Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 101
`Entered: December 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`v.
`LEGO A/S,
`Patent Owner.
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`

`

`Case IPR2016-01187
`Patent 8,894,066 B2
`
`I. INTRODUCTION
`
`A. Background
`Petitioner filed a Petition requesting an inter partes review of claims
`1–8 of U.S. Patent No. 8,894,066 B2 (Ex. 1001, “the ’066 patent”). Papers
`1, 41, 89 (“Pet.”).1 Patent Owner, LEGO A/S, filed a Corrected Preliminary
`Response. Paper 20 (“Prelim. Resp.”). In view of those submissions, we
`instituted an inter partes review of claims 1–8. Paper 38 (“Institution
`Decision” or “Inst. Dec.”). Subsequently, Patent Owner filed a Patent
`Owner Response (Paper 70, “PO Resp.”), and Petitioner followed with a
`Reply (Paper 72, “Pet. Reply”). An oral hearing was held on October 11,
`2017 and a copy of the transcript was entered into the record (Paper 92,
`“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. For the reasons that follow, we determine that Petitioner
`has shown by a preponderance of the evidence that claims 1, 4, 6, and 8 of
`the ’066 patent are unpatentable, but has not shown by a preponderance of
`the evidence that claims 2, 3, 5, and 7 are unpatentable.
`
`B. Related Matters
`The ’066 patent has been asserted in Lego Systems A/S v. Rubicon
`Communications, LP dba Smallworks and Smallworks, LLC, Case No. 3:15-
`cv-00823 (VLB) (D. Connecticut). See Pet. 5; see Paper 5, 2.
`
`
`1 Papers 1, 41, and 89 differ from one another only in the parties identified
`as real parties-in-interest.
`
`2
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`Case IPR2016-01187
`Patent 8,894,066 B2
`C. The Pending Grounds of Unpatentability
`The pending grounds of unpatentability include:
`Reference(s)
`Statutory Basis Challenged
`Claim(s)
`35 U.S.C. § 102(b) 1–6 and 8
`Philo2
`Philo and Building Robots3 35 U.S.C. § 103(a) 74
`Anderson5
`35 U.S.C. § 102(b) 1–4, 6, and 8
`Petitioner also relies on a declaration from Jay P. Kesan, Ph.D. (Ex.
`1036). Patent Owner relies on a declaration from Elizabeth B. Knight (Ex.
`2026).
`
`D. The ’066 Patent
`The ’066 patent “relates to a manual controller for manipulating
`images or symbols on a visual display and, in particular, to a controller that
`can be constructed with user-arranged matable building elements to exhibit a
`customized shape and style depending on user game-inspired, ergonomic, or
`appearance preferences.” Ex. 1001, 1:29–34. The ’066 patent discusses one
`example in connection with Figure 1, which is reproduced below.
`
`
`2 Philo’s Home page, www.philohome.com (Exhibit 1017).
`3 Mario Ferrari et al., Building Robots with Lego® MindstormsTM: The
`ULTIMATE Tool for Mindstorms Maniacs!, published 2002 (Exhibit 1016).
`4 On page 7, the Petition identifies claims 1–8 as challenged based on Philo
`in combination with Building Robots. The Petition’s substantive discussion
`of this challenge, however, only discusses claim 7. Pet. 31. Consequently,
`the ground as instituted only included claim 7. See Inst. Dec. 20–21, 27.
`5 U.S. Patent Publication 2002/0196250 A1 (Exhibit 1020).
`
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`Case IPR2016-01187
`Patent 8,894,066 B2
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`
`Figure 1 shows manual controller 10, left-hand grip 30, and right-hand
`grip 32. Id. at 3:5–7, 3:18–20. Manual controller 10 includes main
`housing 14 and main casing 16, which “conformably fits around the side
`surface of main housing 14.” Id. at 3:5–7. Main casing 16 includes
`patterned surface portion 20, which includes cylindrical mating features or
`bosses 80. Id. at 3:11–12, 3:35–38. Each hand grip 30, 32 has
`corresponding recesses 84 for snugly attaching hand grips 30, 32 to bosses
`80 on main casing 16. Id. at 3:38–45.
`
`E. Illustrative Claim
`Claim 1 is independent. Each of the other challenged claims depends
`from claim 1. Claim 1 is illustrative and recites:
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`Case IPR2016-01187
`Patent 8,894,066 B2
`1. A method of facilitating user preference in creative design of
`a controller for manipulating images or symbols on a display, the
`controller having a housing with an exterior surface and an
`interior region confining electrical components for producing
`signals for manipulating image or symbols on the display,
`comprising
`providing a main casing configured to conformably fit around a
`portion of the exterior surface of and thereby receive the
`housing of the controller, the main casing having a patterned
`surface portion configured to support a set of building
`elements that are configurable for mating to the patterned
`surface portion; and
`providing in the set of building elements a subset of building
`elements that are matable to one another and configured for a
`user to build on the patterned surface portion of the main
`casing a customized replica of at least a portion of a play item
`and thereby transform the exterior surface of the housing of
`the controller to a customized shape and appearance in
`accordance with the user's preference.
`Ex. 1001, 6:52–7:4.
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). We presume a claim term carries its
`“ordinary and customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007) (citation and quotations omitted). This presumption, however, is
`rebutted when the patentee acts as his own lexicographer by giving the term
`a particular meaning in the specification with “reasonable clarity,
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`Case IPR2016-01187
`Patent 8,894,066 B2
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner and Patent Owner address the construction of a number of
`claim terms. Pet. 11–14; PO Resp. 7–13; Pet. Reply 1–7. For purposes of
`this decision, we address only certain terms and only to the extent necessary
`to resolve the parties’ disputes regarding the pending grounds of
`unpatentability. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`1. “conformably fit” and “mating”—claim 1
`Patent Owner asserts that the claim term “conformably fit” means
`“[j]oining of parts relying on matching forms and dimensions.” PO Resp. 8.
`Patent Owner asserts that the claim term “mating” means “[j]oining of
`building element(s) to the patterned surfaces using cylindrical bosses and
`recesses.” Id. Patent Owner concedes that, as suggested in our Institution
`Decision, these proposed constructions of “conformably fit” and “mating”
`do not make the terms mutually exclusive. Id. at 11. Patent Owner further
`asserts that “[n]onetheless, there remains a distinction between the terms
`with respect to joined elements. That is ‘mating’ relates to the joining of
`elements using respective cylindrical bosses and/or recesses. ‘Conformably
`fit[ting]’ relates to the joining of elements using the overall forms and
`dimensions of the elements.” Id. at 11–12.
`Petitioner offers certain observations regarding Patent Owner’s
`constructions. Pet. Reply 4–5. Petitioner notes Patent Owner’s concession
`that “conformably fit” and “mating” are not mutually exclusive. Id. at 4.
`Petitioner also advances that “conformably fit” and “mating” encompass
`
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`Case IPR2016-01187
`Patent 8,894,066 B2
`engagement of surfaces without fastening or connection. Id. at 5. Petitioner
`reasons that the ’066 patent “does not use the terms ‘join,’ ‘fasten,’ ‘link,’
`‘connect,’ or similar terms to describe the relationship between housing 14
`and casing 16 in Figure 1. Indeed, Figure 1 appears to show that the
`controller merely slides into casing 16 and is ‘joined’ by abutment rather
`than fastening or connection.” Id. at 4–5 (citing Ex. 1036 ¶¶ 36–37).
`In order to resolve the parties’ dispute, we need address only certain
`aspects of the broadest reasonable interpretations of “conformably fit” and
`“mating.” We first note that we are persuaded that these terms mean
`different things, but that they are not mutually exclusive in scope. See PO
`Resp. 10–12; Pet. Reply 4. Indeed, we note that under Patent Owner’s
`proffered constructions of the terms, “mating” constitutes one way to
`“conformably fit.” See PO Resp. 8; Pet. Reply 4. Additionally, Petitioner’s
`reasoning and evidence persuades us that “conformably fit” encompasses
`components that abut one another, and does not require fastening or
`connection of components. See Pet. Reply 4–5; Ex. 1001, 3:5–8, Fig. 1; Ex.
`1036 ¶¶ 36–37. Specifically, because we agree with Petitioner that the
`Specification and drawings of the ’066 patent indicate main casing 16
`conformably fits main housing 14 through abutment without fastening or
`connection, we are persuaded that the broadest reasonable interpretation of
`“conformably fit” encompasses such an arrangement. See Ex. 1001, 3:5–8,
`Fig. 1; Ex. 1036 ¶¶ 36–37.
`
`2. “manipulating”—claim 1
`Claim 1 recites “a controller for manipulating images or symbols on a
`display, the controller having . . . an interior region confining electrical
`components for producing signals for manipulating image or symbols on the
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`Patent 8,894,066 B2
`display.” Patent Owner asserts that “manipulating” means “[c]hanging in a
`skillful manner.” PO Resp. 8. In support of this, Patent Owner argues “[t]he
`dictionary definition of ‘manipulate’ is ‘to treat or operate with or as if with
`the hands or by mechanical means especially in a skillful manner.” Id. at 12,
`n.9 (citing Ex. 2027). Patent Owner also notes that the ’066 patent discusses
`“joysticks, game pads, steering wheels, guns, mice, remote devices for
`television, stored multi-media display and recording machines, cellular
`telephones, portable video game systems, and portable multi-media devices”
`as examples of “controllers for manipulating images or symbols.” Id. at 12–
`13 (citing Ex. 1001, 1:38–51). Arguing that such controllers allow skillfully
`changing symbols and images, Patent Owner asserts that the disclosed
`controller comports with “manipulating” meaning “changing in a skillful
`manner.” Id. at 13 (citing Ex. 2026 ¶ 29).
`Petitioner argues that Patent Owner has not demonstrated that the
`broadest reasonable interpretation of “manipulating” requires execution “in a
`skillful manner.” Pet. Reply 5. Petitioner asserts that the dictionary
`definition cited by Patent Owner clearly indicates that “in a skillful manner”
`constitutes an optional aspect of “manipulating.” Id. at 6 (citing Ex. 1036
`¶ 39). Petitioner further argues that Patent Owner’s assertion that the claim
`language requires execution “in a skillful manner” does not help resolve any
`dispute because 1) Patent Owner does not apply this construction, and 2) the
`word “skillful” is a term of degree, for which the ’066 patent provides no
`guidance. Id. at 6 (citing Ex. 1036 ¶ 40).
`Petitioner also asserts that the correct interpretation of “manipulate” is
`“changing with or as if with the hands, or by mechanical or electronic
`means.” Id. at 6 (citing Ex. 1036 ¶ 41). Petitioner asserts that “[t]his
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`Case IPR2016-01187
`Patent 8,894,066 B2
`construction bears fidelity to the core of Patent Owner’s cited dictionary
`definition while omitting the unnecessary and unclear ‘skillful manner,’”
`while also encompassing electronic controllers, in addition to mechanical.
`Id. at 6–7.
`Consistent with Petitioner’s assertions, the record evidence does not
`support a conclusion that the claim term manipulating requires execution in
`a skillful manner. We agree with Petitioner that Patent Owner’s dictionary
`definition of “manipulate” indicates that a “skillful manner” constitutes an
`optional aspect of the act of manipulating. See PO Resp. 12; Ex. 2027.
`Patent Owner’s observation of the mere possibility of using the controllers
`disclosed by the ’066 patent to change skillfully symbols and images does
`not persuade us that a person of ordinary skill in the art would understand
`from the ’066 patent that “manipulating” requires skillful execution.
`Petitioner persuades us that the broadest reasonable interpretation of
`“manipulating” includes “changing with or as if with the hands, or by
`mechanical or electronic means,” consistent with Patent Owner’s dictionary
`definition of “manipulate,” in combination with the ’066 patent’s disclosure
`of using electronic controllers. See Ex. 2027; Ex. 1001, 3:38–51.
`
`3. “manipulating images or symbols on a display”—claim 1
`Patent Owner also suggests that the claim language “manipulating
`images or symbols on a display” does not include user input triggering the
`display to change from showing one set of one or more images or symbols to
`showing another set of one or more images or symbols. See Tr. 20:4–21:6.
`We conclude that the record evidence does not support Patent Owner’s
`position. We find nothing in the plain language of the claim that would
`require any particular type of change to images or symbols on the display.
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`Furthermore, we note that the ’066 patent identifies, among others, “remote
`devices for television” as examples of “controllers for manipulating images
`or symbols on a visual display of a computer device.” Ex. 1001, 3:38–41.
`In view of this disclosure, and given that television remotes respond to user
`input to trigger the display to change from showing one set of one or more
`images or symbols to showing another set of one or more images or
`symbols, we conclude that the broadest reasonable interpretation of
`“manipulating images or symbols on a display” encompasses such
`functionality.
`
`4. “a hand grip section having a patterned surface portion . . . to
`provide a gripping portion on which the user can grasp during
`play activity”—claim 5
`Petitioner does not explicitly construe the language of claim 5. See
`Pet. 11–14, Pet. Reply 1–7. In its discussion of how Philo allegedly
`anticipates claim 5, however, Petitioner asserts that “[s]o long as Philo
`discloses a section that is capable of being grasped by a user, . . . then claim
`5 is met.” Pet. Reply 15. In asserting this, Petitioner emphasizes the claim’s
`recitation that the “hand grip section” provides a portion that the “user can
`grasp during play activity.” Id.
`The plain meaning of the language “a hand grip section” is structure
`designed to be gripped with the hand. Petitioner’s understanding of claim 5
`fails to give effect to this language. See Bicon, Inc. v. Straumann Co., 441
`F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward
`giving effect to all terms in the claim.”). The Specification of the ’066
`patent is consistent with the plain meaning of the language of claim 5, as the
`Specification discloses structure with a configuration and position to be
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`gripped during use of a controller. See In re Smith Int’l, Inc., 871 F.3d 1375,
`1382–83 (Fed. Cir. 2017) (explaining that the broadest reasonable
`interpretation is “an interpretation that corresponds with what and how the
`inventor describes his invention in the specification, i.e., an interpretation
`that is ‘consistent with the specification.’”) (quoting In re Morris, 127 F.3d
`1048, 1054 (Fed. Cir. 1997)). Specifically, the ’066 patent discloses left-
`hand grip 30 and right-hand grip 32, which are plainly shown in Figure 1 as
`structures designed to be gripped. Ex. 1001, 3:18–20, Fig. 1. Furthermore,
`the ’066 patent discloses that the position of the various components,
`including left-hand grip 30 and right-hand grip 32 is designed to allow a user
`to grip left-hand grip 30 and right-hand grip 32 while the user accesses
`various controls with the digits of his or her left and right hands. Id. at 3:18–
`25. Accordingly, contrary to Petitioner’s assertion, we determine that claim
`5 requires structure designed to be gripped by a user, not simply structure
`that can be gripped.
`
`B. Alleged Anticipation by Philo
`1. Overview of Philo
`Philo discloses, inter alia, a Rack and Pinion Steering Car (Ex. 1017,
`7–9) and a Brick Simon (Ex. 1017, 10–13). Philo’s Brick Simon includes an
`RCX assembled with other components. E.g., Ex. 1017, 12. Philo shows its
`Brick Simon in action in the figure reproduced below.
`
`11
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`Patent 8,894,066 B2
`
`
`Philo’s figure showing the Brick Simon in action shows a user pressing a
`key on the Brick Simon. See Ex. 1017, 13.
`
`2. Claim 1
`Petitioner explains how it believes Philo discloses the limitations of
`claim 1, citing to record evidence. Pet. 24–28; Pet. Reply 7–14. Petitioner
`indicates that Philo’s RCX corresponds to the “controller” recited in claim 1.
`See, e.g., Pet. 25. Petitioner indicates that certain other components
`assembled adjacent the RCX compose the “casing” recited in claim 1. See,
`e.g., Pet. 26–27; Pet. Reply 7–13. Petitioner indicates that certain other
`components, including “Simon color button elements and lid elements,”
`correspond to the “subset of building elements” recited in claim 1. See, e.g.,
`Pet. 27. Petitioner’s explanation and evidence demonstrate by a
`preponderance of the evidence that Philo’s Brick Simon anticipates claim 1.6
`
`6 Accordingly, we need not reach the question of whether Philo’s Rack and
`Pinion Steering Car anticipates claim 1.
`
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`We find Patent Owner’s counterarguments regarding claim 1 unpersuasive.7
`We now turn to a more detailed discussion of the parties’ disputes regarding
`whether Philo discloses certain terms recited in claim 1.
`
`a. “providing a main casing configured to conformably fit
`around a portion of the exterior surface and thereby receive
`the housing of the controller”
`The parties dispute whether Philo discloses “providing a main casing
`configured to conformably fit around a portion of the exterior surface of and
`thereby receive the housing of the controller.” We are persuaded that
`Petitioner has shown, by a preponderance of the evidence, that Philo’s
`disclosures regarding the Brick Simon disclose this. Pet. 24–27; Ex. 1017,
`10–13; Pet. Reply 7–14; Ex. 1036 ¶¶ 43–50; Ex. 1039. Petitioner asserts
`that Philo shows a casing abutting or contacting the RCX on at least its
`bottom, left, and right sides. Pet. Reply 11 (citing Ex. 1036 ¶ 47). Patent
`Owner concedes that Philo’s Brick Simon has Lego structure below and on
`the right and left sides of the RCX. Tr. 19:8–21; PO Resp. 18 (“At most,
`LEGO elements contact the gray bottom and one or two sides of the RCX,
`which is short of fitting around a portion of the controller.”). We find that
`this Lego structure forms a casing located on the lower side, the left side,
`and the right side of the RCX. Philo’s figure reproduced below (with
`
`
`7 Patent Owner asserts that Petitioner improperly presented certain new
`arguments and evidence in connection with its Reply. See Paper 80. As
`discussed in detail below, we find that Petitioner’s Reply included some
`procedurally improper new arguments and evidence. Except as noted below,
`we find the arguments and evidence presented in Petitioner’s Reply to be
`procedurally proper replies to the arguments presented in Patent Owner’s
`Response.
`
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`Case IPR2016-01187
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`annotations from Petitioner) show the lower portion of the casing extending
`across and adjacent the lower side of the RCX.
`
`The figure from Philo reproduced above shows the underside of the Brick
`Simon with annotations provided by Petitioner. Pet. Reply 10. Philo’s
`figure reproduced below (with annotations from Petitioner) shows the left
`side of the casing extending upward of the lower side, adjacent the left side
`of the RCX.
`
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`
`The figure from Philo reproduced above shows the left side of the Brick
`Simon with annotations from Petitioner. Id. at 9. Philo’s figure reproduced
`below (with annotations from Petitioner) shows the right side of the casing
`extending upward of the lower side, adjacent the right side of the RCX.
`
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`
`The figure from Philo reproduced above shows the right side of the Brick
`Simon with annotations from Petitioner. Id. at 11.
`We find that Petitioner has demonstrated by a preponderance of the
`evidence that Philo’s casing shown in the figures above is “configured to
`conformably fit around a portion of the exterior surface” of the RCX’s
`housing. We find that Philo meets this limitation in that its housing is
`configured to conformably fit around the lower, middle portion of the RCX.
`By extending adjacent the lower, left, and right side portions of the RCX,
`Philo’s casing is located on three sides of the lower, middle portion. Given
`this, we find that Philo’s casing is configured to fit around the lower, middle
`portion of the RCX.
`Patent Owner asserts that Philo’s disclosure includes, “[a]t most,
`LEGO elements contact the gray bottom and one or two sides of the RCX
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`brick, which is short of fitting around a portion of the controller.” PO Resp.
`18 (citing Ex. 2026 ¶ 34). Patent Owner does not provide persuasive
`evidence or reasoning in support of its argument that contacting the bottom
`and two sides of the RCX does not meet the disputed claim language.
`Without citing any supporting evidence, Ms. Knight testifies that “[m]erely
`contacting one or two sides of the RCX does not constitute conformably
`fitting around the controller.” Ex. 2026 ¶ 34. Asserting that Philo does not
`disclose structure adjacent the front of the RCX, Patent Owner suggests that
`Philo fails to disclose a casing that fits “around” the RCX. Tr. 19:23–20:2.
`Patent Owner asserts that the plain meaning of “around” includes “located or
`existing on all sides.” Id. at 16:17–20.
`We find these assertions unpersuasive because they are not
`commensurate in scope with the claim language, which only requires a
`casing configured to “fit around a portion of the exterior surface” (emphasis
`added), not entirely around the exterior surface. The lack of casing structure
`adjacent certain surfaces of the RCX, such the front of the RCX, does not
`negate that Philo’s casing is located on three sides of the lower, middle
`portion of the RCX.8
`
`
`8 To the extent that Patent Owner believes the claim language “around a
`portion of the exterior surface” requires the casing to extend 360 degrees
`around the exterior surface, Patent Owner has not advanced this claim
`construction, much less provided persuasive evidence or reasoning in
`support of such a construction. See PO Resp. 7–13. At the oral hearing,
`Patent Owner focused on Figure 1, which shows an example of casing 16
`configured to extend 360 degrees around the exterior surface of housing 14.
`See Tr. 15:22–16:16. But the record lacks evidence or reasoning supporting
`a conclusion that the broadest reasonable interpretation of claim 1 requires
`importing this one example from the disclosure of the ’066 patent as a
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`We are also persuaded that Philo’s casing is configured to fit
`“conformably.” Patent Owner asserts that “conformably fit” requires
`“relying on matching forms and dimensions.” PO Resp. 8. Petitioner asserts
`that Philo’s casing and RCX meet this construction because the RCX is
`joined to the casing with multiple surfaces of the RCX abutting or closely
`adjacent to and flush with surfaces of the casing. Pet. Reply 12 (citing Ex.
`1036 ¶¶ 49–50). Additionally, it is plain from Philo’s figures that the overall
`shape and dimensions of Philo’s casing matches the overall shape and
`dimensions of the lower, middle portion of the RCX. Regarding the forms,
`the lower portion of Philo’s casing extends parallel to the lower side of the
`RCX, and the left and right sides of Philo’s casing extend parallel to the left
`and right sides of the RCX. Regarding dimensions, Philo’s drawings
`demonstrate that the RCX fits closely between the left and right sides of
`Philo’s casing, showing matching dimensions.9 Accordingly, Petitioner has
`demonstrated by a preponderance of the evidence that Philo’s casing is
`“configured to conformably fit around a portion of the exterior surface of”
`the RCX.
`
`
`limitation into the claim, in the face of claim 1’s plain statement that the
`housing need only fit around a “portion” of the exterior surface. See
`SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004) (holding that “a particular embodiment appearing in the written
`description may not be read into a claim when the claim language is broader
`than the embodiment”).
`9 To the extent Patent Owner intends “matching . . . dimensions” to mean
`exactly matching, we find this unpersuasive. Patent Owner does not provide
`evidence or reasoning persuading us that the claim language would require
`exactly matching dimensions.
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`At the oral hearing, Patent Owner argued (for the first time) that Philo
`does not rely on matching forms and dimensions because the RCX has
`beveled portions not matched by the adjacent portions of Philo’s casing.
`Tr. 17:22–18:25. We find this late argument unpersuasive. Patent Owner’s
`contention that the claims require “relying on matching forms and
`dimensions” does not assert that every form and every dimension of the
`“casing” must match every form and every dimension of the claimed
`“housing.” See PO Resp. 8. Moreover, even if Patent Owner had asserted
`that every form and every dimension of the “casing” and “housing” must
`match, Patent Owner does not present reasoning or evidence that would
`persuade us that the claims require such an exact match. Accordingly,
`notwithstanding Patent Owner’s observation of minor discrepancies between
`the forms of Philo’s casing and the RCX, Petitioner has demonstrated by a
`preponderance of the evidence that the casing and RCX join to one another
`relying on matching overall forms and dimensions of the casing and the
`RCX in a manner such that the casing fits around the lower middle portion
`of the RCX.
`This finding is not negated by Patent Owner’s argument that the RCX
`and adjacent components appear to join one another through cylindrical
`bosses and recesses. See PO Resp. 19–20. Although the RCX and casing
`join one another at certain points via cylindrical bosses and recesses, we still
`find that the RCX and the casing also join one another relying on matching
`overall forms and dimensions.10 As noted in Section II.A.1 above, to the
`
`
`10 Consistent with Patent Owner’s concession that “conformably fit” and
`“mating” do not have mutually exclusive meanings, mating of the casing to
`the RCX via cylindrical bosses and recesses does not preclude the casing
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`Patent 8,894,066 B2
`extent Patent Owner suggests that the disputed claim language requires
`fastening or connection through the matching forms and dimensions, the
`arguments and evidence of record do not support such an interpretation.
`Additionally, even if the disputed claim limitation did require fastening or
`connection through matching forms and dimensions, we find that through a
`combination of overall matching forms and dimensions and the matching
`forms and dimensions of cylindrical bosses and recesses, Philo’s casing is
`joined around the lower, middle portion of the RCX in a secure fashion,
`relying on matching forms and dimensions.
`
`b. “manipulating images or symbols on a display”
`Petitioner and Patent Owner dispute whether Philo discloses
`“manipulating images or symbols” on the LCD screen on the top of the RCX
`in Philo’s Brick Simon. Petitioner asserts that Philo does, citing Philo’s
`disclosure that:
`3) Brick Simon will first ask for the play difficulty level. RCX
`LCD shows a walking 1234 pattern, waiting for a key to be
`pressed. . . .
`A separate high score is kept for each difficulty level.
`The chosen difficulty level is then displayed as 1111, 2222, 3333
`or 4444, the RCX plays a little tune and the game begins.
`4) Simon asks you to repeat a longer and longer color sequence
`(a new color is added at the end of sequence after you repeat it
`successfully on the keyboard). Its hand turns on the dial to show
`colors and plays a note (different for each color). You then have
`to key in the sequence in order. RCX LCD displays current
`
`
`from also conformably fitting via matching of overall shapes and
`dimensions.
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`Patent 8,894,066 B2
`sequence length (2 digits left) and high score sequence length to
`beat (2 digits right), separated by a dot.
`When you reach high score, Brick Simon plays a short tune
`to tell you…
`5) When you finally lose, either because you hit a wrong key or
`waited too long (doh sound), program is halted. Press RCX Run
`button to start a new game!
`Ex. 1017, 12–13; Pet. 25–26.
`Petitioner asserts that the walking pattern of 1234 shown on the
`display constitutes symbols. Pet. Reply 13 (citing Ex. 1036 ¶ 52). Petitioner
`asserts further that “Philo explicitly states that the displayed pattern of
`symbols changes in response to the user’s keypress to select a difficulty
`level. . . . That is, the user’s keypress provides input to the RCX, which then
`changes its display of symbols to confirm that input.” Id. (citing Ex. 1036
`¶ 53). Petitioner asserts that a person of ordinary skill in the art would
`understand this to constitute “changing with or as if with the hands, or by
`mechanical or electronic means,” and therefore “manipulating” symbols. Id.
`at 13–14 (citing Ex. 1036 ¶ 53).
`Patent Owner argues that Philo does not disclose manipulation of
`images or symbols. PO Resp. 20 (citing Ex. 2026 ¶ 35). Patent Owner
`contends that “[a]t most, Philo indicates that numbers are displayed without
`any ‘manipulating’ or change by the user.” Id. (citing Ex. 1017, 11–12). At
`the oral hearing, Patent Owner elaborated that “[w]hat’s happening [in
`Philo] is the image that’s displayed is removed and replaced by another
`image.” Tr. 21:1–2. Patent Owner likens this to the situation where an
`image is removed and a new image displayed if “you turn off the power,
`remove the batteries or anything else.” Id. at 20:9–10. Patent Owner argues
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`Patent 8,894,066 B2
`that “[i]n most video games, you may have a figure and you push a joystick
`and that figure moves. That’s manipulating an image as opposed to hitting a
`button and that image is erased and replaced by another image.” Id. at 21:2–
`5.
`
`Petitioner’s assertions and evidence persuade us that a person of
`ordinary skill in the art would understand Philo’s RCX discloses “a
`controller for manipulating images or symbols on a display,” as recited in
`claim 1. Pet. 25–26; Pet. Reply 13–14; Ex. 1017, 10–13; Ex. 1036 ¶¶ 51–
`53. We find that Philo discloses this at least in its discussion of the process
`of selecting a difficulty level. Ex. 1017, 12; Ex. 1036 ¶¶ 51–53. A person
`of ordinary skill in the art would understand Philo as disclosing that when
`the RCX’s LCD display shows a walking 1234 pattern, a person pressing a
`button to specify a difficulty level of 1, 2, 3, or 4 triggers the RCX changing
`the display to show the specified difficulty level in symbols, i.e., “1111,
`2222, 3333 or 4444.” Ex. 1017, 12; Ex. 1036 ¶¶ 51–53. We are persuaded
`that this discloses changing symbols on the display “with or as if with the
`