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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`_____________
`
`Case No. IPR2016-01407
`Patent No. 6,928,433
`_____________
`
`
`
`
`
`RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATIONS ON
`CROSS-EXAMINATION
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`
`
`Paper No. __
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`
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`
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`Petitioners submit this Response to the Motion for Observations on Cross-
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`Examination filed by Patent Owner (“Creative”). Paper No. 33.
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`A. Dr. Bederson Testified that the ’433 Patent Did Not Present Any
`New Solution to Any Problem.
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`Response to Observation Nos. 1 and 2: These observations are irrelevant
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`because the inventor’s identification of a purported problem need not be the basis,
`
`in an obviousness analysis, for combining prior art references. Further, these
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`observations mischaracterize Dr. Bederson’s full testimony. The first observation
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`omits the following portion of the cited testimony: “I certainly do disagree to the
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`extent that [Mr. Bear] claimed that there was any novelty.” Ex. 2045 at 20:14-18.
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`Consistent with that testimony and paragraph 3 of his reply declaration (Ex. 1020),
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`Dr. Bederson testified at deposition that the ’433 patent (1) described a problem
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`that was known in the prior art and (2) did not present any new solution to that
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`known problem. Ex. 2045 at 10:22-24; 13:8-9; 19:22-20:8; 140:16-24. In both
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`observations, Creative implies that Dr. Bederson agreed with Mr. Bear that the
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`’433 patent contributed to the field by solving a problem; however, Dr. Bederson
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`explicitly disagreed and testified that the ’433 patent identifies a known problem
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`and “merely recycled existing functionality according to known uses of that
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`functionality” Id. at 20:1-4.
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`
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`1
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`
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`B. Dr. Bederson Accurately Analyzed ISO 9241-14.
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`Response to Observation No. 3: This observation mischaracterizes Dr.
`
`Bederson’s full testimony by implying that Dr. Bederson agreed that the ISO 9241-
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`14 standard is limited in “scope” to “typical office tasks.” To the contrary, Dr.
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`Bederson testified that the “Scope” section of ISO 9241-14 “is over a page long
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`and describes in much more detail the range of things that this standard applies to”
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`and that “there’s no question that it would be clear that the vast majority of these
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`recommendations would be highly relevant to all uses of menu dialogues on video
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`display terminals [(“VDTs”)].”1 Ex. 2045 at 28:17-29:17; see also id. at 30:10-22;
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`31:18-32:2. Indeed, Dr. Bederson specifically testified that it was “quite clear”
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`that “these [design principles] actually apply to a much broader set of interface
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`designs” and were not “exclusive to office tasks.” Id. at 33:8-16; see also id. at
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`34:1-15; 34:16-35:11; 36:6-20; 141:1-14. Moreover, Dr. Bederson explained that
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`“mobile devices” and “handheld electronic devices” such as the Palm Pilot, which
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`is a VDT, were used in office work before 1999. Id. at 139:3-140:3.
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`Response to Observation No. 4: The observation is misleading and
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`incorrect. The observation’s assertion that a POSA “would not have relied on ISO
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`9241-14’s disclosures … in light of the document’s failure to … disclose any
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`applicability to portable devices” is contradicted by Dr. Bederson’s testimony.
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`1 All emphasis herein added unless noted otherwise.
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`2
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`
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`First, Creative selectively quotes from the cited testimony, omitting Dr. Bederson’s
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`explanation that “an earlier section of this standard described VDTs, or visual
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`display terminals, in a fairly inclusive manner.” Ex. 2045 at 38:8-16. Second, Dr.
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`Bederson testified that the “earlier section of the standard” (“Part 1,” the “General
`
`Introduction”) defined “video display terminals … without referring to the specific
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`size” and therefore was not “restricted to any particular size.” Id. at 37:5-17.
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`Finally, Dr. Bederson testified that a POSA “would have considered the hierarchal
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`menu and related recommendations of the ISO 9241-14 applicable to devices with
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`small screens” and would “have considered those recommendations applicable to
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`portable or handheld devices.” Id. at 141:1-14.
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`Response to Observation No. 5: This observation is misleading and
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`incorrect. The observation’s assertion that ISO 9241-14 is limited to input devices
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`for conventional desktop computers is contradicted by the text of ISO 9241-14 and
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`by Dr. Bederson’s full testimony. Contrary to Creative’s assertion, ISO 9241-14
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`contemplates that its teachings apply to input devices other than alphanumeric
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`keyboards, function keys, and cursor keys. Ex. 1023 at 1 (“other [input] devices
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`are not excluded”); Ex. 2045 at 41:18-21. Indeed, ISO 9241 has an entire section
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`dedicated to nonkeyboard input devices. Ex. 1023 at iv (“Part 9: Requirements for
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`nonkeyboard input devices”). This observation also mischaracterizes Dr.
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`Bederson’s full testimony by omitting Dr. Bederson’s testimony that such input
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`3
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`
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`devices were “present on portable computers” (Ex. 2045 at 42:2-8) and were
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`present on handheld portable devices in the 1990s (id. at 43:23-44:8). Further, as
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`discussed above in the Responses to Observations Nos. 3 and 4, Dr. Bederson
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`explained why a POSA would have known to apply the teachings of ISO 9241-14
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`to portable or handheld devices.
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`Response to Observation No. 6: This observation is misleading and
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`incorrect. The observation’s assertion that a POSA “would not have found ISO
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`9241-14 applicable to … a user interface for a portable media player” is
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`contradicted by Dr. Bederson’s full testimony. As discussed above in the
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`Responses to Observations Nos. 3 and 4, Dr. Bederson explained why a POSA
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`would have considered the teachings of ISO 9241-14 applicable to handheld
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`devices. See also Ex. 2045 at 49:22-50:7 (applicable to “controlling music”);
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`50:14-51:1 (same for “media content and music”). Further, the observation’s
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`assertion that articles cited in ISO 9241-14 relate to desktop computers ignores Dr.
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`Bederson’s testimony that “a focus in the 1980’s of [human-computer interface]
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`research [was] to go beyond specific design solutions to understanding general
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`principles” (id. at 46:22-47:5), which is further supported by one author “doing
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`work on touchscreen mobile interfaces” in the mid-90’s (id. at 45:17-46:10) and
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`Dr. Bederson’s experience that disclosures for large screen user interfaces are
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`directly applicable to smaller screens (id. at 46:15-48:8). See also id. at 56:5-57:1
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`4
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`(ISO 9241-14 is “highly relevant” because it “described broadly applicable design
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`principles.”). Also, the observation’s assertion that ISO 9241-14 is focused on
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`“desktop computers” is not supported by Dr. Bederson’s testimony that he could
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`not determine the content of the cited papers based solely on the titles as the
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`standard lists “several dozen over six pages,” and noting some “are over a hundred
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`pages long.” Id. at 48:24-49:12.
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`Response to Observation No. 7: This observation mischaracterizes Dr.
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`Bederson’s full testimony. The observation’s assertion that a POSA would not
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`have found ISO 9241-14 applicable because it “could reduce usability if applied to
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`a portable device” is not supported by the cited testimony. As Dr. Bederson
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`explained, “the authors of [ISO 9241-14] made it quite clear that there’s a wide
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`variety of context that this could apply to.” Ex. 2045 at 86:5-24. Dr. Bederson’s
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`full response, from which Creative misleading quoted a single line, was that there
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`could be a “hypothetical potentiality” of degradation in mobile environments but
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`he thought that “in fact, it was written quite carefully based on … dozen of very
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`thoughtful publications that were written with a very general perspective.” Id. at
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`87:7-22. Moreover, Dr. Bederson testified that ISO 9241-14’s menu structures
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`would “apply quite well [even] to mobile devices.” Id. at 88:3-20. The
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`observation also misleadingly omits Dr. Bederson’s testimony that explains why a
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`POSA would have applied the teachings of ISO 9241-14 to portable devices
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`5
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`(discussed in Response to Observation No. 6) and that the ISO 9241-14’s teachings
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`were applicable to portable devices at the time of invention as well as today. Id. at
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`87:7-12 (ISO 9241-14 was confirmed (or readopted) without any changes in 2008);
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`87:13-18 (The document “really stands the test of time … because there’s nothing
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`… that stood out … even 20 years later as being incorrect.”).
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`C. Dr. Bederson Correctly Analyzed Seidensticker.
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`Response to Observation No. 8: This observation improperly raises a new
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`argument, never before articulated by Creative in this proceeding, that
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`Seidensticker “teaches away” from a menu option that can be accessed in two
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`different ways because one of the embodiments described in Seidensticker has four
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`buttons. This observation is also misleading and mischaracterizes Dr. Bederson’s
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`full testimony. Dr. Bederson testified that “the menu option [of the Birrell-
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`Seidensticker combination] could” function in two different ways by (1) having
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`one multi-function button, (2) adding an additional button, or (3) using a rocker
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`button. Ex. 1020 at ¶ 14; see also Ex. 2045 at 69:22-70:16, 133:20-135:22. The
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`observation’s assertion that Seidensticker teaches away from increasing the
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`number of buttons ignores that two of Dr. Bederson’s three alternatives do not
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`change the number of buttons and is contradicted by Seidensticker’s disclosure
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`that it is not limited to four buttons. Ex. 2045 at 135:23-137:2 (discussing
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`Seidensticker’s cellular phone embodiment, and including “So is the disclosure of
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`6
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`
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`the Seidensticker prior art reference limited to only four buttons?” “No, it’s not.”);
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`see also id. at 59:10-19 (“No question” that a POSA “would understand that you
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`could also have five buttons.”); 60:20-24. Further, the observation’s assertion that
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`Dr. Bederson did not analyze usability tradeoffs ignores Dr. Bederson’s testimony
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`that increasing the number of buttons “could help the interface usability” (id. at
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`61:7-12) and that a POSA would have added a fifth button as “a trivial
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`implementation detail” (id. at 60:3-24). See generally id. at 60:3-62:4.
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`Response to Observation Nos. 9 and 10: These observations improperly
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`raise new arguments that Seidensticker’s disclosure of a multi-operation button
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`cannot be applied to Seidensticker’s Action button and that Seidensticker’s multi-
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`operation disclosure is limited to scrolling at different speeds. These observations
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`are irrelevant because the instituted grounds are based on the Birrell-Seidensticker
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`combination and not anticipation by Seidensticker. Ex. 2045 at 131:5-23 (Birrell
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`explicitly discloses playing a CD or drilling down to see the contents of that CD).
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`Further, Creative selectively quoted Dr. Bederson’s responses and the full
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`testimony contradicts Creative’s arguments. Dr. Bederson testified that
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`“Seidensticker discloses this general idea that a single button can be used for
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`multiple operations” and that “this disclosure described its application to the Up
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`and Down button, but clearly a [POSA] would understand that same technique
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`could apply to any of the buttons.” Id. at 64:4-23; see also id. at 63:5-64:3.
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`7
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`Further, Dr. Bederson testified that “with that disclosure [of scrolling], a [POSA]
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`would understand that that same approach of using one button to control two
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`functions could be applied in other situations, as well.” Id. at 65:9-66:4 (also
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`noting that such a modification “would be well within the knowledge of” a POSA);
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`see also id. 66:24-67:17; 131:24-133:19.
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`Response to Observation No. 11: This observation’s assertion that
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`Seidensticker’s disclosure of a multi-operation button to scroll faster “teaches
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`away” from ISO 9241-14’s hierarchical menu structures is irrelevant because ISO
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`9241-14 is not one of the instituted grounds. Further, that assertion is an
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`improperly-raised new argument. The cited testimony also does not support the
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`observation because Dr. Bederson stated that Seidensticker’s faster scrolling had
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`only “some ability” to respond to the design problem. Contrary to the
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`observation’s assertion that Seidensticker teaches away, Dr. Bederson testified that
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`Seidensticker’s primary mechanism for moving through data, like ISO 9241-14, “is
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`the hierarchal navigation and user interface for supporting that hierarchal
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`navigation, which is at the core of the interface design.” Ex. 2045 at 81:24-83:15
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`(also noting that Seidensticker teaches that the “user should be able to at least
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`scroll through lines” but that scrolling is a “secondary” navigation mechanism).
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`Response to Observation No. 12: This observation improperly raises a new
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`argument that Seidensticker’s Figure 3 “teaches away” from (rather than merely
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`8
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`that Seidensticker by itself does not explicitly disclose, see Patent Owner Response
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`at 37-39) a user interface designed to allow a multifunction menu item that can
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`both display another menu or execute an application. This observation is also
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`irrelevant because the instituted grounds are based on the Birrell-Seidensticker
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`combination and not the teachings of Seidensticker alone. Further, this observation
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`is incorrect because as Dr. Bederson explained a POSA would rely on the
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`Seidensticker’s full disclosure, not just on Figure 3, to understand that a POSA
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`“can use these events [such as a predetermined time interval] to control any aspect
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`of the user interface … includ[ing] navigating up and down the hierarchy.” Ex.
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`2045 at 74:23-77:19; see also id. at 71:23-73:17 (Figure 3 is only a preferred
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`embodiment and a POSA would “use one of these other set of design options” to
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`both display another menu or execute an application.).
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`Response to Observation No. 13: This observation improperly raises a new
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`argument that Seidensticker’s use of four buttons “teaches away” from adding
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`additional buttons because four buttons adds to the versatility of the compact user
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`interface. This observation is irrelevant because the Birrell-Seidensticker
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`combination can achieve the multifunction menu item without adding buttons. See
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`Reponses to Observations Nos. 9 and 10. The observation is also incorrect because
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`Seidensticker is not limited to four buttons and thus does not teach away from
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`adding buttons. Ex. 2045 at 135:23-137:2; see also id. at 59:10-19; 60:20-24;
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`9
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`Response to Observation No. 8. Further, the observation mischaracterizes the cited
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`testimony. Dr. Bederson agreed that Seidensticker column 22, lines 27 to 35,
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`describes that the Nomad device provided versatility in a compact user interface
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`with only (i.e., with as few as) four buttons. Id. at 78:14-79:12. Thus, as Dr.
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`Bederson explained, a POSA could add buttons without taking up more space and
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`increase versatility (allowing a menu item to both display another menu or execute
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`an application) while maintaining the same compact user interface. Id. at 78:14-
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`79:22; see also id at 80:23-81:23.
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`D. Dr. Bederson Correctly Analyzed Looney’s Use of Playlists.
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`Response to Observation No. 14: This observation improperly raises a new
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`attorney argument that Looney “adopts a common syntax of using a single word to
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`identify user-initiated commands” including Play block 532. The observation is
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`also not supported by the cited testimony—in the cited testimony, Dr. Bederson
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`was not asked if Play block 532 was a user-initiated command or if it shared a
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`common syntax with Now, Pick, and Next. When asked those questions, Dr.
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`Bederson’s consistent and unrebutted expert testimony is that Play block 532 was
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`not a user-initiated command and had a different syntax than Now, Pick, and Next.
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`Ex. 2045 at 89:8-18 (Play block 532 is not a user-triggered action); 94:2-95:1
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`(number of differences in syntax) 98:16-99:23 (functionality of Play block 532 is
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`different than Now); 99:10-18 (same); 102:1-104:9 (column 10 explains that block
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`10
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`
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`532 is not a user-initiated command); 105:21-107:6 (same); 111:9-24 (several
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`blocks in Figure 6 like Play block 532 are not user-initiated). Indeed, while Next
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`by itself is a single word (id. at 91:23-92:1), Dr. Bederson specifically testified that
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`it had a separate parenthetical syntax to identify the user-initiated command—
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`“NEXT (DOUBLE CLICK PLAYLIST).” Id. at 112:1-20.
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`Response to Observation No. 15: This observation improperly raises a new
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`attorney argument that the Play block 532 must be user-initiated because Now in
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`Figure 6 of Looney plays music but does not flow through Play block 532. This
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`attorney argument is contradicted by Dr. Bederson’s unrebutted expert testimony
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`that Play block 532 is not a user-initiated command. Ex. 2045 at 96:12-16; 102:1-
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`104:9; 105:21-107:6; 111:9-24; see also Ex. 1009 at 10:60-67. Further, this
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`observation is misleading and is not supported by the cited testimony. As Dr.
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`Bederson explained, Now, unlike Pick and Next, does not flow through Play block
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`532. Ex. 2045 at 95:9-19. Further, Dr. Bederson testified that Now (block 504)
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`flows through block 506 which, unlike Play block 532, interrupts and immediately
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`plays the selection. Id. at 102:18-103:1; see also Ex. 1009 at 10:35-44; Figure 6 at
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`block 504 (“INTERRUPT CURRENT SONG AND PLAY SONG SELECTED”).
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`Contrary to the observation’s assertion, Now flows through a different playing
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`block 504 than Pick and Next because Now interrupts in addition to playing music.
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`Ex. 2045 at 102:18-103:1.
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`11
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`Response to Observation No. 16: This observation improperly raises a new
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`attorney argument that Figure 6 of Looney cannot have two consecutive non-user
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`initiated actions. This attorney argument is contradicted by Dr. Bederson’s
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`unrebutted expert testimony that both Play block 532 and block 508 are not user
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`commands. Ex. 2045 at 96:1-16; 102:1-104:9; 105:21-107:6; 111:9-24. Dr.
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`Bederson’s testimony is consistent with Looney’s description of Figure 6 that Play
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`block 532 is software code to begin playing a playlist song while block 508 is
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`software code to continue playing music according to the playlist’s order. Ex.
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`1009 at 10:60-67. Creative misleadingly argues that Dr. Bederson cannot explain
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`the difference between blocks 532 and 508 after Creative only asked Dr. Bederson
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`if he explained the difference in his reply declaration. Ex. 2045 at 96:17-22.
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`Response to Observation No. 17: The observation improperly raises a new
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`attorney argument that because Now button 502 of Figure 14 initiates Now block
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`504 of Figure 6 then the different numbering for Play button 601 of Figure 14 and
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`Play block 532 of Figure 6 is irrelevant. The observation is not supported by the
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`cited testimony, because Dr. Bederson explained that the different numbering of
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`play button 601 and Play block 532 was one of “multiple reasons” why it was
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`incorrect for Creative to equate Play block 532 with Play button 601. The
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`observation also mischaracterizes Dr. Bederson’s full, unrebutted expert testimony
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`that column 10 of Looney explicitly describes Now button 502 as triggering Now
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`12
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`block 504 but describes Play block 532 as software code without a connection to
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`Play button 601. Ex. 2045 at 98:16-99:18 (functionality of Play block 532 is
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`different than Now); 107:7-20 (Pick button does not control Pick block 516);
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`108:12-109:10 (actions are not necessarily triggered by buttons with the same
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`name); see also Ex. 1009 at 10:40-41 (describing Now button 502 controlling now
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`block 504); 10:60-67 (describing that placing the song at the top of the play list
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`(block 520) automatically plays the song through play block 532).
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`Response to Observation No. 18: The observation is misleading and
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`incorrect. The observation’s assertion that there is no express disclosure that Play
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`block 532 is not controlled by Play button 601 relies on selectively quoting from
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`Dr. Bederson’s response because the assertion is contradicted by his full testimony.
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`Although Dr. Bederson testified that Figure 6 does not expressly distinguish
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`between play button 601 and play block 532, Dr. Bederson explained that “Figure
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`6 doesn’t stand on its own” and that “column 10 describes” that play block 532 is
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`not controlled by Play button 601. Ex. 2045 at 98:16-99:18; see also Ex. 1009 at
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`10:40-41, 10:60-67.
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`Response to Observation No. 19: This observation is misleading and
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`incorrect. As discussed in Responses to Observations Nos. 14-18, Dr. Bederson
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`testified that Play block 532 is not controlled by play button 601. See also Exhibit
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`2045 at 137:11-138:21. The observation also mischaracterizes Dr. Bederson’s full
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`13
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`testimony by selectively quoting questions about the figures while misleadingly
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`omitting Dr. Bederson’s testimony regarding the text of Looney that explains how
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`the figures and elements interact. Id. at 102:1-16 (“Figure 6 is a very high-level
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`representation of the functionality of Screens 2 and 3” and column 10 “explains
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`how this works” helping “a [POSA] to understand what the interactions between
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`the different elements are.”). Specifically, Dr. Bederson testified that column 10 of
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`Looney explains that Now button 502 controls Now block 504 whereas play block
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`532 is not a user-initiated command but plays music as an indirect result of the user
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`double-clicking on the search list. Id. at 102:18-104:9; see also Ex. 1009 at 10:40-
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`41, 10:60-67.
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`Response to Observation No. 20: This observation improperly raises a new
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`attorney argument that Looney “consistently uses the term ‘command’ to refer to
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`user-initiated actions.” This observation is misleading and incorrect. As discussed
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`in Responses to Observations Nos. 14-19, Dr. Bederson testified, and explained
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`why, Play block 532 is not a user-initiated command. See also Exhibit 2045 at
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`137:11-138:21. The observation also mischaracterizes Dr. Bederson’s full
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`testimony that a command does not require “user initiation” because it can be “the
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`result of [the] flow” from an earlier user-initiated command. Id. at 106:13-107:6;
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`110:5-111:8. Specifically, Dr. Bederson testified that a number of commands in
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`Figure 6 “are not directly user triggered” as shown by the flow from Mix Up block
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`14
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`540 (which is “triggered by clicking the mix up user interface button”) which
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`indirectly triggers block 542 and play block 532. Id. at 111:9-24. Further,
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`contrary to the observation’s assertion, Looney does not use the term “command”
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`to refer to user-initiated actions but instead explicitly identifies user-triggered
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`actions. Id. at 92:5-11; Ex. 1009 at 10:59-65 (“If the mix up command is entered
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`by the user.”); 10:48-49 (“If the play list song is ‘clicked’ twice as shown in block
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`519.”); Figure 6 at block 519 (“NEXT (DOUBLE CLICK PLAYLIST)); block
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`516 (PICK (DOUBLE CLICK SEARCHLIST)).
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`Dated: August 7, 2017
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`By:
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`Respectfully submitted,
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`/Andrew J. Tibbetts/
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`Michael N. Rader, Reg. No. 52,146
`Randy J. Pritzker, Reg. No. 35,986
`Andrew J. Tibbetts, Reg. No. 65,139
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000 / Fax: 617-646-8646
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`15
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`I certify that on August 7, 2017, I will cause a copy of the foregoing
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`document, including any exhibits or appendices referred to therein, to be served via
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`electronic mail, as previously consented to by Patent Owner, upon the following:
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`Date: August 7, 2017
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`Jonathan D. Baker
`Russell Swerdon
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`JBaker@farneydaniels.com
`russ_swerdon@creativelabs.com
`CreativeZen@farneydaniels.com
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`/MacAulay Rush/
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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