support of this asserted ground of unpatentability, Petitioner
`provides explanations as to how Blanchard accounts for the subject matter of
`claims 1, 4–6, 8, 9, 20, 26, 27, and 29. Pet. 15–22. With respect to claim 1,
`for example, Petitioner contends that Blanchard discloses “[a] computing
`device comprising a display screen, the computing device being
`configured. . . .” Pet. 15 (citing Ex. 1002, Fig. 1 (showing block diagram of
`
`9
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`a mobile telephone with processor, memory, and display screen); Fig. 2
`(showing mobile phone with display screen); 2:52–3:2 (description of
`hardware components of device); Ex. 1004 ¶ 39). Petitioner further
`contends that Blanchard discloses that the device is configurable to “display
`on the screen a menu listing one or more applications.” Pet. 15 (citing Ex.
`1002, Fig. 3 (showing menu), 3:54–63 (describing icons associated with
`“parent menu screens”), 5:39–46 (describing “parent screens” at top level of
`menu), 6:44–46 (select key activates options in menu), 6:57–64
`(“information identifying one or more various wireless mobile units can be
`stored in association with information of various target remote locations and
`in association with various set geographic relationships thereof and actions
`to be performed”); Ex. 1004 ¶ 40).
`Petitioner also submits that Blanchard discloses that the device is
`“additionally [] configured to display on the screen an application summary
`that can be reached directly from the menu.” Pet. 15–16 (citing Ex. 1002,
`3:54–63 (describing icons associated with home screens), 5:39–46
`(discussing parent screens of menu), 3:23–27 (describing how the menu is
`accessed); Ex. 1004 ¶¶ 41–42).
`Petitioner also argues that Blanchard discloses a device “wherein the
`application summary displays a limited list of data offered within the one or
`more applications, each of the data in the list being selectable to launch the
`respective application and enable the selected data to be seen within the
`respective application.” Pet. 16–17 (citing Ex. 1002, 6:36–42 (once home
`screen is selected menu choices displayed), 6:40–46 (menu choices can be
`selected, for example, selecting last number redials last number called), 6:7–
`
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`18 (selected “Mailbox” allows user “access” to one of three displayed
`“features”), 3:67–4:3; Ex. 1004 ¶¶ 43–46).
`Finally, Petitioner contends that a person of ordinary skill would
`understand that Blanchard accounts for the limitation of claim 1 that requires
`that “the application summary is displayed while the one or more
`applications are in an unlaunched state.” Pet. 17–19 (citing Ex. 1004 ¶¶ 47–
`49; Ex. 1002, 2:52–3:2, 3:67–4:3, 5:39–46, 6:7–64, Fig. 1). In addition,
`Petitioner argues that if the Board determines that this element is not
`disclosed by Blanchard, then Blanchard renders this limitation obvious. Id.
`at 18–19. In particular, Petitioner argues that it would have been obvious to
`a person of ordinary skill to have the applications in an un-launched state.
`Id. (citing Ex. 1004 ¶¶ 50–51).
`Petitioner also provides articulated reasons with rational underpinning
`that explain why one of ordinary skill in the art would have modified
`Blanchard, if needed, such that the applications where in an un-launched
`state. Pet. 18–19; Ex. 1004 ¶¶ 50–51. Namely, Petitioner states that mobile
`phones at the time of Blanchard normally only had one application
`“launched” at a time, due to hardware constraints, such as battery life and
`memory capacity. Id. at 18 (citing Ex. 1004 ¶ 50). Thus, Petitioner submits
`that it would have been normal and routine at the time to have the
`applications in program memory 112 of Blanchard running in an un-
`launched state as the user navigates the menus of the user interface. Id. at
`18–19 (citing Ex. 1004 ¶ 51). Petitioner argues that this is merely the
`predictable result of combining known elements performing their known
`functions, “consistent with the architecture of the Blanchard mobile phone,
`
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`which has separate structure for the ‘program memory’ and the ‘user
`interface’ containing the application summary.” Id. (citing Ex. 1004 ¶ 51).
`In its Preliminary Response, Patent Owner disputes that Blanchard
`discloses an application summary, as recited in claim 1, and that Blanchard
`discloses displaying the application summary while the one or more
`applications are in an un-launched state. Prelim. Resp. 9–16. Patent Owner
`does not dispute that Blanchard discloses the other elements of claim 1.
`Based on our review of the Petition and cited evidence, we determine that
`Petitioner has shown sufficiently, at this time, that Blanchard discloses the
`undisputed elements of claims 1 and 20. Petitioner also accounts
`sufficiently for the limitations of dependent claims 4–6, 8, 9, 26, 27, and 29.
`Pet. 19–22. Thus, we focus on the issues that Patent Owner raises with
`respect to the application summary and the un-launched state requirement.
`Patent Owner argues that Blanchard fails to teach the claimed
`application summary that can be reached directly from the menu, as recited
`in claim 1. Prelim. Resp. 12–13. Patent Owner contends that the application
`summary operates as an “alternative vehicle by which a user may launch an
`application (or, more specifically, a function associated with the
`application).” Id. at 12 (citing Ex. 1001, 2:66–3:10). In other words, Patent
`Owner asserts that “the application summary presents an alternative to
`launching the application directly from the menu.” Id. (citing Ex. 1001,
`3:16–33). Patent Owner argues the menu displayed as a result of such
`selection in Blanchard is not an application summary because rather than
`presenting an alternative approach to launching the associated application,
`the menu options being presented provide the only means of doing so. Id. at
`13. We do not find this argument persuasive because, as we explained
`
`12
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`above, the broadest reasonable construction of this phrase does not require
`that the application summary be an “alternative” to launching through the
`menu. We see nothing in the description in the ’476 patent inconsistent with
`an application summary that is the sole way of launching the application.
`Thus, we find that Petitioner has shown sufficiently that Blanchard accounts
`for the claimed application summary.
`Patent Owner also argues that Blanchard does not disclose displaying
`the application summary in an unlaunched state. Prelim. Resp. 13–16.
`Patent Owner submits that because the user of Blanchard’s display can take
`only one action with respect to the applications listed in the menu (i.e.,
`access the parent screen of an application through selection of a
`corresponding top-row icon), “this action must be interpreted as the
`launching of the application.” Id. at 15. Thus, Patent Owner concludes that
`the alleged application summary is displayed while the one or more
`applications are in a launched state rather than an unlaunched state, as
`recited in the challenged claims.” Id. at 22.
`We do not agree with Patent Owner, on this record, either that
`Blanchard’s applications are “launched” when the menu is displayed or that
`it would not have been obvious to have the applications in an un-launched
`state when displaying the menu. Patent Owner offers its interpretation of
`Blanchard’s disclosure, but this interpretation is unsupported by any
`evidence. Petitioner’s expert has reviewed this same disclosure and offered
`testimony that a person of ordinary skill would have understood that
`Blanchard’s applications are unlaunched, and that even if the applications
`could be understood to be launched that it would have been obvious to a
`person of ordinary skill to have the applications in an un-launched state
`
`13
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`when displaying the menu. Petitioner also provided explanation why a
`person of ordinary skill would have been motivated have the applications
`un-launched. Ex. 1004 ¶¶ 50–51. At this stage, we find Petitioner’s
`evidence demonstrates sufficiently that Blanchard accounts for this element
`of the claim. Accordingly, we find that Petitioner has shown sufficiently
`that Blanchard accounts for all of the elements of claim 1.
`We have reviewed the proposed ground of obviousness under § 103(a)
`over Blanchard against claims 1, 4–6, 8, 9, 20, 26, 27, and 29, and we are
`persuaded that, on the present record, Petitioner has established a reasonable
`likelihood that it would prevail in its challenge to claims 1, 4–6, 8, 9, 20, 26,
`27, and 29 on this ground.
`C. Asserted Obviousness over Schnarel
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” In determining
`whether to institute an inter partes review of a patent, the Board, in its
`discretion, may “deny some or all grounds for unpatentability for some or all
`of the challenged claims.” 37 C.F.R. § 42.108(b); see also Harmonic Inc. v.
`Avid Tech., Inc., No. 2015-1072, 2016 WL 798192 (Fed. Cir. Mar. 1, 2016)
`(holding § 42.108(b) allows the Board to decline to institute some grounds
`as redundant); Synopsys, Inc. v. Mentor Graphics Corp., Nos. 2014-1516,
`1530, 2016 WL 520236, at *3–6 (Fed. Cir. Feb. 10, 2016) (holding that §
`42.108(a) is “plainly an exercise” of the PTO’s rulemaking authority and “is
`a reasonable interpretation of the statutory provision governing the
`institution of inter partes review”).
`
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`Based on the record before us, we exercise our discretion and decline
`to institute review based on the asserted ground that claims 1, 4–6, 8, 9, 20,
`26, 27, and 29 are unpatentable under 35 U.S.C. § 103(a) based on Schnarel.
`See 37 C.F.R. § 42.108(a).
`
`
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1, 4–6, 8, 9, 20, 26, 27, and 29 of the ’476 patent are
`unpatentable. At this stage of the proceeding, the Board has not made a final
`determination with respect to the patentability of the challenged claims or
`the construction of any claim term.
`
`IV. ORDER
`In consideration of the foregoing, it is:
`ORDERED that an inter partes review is instituted on the basis that
`Petitioner has shown a reasonable likelihood that claims 1, 4–6, 8, 9, 20, 26,
`27, and 29 of the ’476 patent are unpatentable as obvious under 35 U.S.C.
`§ 103(a) over Blanchard;
`FURTHER ORDERED that the trial is limited to the ground identified
`immediately above, and no other ground is authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’476 patent is instituted with trial commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is given of the institution of the trial.
`
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`For Petitioner:
`
`Herbert H. Finn
`Richard D. Harris
`Eric J. Maiers
`Ashkon Cyrus
`GREENBERG TRAURIG, LLP
`LG-CoreWireless-IPR@gtlaw.com
`harrisd@gtlaw.com
`maierse@gtlaw.com
`cyrusa@gtlaw.com
`
`
`
`For Patent Owner:
`
`Tarek N. Fahmi
`Holly J. Atkinson
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@aacendalaw.com
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