Trials@uspto.gov
`571-272-7822
`
` Paper 16
`
`
` Entered: September 19, 2016
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMIT AGARWAL,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00807
`Patent 8,773,356 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BEVERLY M. BUNTING, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
` Paper 16
`
`
` Entered: September 19, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMIT AGARWAL,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00807
`Patent 8,773,356 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BEVERLY M. BUNTING, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-00807
`Patent 8,773,356 B2
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`I. INTRODUCTION
`Amit Agarwal (“Petitioner”) filed a Petition (“Pet.”) requesting an
`inter partes review of claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26 of
`U.S. Patent No. 8,773,356 B2 (Ex. 1001, “the ’356 patent”). Immersion
`Corporation (“Patent Owner”) filed a Corrected Preliminary Response
`(Paper 15, “Prelim. Resp.”) accompanied by a Corrected Declaration of
`Nathan J. Delson, Ph.D. (Ex. 2009, “Delson Decl.”). We have jurisdiction
`under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that 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.” Upon consideration of the
`Petition and the Corrected Preliminary Response, we conclude that the
`information presented in the Petition does not establish a reasonable
`likelihood that Petitioner would prevail in showing the unpatentability of
`any of the challenged claims on the grounds set forth in the Petition.
`Accordingly, we deny Petitioner’s request to institute an inter partes review
`of claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26.
`
`
`II. BACKGROUND
`A. Real Party In Interest
`Amit Agarwal, a pro se petitioner, identifies himself as the real-party-
`in-interest. Pet. 1.
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`B. Related Proceedings
`The parties identify the following proceedings in which infringement
`of the ’356 patent has been alleged: (1) Immersion Corp. v. Apple, No. 1-
`16-cv-00077 (D. Del.); and (2) In the Matter of: Certain Mobile Electronic
`Devices Incorporating Haptics (Including Smartphones and Smartwatches)
`and Components Thereof, ITC Investigation No. 337-TA-990 (USITC). Pet.
`1; Paper 4, 2.
`
`III. THE ’356 PATENT
`A. Described Invention
`The ’356 patent describes a system and method for providing tactile
`sensations to input devices, including non-mechanical input devices, such as
`soft-keys displayed on a screen. See Ex. 1001, Abstract; col. 3, ll. 10–15.
`Figure 5 of the ’356 patent is reproduced below.
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`Figure 5 depicts Personal Digital Assistant (PDA) 31 having pressure-
`sensitive touchpad 30 as an input device. Id. at col. 11, ll. 11–13. As shown
`in Figure 5, display 33 of PDA 31 displays software-generated buttons or
`keys, e.g., soft-keys 36a–36i, which provide a graphical user interface for
`the PDA. Id. at col. 11, ll. 40–43. As a graphical object, each soft-key
`occupies a distinct location on the display. Id. at col. 11, ll. 44–45. In the
`embodiment depicted in Figure 5, the PDA can function as a mobile
`telephone, and the soft-keys are arranged as a telephone keypad to provide
`the same functionality as the mechanical keys on a conventional telephone
`keypad. Id. at col. 11, ll. 45–48. PDA 31 also includes actuator 64 (not
`shown in Figure 5) that generates and transmits tactile sensations to display
`33 and touchpad 30. Id. at col. 11, ll. 22–39; Fig. 6.
`When a soft-key is selected by touching touchpad 30 at an appropriate
`location on display 33, a controller determines the touched location on the
`display and identifies the soft-key corresponding to the touched location.
`Based on this information, the controller causes the actuator to provide a
`corresponding tactile sensation. Id. at col. 11, ll. 53–63. In addition, the
`pressure applied to a particular soft-key is detected by the controller or a
`separate pressure detector such that the detected pressure can be used to
`distinguish different inputs for soft-keys that represent multiple inputs—e.g.,
`2, A, B, or C for soft-key 36b. Id. at col. 12, ll. 6–12; Fig. 5. For such keys,
`each specific input corresponds to a distinct amount of pressure applied to a
`particular soft-key. Id. at col. 12, ll. 6–8.
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`Figure 8 of the ’356 patent is reproduced below.
`
`
`Figure 8 shows a flowchart illustrating a process of detecting an input signal,
`the input position or location data, and the pressure data; determining the
`desired function corresponding to the input device and the detected data; and
`producing a tactile sensation corresponding to the determined function. Id.
`at col. 13, l. 52–col. 14, l. 14. In steps 54 and 55 of Figure 8, the controller,
`having obtained the input data from the input device, accesses a memory
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`device and a database stored in the memory device, which contains
`information necessary to determine, based on the input data, the desired
`function and the corresponding tactile sensation. Id. at col. 14, ll. 15–20.
`In one embodiment, this information—i.e., the associations between
`the detected input data, the functions of the input device, and the
`corresponding tactile sensations to be generated—is maintained in a table,
`such as the table shown in Figure 9. Id. at col. 14, ll. 21–25. Figure 9 of the
`’356 patent is reproduced below.
`
`
`
`Figure 9 shows a table of exemplar grouping of associations for various
`input devices. As shown in Figure 9, the table maintains, for each input
`device, the possible combinations of input signals, position data, and
`pressure data, as well as the specified function and the distinct tactile
`sensation corresponding to each combination. Id. at col. 14, ll. 23–30.
`Based on the data obtained from monitoring the input device, the controller
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`reads the table and determines the associated function and the corresponding
`tactile feedback. Id. at col. 14, ll. 32–35. The controller then causes the
`actuator to generate the specified tactile sensation. Id. at col. 11, ll. 53–66;
`col. 14, ll. 46–50.
`
`B. Illustrative Claim
`Of the challenged claims, claims 1, 12, and 22 are independent.
`Claim 1 is illustrative of the challenged claims and is reproduced below with
`the key disputed limitation emphasized in italics:
`1.
`A method, comprising:
`outputting a display signal configured to display a
`graphical object on a touch-sensitive input device;
`receiving a sensor signal from the touch-sensitive input
`device, the sensor signal indicating an object contacting the
`touch-sensitive input device;
`determining an interaction between the object contacting
`the touch-sensitive input device and the graphical object; and
`generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table.
`
`
`Ex. 1001, col. 20, ll. 16–26.
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`IV. PETITIONER’S CHALLENGES
`A. Prior Art Cited in Petitioner’s Challenges
`Petitioner cites the following references in its challenges to
`patentability:
`
`Reference
`
`Designation
`
`Exhibit No.
`
`U.S. Patent Application Pub. No.
`2001/0035854 A1 (filed Jan. 19, 2000)
`
`U.S. Patent Application No. 09/103,281
`(filed June 23, 1998)
`
`User’s Manual for Simon (© Copyright
`1994)2
`
`
`Rosenberg1
`
`Ex. 1002
`
`’281 Application Ex. 1003
`
`Simon
`
`Ex. 1005
`
`B. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`
`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`1–3, 9–13, 19–23, 25, and 26 § 102(e)
`
`Rosenberg
`
`5, 7, 15, and 17
`
`§ 103(a)
`
`
`Rosenberg and Simon
`
`V. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
`2 Petitioner asserts that Simon was published in 1994. Pet. 1.
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`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding that 37 C.F.R.
`§ 42.100(b) “represents a reasonable exercise of the rulemaking authority
`that Congress delegated to the . . . Office”). Under the broadest reasonable
`interpretation (BRI) standard, and absent any special definitions, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in view of the specification. In
`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner contends that “no claim interpretation is needed” (Pet. 1),
`and Patent Owner does not propose any claim constructions in this case
`(Prelim. Resp. 10). Having considered the arguments and evidence
`presented, we determine that no claim terms require express interpretation
`for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`
`
`VI. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`A. Anticipation By Rosenberg
`Petitioner contends claims 1–3, 9–13, 19–23, 25, and 26 are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Rosenberg. Pet. 2–
`17. We have reviewed the parties’ contentions and supporting evidence.
`Given the evidence of record, we are not persuaded that Petitioner has
`established a reasonable likelihood of prevailing on this asserted ground for
`the reasons explained below.
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`1. Principles of Law
`A claim is anticipated only if a single prior art reference expressly or
`inherently describes each and every limitation set forth in the claim. See
`Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005);
`Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
`Further, a reference cannot anticipate “unless [it] discloses within the four
`corners of the document not only all of the limitations claimed[,] but also all
`of the limitations arranged or combined in the same way as recited in the
`claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`2008). Although the elements must be arranged in the same way as in the
`claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity
`of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this
`asserted ground based on anticipation with the principles identified above in
`mind.
`
`2. Overview of Rosenberg (Ex. 1002)
`Rosenberg describes a touch input device, such as a touchpad or a
`touch screen, which is coupled to an actuator that provides haptic feedback.
`Ex. 1002, Abstract. The touch input device can be integrated in a housing of
`a computer or a handheld device. Id. ¶ 9. For example, a touchpad can be
`placed on the housing of a portable computer separate from the display
`screen. Id. ¶¶ 7, 9. Figure 1 of Rosenberg is reproduced below.
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`Figure 1 depicts a portable computer including a haptic touchpad. Id. ¶ 21.
`As shown in Figure 1, touchpad 16 and buttons 26 are placed on the housing
`of portal computer 10, separate from display device 12 that displays
`graphical environment 18.3 Id. ¶¶ 22, 29. In one embodiment, haptic
`sensations are provided to the entire touchpad 16 as a single unit. Id. ¶ 27.
`In another embodiment, the touchpad comprises individually-moving
`portions, each of which is provided with its own actuator such that haptic
`sensations can be conveyed to only a particular portion of the touchpad. Id.
`Buttons 26 provided on the housing of the computer can be used in
`conjunction with touchpad 16 in ways similar to how the buttons on a mouse
`input device are used. Id. ¶ 29. In one embodiment, the housing of the
`
`3 Touchpad 16 appears to be mislabeled with number 18 in Figure 1.
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`computer in which buttons 26 are placed comprises one or more movable
`portions 28, as illustrated in Figure 1 above. Id. ¶ 30; Fig. 1. The moveable
`portions of the housing can be used to convey haptic sensations separate
`from the haptic feedback provided by touchpad 16. Id. For example, a
`vibration of a low frequency can be conveyed through the moveable housing
`portions, distinct from high frequency vibrations provided on touchpad 16.
`Id.
`
`For touch screen input devices, one or more actuators can be coupled
`to the underside of a touch screen to provide haptic feedback to touch screen
`interactions. Id. ¶ 74. For example, an actuator can be placed near each
`corner of the touch screen. Id.
`
`3. Discussion
`a. Claims 1, 12, and 22
`Independent claims 1, 12, and 22 all recite “generating [or generate]
`an actuator signal based at least in part on the interaction [between the object
`contacting the touch-sensitive input device and the graphical object] and
`haptic effect data in a lookup table” (the “actuator signal generation
`limitation” or “disputed limitation”). Ex. 1001, col. 20, ll. 25–26, col. 21,
`ll. 9–10, col. 22, ll. 20–22. Petitioner contends that Rosenberg discloses
`“generating an actuator signal based at least in part on the interaction,” as
`recited in claim 1. Pet. at 5 (citing Ex. 1002 ¶¶ 59, 74). For the remainder
`of the disputed limitation, i.e., “haptic effect data in a lookup table,”
`Petitioner relies on another reference, namely, the ’281 Application. Id. at
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`6–7 (citing Ex. 1003, p. 17, ll. 11–12).4 According to Petitioner, Rosenberg
`discloses the “actuator signal generation limitation” because Rosenberg
`incorporates the ’281 Application by reference. Id. (citing Ex. 1002 ¶ 30).
`
`i. Incorporation by Reference
`Patent Owner asserts that the lookup table disclosed in the ’281
`Application is not incorporated by reference in Rosenberg because
`paragraph 30 of Rosenberg cited by Petitioner only refers to the disclosure
`of “having a moveable portion of a housing [for haptic feedback]” as the
`material being incorporated by reference from the ’281 Application. Prelim.
`Resp. 23. Citing the testimony of Dr. Delson, Patent Owner further argues
`that a person of ordinary skill in the art would have understood that the
`lookup table disclosed in the ’281 Application has nothing to do with using
`moveable portions of a housing for haptic feedback, and, therefore, was not
`incorporated by reference in Rosenberg. Id. at 25 (citing Ex. 2009 ¶¶ 64–
`66). We are persuaded by Patent Owner’s argument that Petitioner does not
`establish that the lookup table disclosed in the ’281 Application is
`incorporated by reference in Rosenberg.
`“To incorporate material by reference, the host document must
`identify with detailed particularity what specific material it incorporates and
`clearly indicate where that material is found in the various documents.”
`Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1362 (Fed. Cir. 2013)
`(citation omitted). Whether, and to what extent, a host document
`
`
`4 The page numbers for the ’281 Application refer to the page numbers
`inserted by Petitioner at the bottom-center of each page.
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`incorporates material by reference is a question of law. Id. In making that
`determination, “the standard of one reasonably skilled in the art should be
`used to determine whether the host document describes the material to be
`incorporated by reference with sufficient particularity.” Zenon Envtl., Inc. v.
`U.S. Filter Corp., 506 F.3d 1370, 1378–79 (Fed. Cir. 2007).
`As Petitioner acknowledges, Rosenberg identifies expressly the
`disclosure of “[h]aving a moveable portion of a housing for haptic feedback”
`as the material being incorporated by reference from the ’281 Application.
`Pet. 6 (quoting Ex. 1002 ¶ 30). Petitioner argues, without evidentiary
`support, that this description incorporates the lookup table disclosed in the
`’281 Application because materials generally relating to providing haptic
`feedback, “applicable to moveable portions and non-moveable portions of
`the housing alike,” also are incorporated by reference. Id. at 6–7 (citing
`Ex. 1003, p. 17, ll. 11–12). Petitioner’s argument is unpersuasive because
`Petitioner does not provide sufficient evidence or explanation as to how or
`why one of skill in the art would consider the disclosure of the lookup table
`in the ’281 Application to be related to the disclosure of using a moveable
`portion of a housing for haptic feedback. Indeed, Petitioner does not cite or
`discuss disclosures regarding moveable portions of a housing in the ’281
`Application, much less explain why the disclosure of the lookup table in the
`’281 Application cited by Petitioner is part of, or applicable to, the
`disclosure regarding moveable portions. Petitioner’s conclusory statement
`in this regard is not sufficient, by itself, to establish that Rosenberg
`incorporates by reference the disclosure regarding the lookup table.
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`Petitioner’s argument is unpersuasive even if we accept, arguendo,
`that one of skill in the art would consider the lookup table as a generally
`included feature of providing haptic feedback in the context of the ’281
`Application. As discussed above in Section VI.A.2 (Overview of
`Rosenberg), paragraph 30 of Rosenberg, in which the incorporation
`language relied upon by Petitioner appears, describes an embodiment where
`moveable portions of the housing of a portable computer are used to convey
`distinct haptic sensations separate from the haptic feedback provided by the
`touchpad. Ex. 1002 ¶ 30. In this context, Rosenberg identifies specifically
`the disclosure of “[h]aving a moveable portion of a housing for haptic
`feedback” as the material being incorporated by reference from the ’281
`Application. Id. (emphasis added). Hence, the plain language of Rosenberg,
`read in the context in which it appears, narrowly defines the subject matter
`being incorporated by reference specifically to “[h]aving a moveable portion
`of a housing” when providing haptic feedback, indicating that disclosures
`relating to other aspects of haptic feedback are not necessarily incorporated
`by reference. See Zenon, 506 F.3d at 1379–80 (finding that the plain
`language of a patent limits the incorporation to disclosures relating to a
`specific feature of a water filtration system).
`We also contrast the incorporation language used here with the
`incorporation language used earlier in Rosenberg—“[U.S. Patent
`Application No. 09/467,309] . . . is incorporated herein by reference in its
`entirety” (Ex. 1002 ¶ 1) (emphasis added). Thus, when the drafter of
`Rosenberg intended to incorporate a broad range of materials it did so
`expressly. Similarly, here, the drafter incorporated expressly only a
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`specified portion of disclosure on “[h]aving a moveable portion of a
`housing,” as indicated by the plain language discussed above. See Harari v.
`Lee, 656 F.3d 1331, 1335–36 (Fed. Cir. 2011) (considering the differences
`in incorporation language in determining whether the entirety or only a
`portion of the disclosure in a cited patent application is incorporated by
`reference). Petitioner does not cite, nor do we discern, anything in
`Rosenberg that overrides the plain language and compels incorporation of
`other aspects of providing haptic feedback from the ’281 Application,
`including the disclosure relating to the lookup table. Therefore, Petitioner
`does not proffer sufficient arguments and evidence to establish that the
`lookup table disclosed in the ’281 Application is incorporated by reference
`in Rosenberg. Accordingly, for at least this reason, we are not persuaded by
`Petitioner’s contention that Rosenberg discloses the “actuator signal
`generation limitation” recited in claims 1, 12, and 22.
`
`ii. Disclosure of Claim Limitations As Arranged in the Claim
`Patent Owner argues additionally that, even if Rosenberg incorporates
`the lookup table by reference from the ’281 Application, Rosenberg does not
`disclose the “actuator signal generation limitation,” because Petitioner
`improperly combines different embodiments to show anticipation. Prelim.
`Resp. 26–31. We are persuaded by Patent Owner’s arguments in this regard.
`“Anticipation requires the presence in a single prior art disclosure of
`all elements of a claimed invention arranged as in the claim.” SynQor, Inc.
`v. Artesyn Techs., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013) (citations
`omitted). To anticipate, a prior art reference must disclose more than
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`“multiple, distinct teachings that the artisan might somehow combine to
`achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371.
`As discussed above, Petitioner relies on the passages in Rosenberg
`regarding the touchpad and touch screen embodiments to satisfy the claim
`term “generating an actuator signal based at least in part on the interaction”
`(Pet. 5 (citing Ex. 1002 ¶¶ 59, 74)), and then relies upon the ’281
`Application to satisfy the “haptic effect data in a lookup table” claim term
`(id. at 6–7 (citing Ex. 1003, p. 17, ll. 11–12)). The ’281 Application
`describes a force feedback system for a mouse or joystick (referred to as
`“user object[s]”) that uses an actuator placed inside the mouse or joystick.
`Ex. 1003, p. 9, ll. 7–16. The cited portion of the ’281 Application states
`“force profiles can be stored in memory 27, such as a sequence of stored
`force values that can be output by the microprocessor, or a look-up table of
`force values to be output based on the current position of the user object.”
`Id. at p. 17, ll. 10–12 (emphasis added). We observe that the “position of the
`user object” mentioned in this sentence refers to the position of a mouse or
`joystick. See id. at p. 9, ll. 27–28; p. 10, ll. 3–6; p. 16, ll. 11–13. Hence, the
`cited portion of the ’281 Application describes using a lookup table of force
`values to be sent to an actuator based on the current position of a mouse or
`joystick.
`Petitioner’s anticipation argument is deficient because, even if
`Rosenberg is deemed, arguendo, to incorporate the lookup table by
`reference from the ’281 Application, the Petition does not explain
`sufficiently how “picking, choosing, and combining” the disparate
`disclosures not directly related to each other—i.e., the disclosures of the
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`touchpad and touch screen embodiments in Rosenberg and the disclosure in
`the’281 Application of a lookup table of feedback force values dependent on
`the position of a mouse or joystick—is justified to show anticipation. See In
`re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must
`clearly and unequivocally disclose the claimed [invention] or direct those
`skilled in the art to the [invention] without any need for picking, choosing,
`and combining various disclosures not directly related to each other by the
`teachings of the cited reference.”). Thus, for this additional reason, we are
`not persuaded by Petitioner’s contention that Rosenberg discloses the
`“actuator signal generation limitation” recited in claims 1, 12, and 22.
`
`4. Summary
`Accordingly, on this record, the information presented in the Petition
`does not demonstrate a reasonable likelihood of Petitioner prevailing in its
`challenge to claims 1, 12, and 22 under 35 U.S.C. § 102(e) as anticipated by
`Rosenberg.
`
`b. Dependent Claims 2, 3, 9–11, 13, 19–21, 23, 25, and 26
`Claims 2, 3, 9–11, 13, 19–21, 23, 25, and 26 depend from claims 1,
`12, or 22. Petitioner’s arguments and evidence presented with respect to
`these dependent claims do not remedy the deficiencies in Petitioner’s
`analysis of the challenged independent claims. Therefore, Petitioner does
`not demonstrate a reasonable likelihood of Petitioner prevailing in its
`challenge to claims 2, 3, 9–11, 13, 19–21, 23, 25, and 26 under 35 U.S.C.
`§ 102(e) as anticipated by Rosenberg.
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`B. Obviousness Based on the Combination of Rosenberg and Simon
`Petitioner asserts that claims 5, 7, 15, and 17 are unpatentable under
`35 U.S.C. § 103(a) over the combination of Rosenberg and Simon. Pet. 17–
`20. Claims 5 and 15 depend from claims 1 and 12, respectively, and further
`recite “wherein the display signal is configured to display a keypad
`comprising a plurality of softkeys.” Claims 7 and 17 depend from claims 1
`and 12, respectively, and further recite “wherein the plurality of softkeys
`comprises one softkey for each digit from 0 to 9.” Similar to its challenges
`based on anticipation discussed above, Petitioner relies on Rosenberg as
`disclosing all of the limitations of underlying independent claims 1 and 12.
`Id. at 17. Simon is relied upon by Petitioner only to teach the additionally
`recited limitations of claims 5, 7, 15, and 17. Id. at 17–19. Hence, Simon
`cannot and does not remedy the above-identified deficiencies in Petitioner’s
`analysis of challenged independent claims 1 and 12.
`Accordingly, on this record, the information presented in the Petition
`does not demonstrate a reasonable likelihood of Petitioner prevailing in its
`challenge to claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as obvious
`over the combination of Rosenberg and Simon.
`
`
`VII. CONCLUSION
`Based on the arguments and evidence presented in the Petition, we
`conclude Petitioner has not demonstrated a reasonable likelihood that
`Petitioner would prevail in showing at least one of the challenged claims of
`the ’356 patent is unpatentable based on any asserted ground of
`
`19
`
`
`
`IPR2016-00807
`Patent 8,773,356 B2
`
`
`unpatentability. Therefore, we do not institute an inter partes review with
`respect to any of the challenged claims of the ’356 patent.
`
`
`VIII. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’356 patent.
`
`
`
`
`20
`
`
`
`IPR2016-00807
`Patent 8,773,356 B2
`
`
`PETITIONER:
`
`Amit Agarwal
`ama7386@gmail.com
`
`PATENT OWNER:
`Michael Fleming
`Babak Redjaian
`IRELL & MANELLA LLP
`ImmersionIPR@irell.com
`bredjaian@irell.com
`
`
`21
`
`
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