Paper No. _____
`Date Filed: March 20, 2017
`
`Filed on behalf of: Koninklijke Philips Electronics N.V.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`GOOGLE INC.
`Petitioner,
`v.
`KONINKLIJKE PHILIPS ELECTRONICS N.V.
`Patent Owner.
`________________
`
`Case IPR2017-00386
`U.S. Patent No. RE44,913
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`EXHIBIT LIST .........................................................................................................vi
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`BACKGROUND .............................................................................................3
`
`A.
`
`B.
`
`THE RE’913 PATENT .........................................................................3
`
`THE RE’913 PATENT CLAIMS .........................................................8
`
`III.
`
`PERSON OF ORDINARY SKILL .................................................................9
`
`IV. CLAIM CONSTRUCTION ..........................................................................10
`
`V.
`
`LEGAL STANDARDS .................................................................................14
`
`A.
`
`Obviousness.........................................................................................14
`
`VI.
`
`THE BOARD SHOULD NOT INSTITUTE REVIEW ON
`EITHER OF GROUNDS 1-2 ........................................................................16
`
`A. WASTE OF BOARD RESOURCES..................................................16
`
`1.
`
`2.
`
`Petitioner Relies on Substantially the Same Prior
`Art Previously Presented to the Office .....................................16
`
`Petitioner Improperly Presents Multiple
`Redundant Grounds ..................................................................21
`
`B.
`
`GROUND 1 – SAKATA II.................................................................24
`
`1.
`
`2.
`
`3.
`
`Petitioner’s Proposed Modification Contradicts
`the Express Teaching of Sakata II ............................................26
`
`Petitioner’s Reason for Modifying Sakata II to
`Avoid an “Inefficiency” Ignores the Express
`Teaching of Sakata II................................................................32
`
`Petitioner Fails to Provide Any Explanation as to
`How a POSA Would Have Modified Sakata II........................34
`
`i
`
`

`

`C.
`
`GROUND 2 – SAKATA II + BUXTON............................................37
`
`1.
`
`2.
`
`Buxton Does Not Teach “returning the keypad to
`the default state” from a Second State as Claimed ...................39
`
`There Would Have Been No Reason for a POSA
`to Modify Sakata II Using Buxton, As Proposed ....................45
`
`a.
`
`b.
`
`Petitioner’s Proposed Combination
`Contradicts Sakata II’s Stated Purpose...........................45
`
`Buxton’s Method is Inapplicable to Sakata II................47
`
`VII. CONCLUSION..............................................................................................49
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Am. Honda Motor Co., Inc. v. Blitzsafe Texas, LLC,
`IPR2016-01473, Paper 9 (P.T.A.B. Jan. 24, 2017) ......................................37
`
`Black & Decker, Inc. v. Positec USA, Inc., RW,
`646 Fed. App’x 1019 (Fed. Cir. 2016) .........................................................33
`
`Canon Inc. v. Intellectual Ventures I LLC,
`IPR2014-00535, IPR2014-00536, IPR2014-00537,
`Paper 9 (P.T.A.B. Sept. 24, 2014) ................................................................23
`
`Daifuku Co., Ltd. v. Murata Machinery, Ltd.,
`IPR2015-00083, Paper 63 (P.T.A.B. May 3, 2016) ............................... 36, 47
`
`Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ................................................. 14, 15, 32, 33
`
`DirecTV, LLC v. Qurio Holdings, Inc.,
`IPR2015-02006, Paper 6 (P.T.A.B. Apr. 4, 2016) .......................................37
`
`Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) ....................................................................33
`
`Illumina, Inc. v. Trs. of Columbia Univ. in the City of New York,
`IPR2012-00006, Paper 43 (P.T.A.B. May 10, 2013) ....................................24
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ....................................................................10
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ....................................................................14
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................... 36, 47
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ....................................................................33
`
`Innovative Envtl. Techs., Inc. v. Peroxychem LLC,
`IPR2016-00198, Paper 12 (P.T.A.B. May 16, 2016) ...................................37
`
`iii
`
`

`

`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......................................................................................37
`
`Liberty Mutual Insur. Co. v. Progressive Casualty Insur. Co.,
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012) ....................... 21, 22, 23
`
`Microboards Tech., LLC v. Stratasys Inc.,
`IPR2015-00287, Paper 13 (P.T.A.B. May 28, 2015) ....................................16
`
`Neil Ziegman, N.P.Z., Inc. v. Stephens,
`IPR2015-01860, Paper 11 (P.T.A.B. Feb. 24, 2016) ....................................16
`
`Petroleum Geo-Services Inc. v. WesternGeco LLC,
`IPR2014-00689, Paper 32 (P.T.A.B. Dec. 15, 2014)....................................37
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 Fed. App’x 755 (Fed. Cir. Jan. 27, 2015)...............................................29
`
`Ricoh Co., Ltd. v. Quanta Computer Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) .....................................................................14
`
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`IPR2015-00155, Paper 30 (P.T.A.B. Apr. 7, 2016) ......................................34
`
`Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc.,
`817 F.3d 1293 (Fed. Cir. 2016) .....................................................................24
`
`Silver Star Capital, Inc. v. Power Integrations, Inc.,
`IPR2016-00736, Paper 11 (P.T.A.B. Aug. 26, 2016)....................................37
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) ............................. 15, 24
`
`Toyota Motor Corp. v. Am. Vehicular Sciences LLC,
`IPR2013-00423, Paper 14 (P.T.A.B. Jan. 13, 2014) .....................................23
`
`TRW Auto. US LLC v. Magna Elecs. Inc.,
`IPR2014-00293, Paper 19 (P.T.A.B. Jul. 1, 2014)........................................15
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ....................................................................14
`
`iv
`
`

`

`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ......................................................................10
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, Paper 12 (P.T.A.B. Apr. 8, 2013) ............................... 15, 24
`
`Statutory Authorities
`
`35 U.S.C. § 325(d) ...............................................................................................2, 16
`
`Rules anad Regulations
`
`37 C.F.R. § 42.1.......................................................................................................16
`
`37 C.F.R. § 42.100(b) ..............................................................................................10
`
`37 C.F.R. § 42.104(b)(4) .........................................................................................15
`
`37 C.F.R. § 42.104(b)(5) .........................................................................................15
`
`37 C.F.R. § 42.108(a) ..............................................................................................21
`
`37 C.F.R. § 1.98(a)(3)..............................................................................................18
`
`v
`
`

`

`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`2001
`2002
`2003
`2004
`
`U.S. Patent No. 5,660,488 to Miller
`U.S. Patent No. 5,128,672 to Kaehler
`U.S. Patent No. 464,892 to Prentice
`Microsoft.com, Capitalization, Uppercasing, and
`Lowercasing, available at
`http://msdn.microsoft.com/en-us/globalization/
`mt662330.aspx (retrieved Feb. 25, 2017)
`
`vi
`
`

`

`Koninklijke Philips Electronics N.V. (“Patent Owner”) submits this
`
`Preliminary Response to the Petition of Google Inc. (“Petitioner”) seeking inter
`
`partes review (“IPR”) of U.S. Patent No. RE44,913 (“the RE’913 patent”).
`
`I.
`
`INTRODUCTION
`
`Patent Owner respectfully requests that the Board deny the Petition for IPR
`
`against the RE’913 patent, as Petitioner has failed to establish a reasonable
`
`likelihood that it will prevail in showing that the challenged claims are invalid.
`
`Petitioner proposes two different grounds based on obviousness, both of
`
`which rely on the same primary reference, Japanese Unexamined Patent
`
`Application Publication No. 2000-148366 (“Sakata II”). Petitioner’s first proposed
`
`ground asserts that the challenged claims are obvious over Sakata II alone, and
`
`Petitioner’s second proposed ground asserts that the challenged claims are obvious
`
`over Sakata II in view of U.S. Patent No. 6,094,197 (“Buxton”).
`
`As Petitioner acknowledges, Applicant submitted the subject matter of
`
`Japanese Unexamined Patent Application Publication No. 2000-56912 (“Sakata I”)
`
`to the Patent Office during the reissue prosecution. Petitioner has effectively
`
`conceded that previously submitted Sakata I has substantially the same disclosure
`
`as Sakata II, including the disclosure relied upon by Petitioner here. Respectfully,
`
`the Board should exercise its discretion to terminate this proceeding under 35
`
`- 1 -
`
`

`

`U.S.C. § 325(d) as both grounds asserted in this Petition rely upon “the same or
`
`substantially the same prior art” that was previously “presented to the Office.”
`
`Moreover, both Sakata II and Buxton fail to disclose the claimed limitation
`
`of “returning the keypad to the default state” following selection of a “secondary
`
`character” displayed in a “second state.” Such secondary characters in the second
`
`state are distinct from primary characters displayed in the default state. Petitioner
`
`acknowledges that the feature of returning to a default state after selection of a
`
`secondary character is missing from Sakata II, but asserts that it would have been
`
`“obvious” from Sakata II alone, based on conclusory assertions of “efficiency.”
`
`However, as detailed below, those conclusory assertions are contradicted by Sakata
`
`II’s stated goal of improving efficiency by replacing special keys with frequently
`
`used alternate characters.
`
`With respect to the second ground, Buxton cannot supply the limitation
`
`missing from Sakata II. As an initial matter, Buxton does not disclose the claimed
`
`secondary characters. If anything, Buxton discloses secondary “functions” as
`
`Buxton’s keypad allows access to a pop up menu of functions such as “shift” and
`
`- 2 -
`
`

`

`“control” and not characters such as “a” and “b.” Thus, Buxton cannot remedy the
`
`deficiencies of Sakata II.1
`
`Finally, Petitioner fails to provide any articulated reasoning as to why or
`
`how a person having ordinary skill in the art (“POSA”) would have modified
`
`Sakata II in the manner proposed. Petitioner asserts that it would have been
`
`“obvious” to modify Sakata II to arrive at the challenged claims, but its reasons for
`
`doing so are again based on conclusory arguments that contradict Sakata II’s
`
`express teaching. Sakata II’s method is directed to a “predictive” keypad that
`
`modifies its display of characters based on a user’s preference, so as to avoid a
`
`return to a default keyboard. That “predictive method” for accommodating a
`
`limited screen size is exactly what the RE’913 patent rejects with its invention.
`
`For these reasons, Petitioner has failed to meet its burden to support
`
`institution on any of the proposed grounds.
`
`II.
`
`BACKGROUND
`
`A.
`
`THE RE’913 PATENT
`
`The RE’913 patent claims a novel method and device for improving
`
`character input, that is particularly useful on handheld electronic devices. Early
`
`1 Patent Owner focuses herein on certain limitations that are clearly missing from
`
`Petitioner’s prior art. This should not be construed as an admission that any other
`
`limitations can be found in the prior art.
`
`- 3 -
`
`

`

`character input devices typically included a keyboard component (such as a
`
`mechanical or graphical keyboard) for allowing a user to select desired characters
`
`to be input and displayed, where the keyboard contained keys for all of the
`
`necessary alphanumeric characters for drafting a desired message. One well-
`
`known example is what has come to be called the QWERTY keyboard, named for
`
`the first six letters that appear on the second line of the keyboard as illustrated
`
`below:
`
`Ex. 2001, 5:14; Fig. 1A. Such keyboards typically include keys for characters
`
`having alphanumeric values (e.g., “a,” “1” and the like) or symbolic values (e.g.,
`
`punctuation, brackets and the like) as well as keys for functions (e.g., “shift,” “caps
`
`lock” and the like). Characters can be accessed either directly, by selecting the
`
`character key, or indirectly using a combination of the character key and a function
`
`- 4 -
`
`

`

`key. Such keyboards require a sufficient number of keys to represent all of the
`
`necessary characters and functions.2
`
`As electronic devices became smaller for handheld use, there became a need
`
`to minimize the size of the keyboard while maintaining its full functionality. Ex.
`
`2002, 1:14-45. In response, different types of character input methods evolved to
`
`attempt to address this issue. In the early development, ideas for addressing the
`
`screen size problem diverged significantly, in ways that are not readily appreciated
`
`with the hindsight afforded by today’s numerous options.
`
`One such method involved what is commonly known as the “multitap”
`
`method. Ex. 1001, 1:45-67. This method requires a user press “a key on a keypad
`
`several times to cycle through characters associated with the key, until the
`
`character required is selected.” Id., 1:45-48. The RE’913 patent provides an
`
`example of such a known method, in which “the number ‘2’ key is associated with
`
`the characters ‘abc’,” such as in the manner illustrated below.
`
`2 For purposes of this Preliminary Response, “keyboard” and “keypad” are used
`
`interchangeably herein.
`
`- 5 -
`
`

`

`Using the multitap method, to select the character “a” the “2” key is pressed once,
`
`to select the character “b” the “2” key is press twice, and so on. Ex. 1001, 1:51-54.
`
`While this method had the benefit of maintaining a default character layout for
`
`users that is very familiar, it was also slow and prone to error due to the need to tap
`
`keys multiple times to enter desired characters. Id., 1:62-67.
`
`Another approach involved the use of a “dynamic predictive keyboard.” Ex.
`
`1001, 2:1-19 (citing Ex. 2002). In this method, each key includes its own devoted
`
`screen space, on which different characters or words can be displayed. Ex. 2002,
`
`4:4-26; Fig. 1. This allows for different keyboard layouts, where each layout
`
`presents different characters or words associated with each key. Two such layouts
`
`are illustrated below.
`
`See id., 4:54-5:37; Figs. 3(A)-3(L). Upon selection of a particular key by a user, a
`
`CPU analyzes the input and uses that information to “predict” a next keyboard
`
`- 6 -
`
`

`

`layout based on “the set of characters which would most likely be used by the user
`
`to type another character.” Id., 5:5-17; 5:38-6:12. Thus, by disassociating input
`
`keys from any permanent character assignment, this method is able to reduce the
`
`number of keys required for the device. However, as the RE’913 patent explains,
`
`this method has the drawback of presenting an unfamiliar interface to the average
`
`user, and would require a good deal of practice and learning before it can be used
`
`efficiently. Ex. 1001 at 2:11-19. As one could imagine, having a keypad
`
`arrangement continually change could prove frustrating to the user.
`
`The RE’913 patent addressed these drawbacks by providing a character
`
`input method and device that both minimizes the necessary number of input keys,
`
`and requires little to no additional learning in order for the user to practice the
`
`method proficiently. Specifically, the RE’913 patent discloses a keypad where
`
`primary characters are displayed in a first “default” state, and secondary characters
`
`associated with the primary characters are displayed in a “second state.” By
`
`sensing the duration of a key selection, the keypad will select either a primary
`
`character (if a key is pressed for a short duration) or enter the second state (if a key
`
`is pressed for a long duration) to allow for selection of a secondary character. This
`
`allows for a small, efficient keyboard that still provides full access to the features
`
`of a traditional keyboard. Importantly, following the selection of a secondary
`
`character from the second state, the keypad returns to the familiar default state,
`
`- 7 -
`
`

`

`thereby facilitating ease of use and eliminating the confusion associated with being
`
`presented with a new keyboard layout.
`
`This novel approach provided a fast and efficient method for character input
`
`in a manner not previously known.
`
`B.
`
`THE RE’913 PATENT CLAIMS
`
`The challenged claims of the RE’913 patent are directed to a method and
`
`device for receiving character input. The RE’913 patent contains 16 claims, with
`
`claims 1, 3 and 4 being independent. Claim 1 reads as follows:
`
`the device
`1. A method for inputting a character to a device,
`including a keypad, the keypad including a plurality of keys, at least
`one of the keys has a primary character, a plurality of secondary
`characters and an associated display area, the keypad in a default state
`displaying the primary character associated with the at least one key
`in the associated display area, the method comprising acts of:
`in the default state,
`in
`returning the primary character as an input character
`response to selection of the at least one key for a period
`shorter than a predetermined time period;
`switching to a second state after detecting a first key selection
`of the at
`least one key for a period longer than the
`predetermined time period;
`in the second state
`displaying each of the secondary characters associated with the
`first selected key in a respective display area;
`
`- 8 -
`
`

`

`detecting a second key selection;
`the secondary character
`selecting for
`the input character
`associated with the second key selection; and
`returning the keypad to the default state.
`
`Thus, claim 1 requires returning a primary character in the default state
`
`following a key selection of a short duration and switching to a second state
`
`following a key selection of a long duration. Following selection of any secondary
`
`character in the second state, the keypad returns to the default state.
`
`Independent claim 3 recites a computer program that, when run on a device
`
`for character input, performs the method recited in claim 1. Independent claim 4
`
`recites a device for receiving character input that includes the means required to
`
`perform the method recited in claim 1. Of note, every independent claim in the
`
`RE’913 patent requires “returning the keypad to the default state” displaying a
`
`“primary character,” following the selection of a “secondary character” displayed
`
`in a “second state.”
`
`III. PERSON OF ORDINARY SKILL
`
`Petitioner’s statement of a person of ordinary skill in the art (“POSA”)
`
`requires, among other elements, that the person have “at least two years of
`
`experience in designing and/or implementing user interfaces,” or equivalent
`
`experience. Petition, 22:1-6. Patent Owner reserves the right to dispute
`
`Petitioner’s definition of a POSA if an IPR is instituted. For present purposes, this
`
`- 9 -
`
`

`

`Preliminary Response establishes that Petitioner’s arguments fail even under its
`
`preferred definition of a POSA.
`
`IV. CLAIM CONSTRUCTION
`
`In an IPR, claims are given their “broadest reasonable construction in light
`
`of the specification of the patent in which [they] appear.” 37 C.F.R. § 42.100(b);
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015). Solely for
`
`purposes of this Preliminary Response, Patent Owner does not challenge
`
`Petitioner’s proposed claim constructions. Petitioner’s arguments fail even under
`
`their proposed constructions. Patent Owner reserves the right to proffer its own
`
`constructions for any claim terms, should an IPR be instituted. In addition, Patent
`
`Owner notes that constructions set forth in this IPR should not be considered
`
`limiting positions that may be taken with respect to any district court actions,
`
`which use different claim construction standards. Finally, with respect to terms not
`
`construed by Petitioner, Patent Owner offers the following construction.
`
`“primary character” and “secondary character” – Petitioner did not offer
`
`a construction for either of these terms.
`
`As described in the specification, a “primary character” is a key character
`
`assigned to be selectable in, at least, a “default state,” and a “secondary character”
`
`is a key character assigned to be selectable only in a “second state.” Ex. 1001,
`
`3:25-28; 3:58-62; 4:3-6; 5:37-41; see Vitronics Corp. v. Conceptronic, Inc., 90
`
`- 10 -
`
`

`

`F.3d 1576, 1582 (Fed. Cir. 1996) (“[T]he specification is always highly relevant to
`
`the claim construction analysis. Usually, it is dispositive; it is the single best guide
`
`to the meaning of a disputed term.”). This understanding is also reflected in the
`
`claim language, which requires, in the default state, returning a primary character
`
`following a key selection of a short duration, switching to a second state following
`
`a key selection of a long duration, and only then, returning a secondary character in
`
`the second state following a second key selection. Ex. 1001, claims 1, 3, 4; see
`
`also Ex. 1001, 4:3-6 (“The dynamic keypad states illustrated in FIG. 1 and FIG. 2
`
`provide a method of quick and accurate character input wherein secondary
`
`characters are available with only two key selections.”).
`
`The specification further makes clear that “character,” as used in the RE’913
`
`patent, refers to text such as letters, numbers or symbols. These things are
`
`different than non-character inputs, such as functions, modifiers or the like (e.g.,
`
`“shift” or “control”), that do not themselves return text when selected. Petitioner’s
`
`proposed construction for “character” is in agreement. Petition at 23 (construing
`
`“character” as “any symbol or text character”).
`
`This understanding is illustrated, for example, in how “character” is
`
`consistently described throughout the specification, including in Tables 1 and 2.
`
`See, e.g., Ex. 1001, 3:25-57; 6:18-30; tbls. 1, 2 (listing letters, numbers and
`
`symbols). This understanding is also reflected in the embodiments shown in
`
`- 11 -
`
`

`

`Figures 1, 2, 3 and 6. For example, Figure 1 “depicts a default display state of a
`
`keypad for use with the present invention,” and Figure 2 “illustrates an example of
`
`the characters displayed on the keypad after a first key selection” (i.e., the
`
`secondary characters displayed in a second state).
`
`Ex. 1001, 3:11-14; 3:25-57; Figs. 1, 2 (annotation added). The keypads above
`
`display both primary characters (104) and secondary characters (106). The
`
`“primary” characters are selectable in at least the default state (Fig. 1), whereas the
`
`secondary characters are only selectable in the second state (Fig. 2). Id., 3:11-14;
`
`3:25-62; 5:10-14; 5:54-66; 6:14-30; Figs. 1-2.
`
`As shown in Figures 1 and 2, primary character “5” is selectable in both the
`
`default state (via a selection of short duration), and the second state (via a selection
`- 12 -
`
`

`

`of long duration). Ex. 1001, 3:25-62; 5:10-14; 5:54-66; 6:1-14; Figs. 1-2; claims 1,
`
`3, 4. However, secondary character “j” is only selectable after the keypad has
`
`entered the second state. Id. This is true for all disclosed embodiments, and is
`
`reflected in the language of the claims. See, e.g., id. at claim 1 (“in the second
`
`state; displaying each of the secondary characters … selecting for the input
`
`character the secondary character …” (emphasis added)).
`
`The RE’913 patent explains that using this method, the key assignment
`
`displayed in the default state always remain the same, such that it “presents to the
`
`user a keypad having a well known key and character layout, thereby necessitating
`
`little or no familiarisation.” Ex. 1001, 3:37-41. The specification further provides
`
`exemplary assignment tables for primary and secondary key character assignments,
`
`and explains that “[i]n operation, the microprocessor 400 … looks up the default
`
`key character assignations stored in” device memory “to display the keypad 100 in
`
`a default display state.” Id., 4:56-5:47. With respect to the secondary characters in
`
`Table 2, the specification also states that “[t]he touchscreen is sampled repeatedly
`
`until a first key selection is detected, following which the appropriate characters to
`
`be displayed are retrieved … and provided to the touchscreen which updates the
`
`keypad 100 displayed.” Id., 5:41-46. Thus, the secondary characters are
`
`necessarily only selectable after the keypad has entered the second state.
`
`- 13 -
`
`

`

`By failing to offer a construction for either “primary character” or
`
`“secondary character,” Petitioner has offered nothing to refute this position.
`
`Accordingly, the term “primary character” should be construed to mean a
`
`key character assigned to be selectable in a “default state,” and the term
`
`“secondary character” should be construed to mean a key character assigned to
`
`be selectable only in a “second state.”
`
`V.
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`LEGAL STANDARDS
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`A.
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`Obviousness
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`“[I]t can be important to identify a reason that would have prompted a
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`person of ordinary skill in the relevant field to combine the elements in the way the
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`claimed new invention does.” Id. at 418; see also Unigene Labs., Inc. v. Apotex,
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`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “One cannot use hindsight
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`reconstruction to pick and choose among isolated disclosures in the prior art.” In
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`re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988).
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`Obviousness should not be found “when a person of ordinary skill, upon
`
`reading the reference, would be discouraged from following the path set out in the
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`reference, or would be led in a direction divergent from the path that was taken by
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`the applicant.” Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
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`1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Computer Inc., 550
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`F.3d 1325, 1332 (Fed. Cir. 2008)). The inference against obviousness is
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`“especially strong where the prior art’s teachings undermine the very reason being
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`proffered as to why a person of ordinary skill would have combined the known
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`elements.” Depuy Spine, 567 F.3d at 1326.
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`In the context of a request for inter partes review, Petitioners must identify
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`“[h]ow the construed claim is unpatentable” and “must specify where each element
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`of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4); TRW Auto. US
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`LLC v. Magna Elecs. Inc., IPR2014-00293, Paper 19, at 16 (P.T.A.B. Jul. 1, 2014).
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`And the Petitioners must also identify “the supporting evidence relied upon to
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`support the challenge and the relevance of the evidence to the challenge raised,
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`including identifying specific portions of the evidence that support the challenge.”
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`37 C.F.R. § 42.104(b)(5); Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-
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`00041, Paper 16, at 14 (P.T.A.B. Feb. 22, 2013).
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`“[C]onclusory statements, without more detail, fail to satisfy any of the
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`above-noted requirements.” Id.; see also Wowza Media Sys., LLC v. Adobe Sys.
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`Inc., IPR2013-00054, Paper 12, at 15 (P.T.A.B. Apr. 8, 2013). The Board should
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`not be obligated to speculate as to how some or all of the references could render
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`claim limitations obvious where the petitioner does not provide “sufficient
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`explanation for how it believes a [POSA] would have combined the different
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`systems disclosed in the cited references.” TRW Auto., IPR2014-00293, Paper 19,
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`at 15.
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`VI. THE BOARD SHOULD NOT INSTITUTE
`REVIEW ON EITHER OF GROUNDS 1-2
`
`A. WASTE OF BOARD RESOURCES
`
`1.
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`Petitioner Relies on Substantially the Same
`Prior Art Previously Presented to the Office
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`35 U.S.C. § 325(d) states that the Office “may … reject the petition or
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`request because the same or substantially the same prior art or arguments
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`previously were presented to the Office.” See Microboards Tech., LLC v.
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`Stratasys Inc., IPR2015-00287, Paper 13 at 12 (P.T.A.B. May 28, 2015). Indeed,
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`petitions have been denied where the petitioner relied on art and arguments that,
`
`while not previously before the Examiner, were nevertheless cumulative of art and
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`arguments that were before the Examiner. See Neil Ziegman, N.P.Z., Inc. v.
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`Stephens, IPR2015-01860, Paper 11 at 2 (P.T.A.B. Feb. 24, 2016) (“[W]e conclude
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`that the Petition presents substantially the same art or arguments as those
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`previously presented to the Office, and, thus, exercise our discretion under 35
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`U.S.C. § 325(d) to deny institution of an inter partes review as to claims 12-15.”).
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`In addition, 37 C.F.R. § 42.1 sets forth the PTO’s intention “to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” Thus, the Board has the
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`authority to reject the present Petition in light of Petitioner’s reliance on art that
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`was previously before the Examiner.
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`Here, Petitioner proposes two separate grounds, both of which rely on
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`Sakata II as a primary reference: (1) Claims 1 and 3-16 as allegedly obvious over
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`Sakata II, and (2) Claims 1 and 3-16 as allegedly obvious over Sakata II in view of
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`Buxton. While Sakata II itself was not literally before the Examiner during
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`prosecution, the subject matter of Sakata I (which shares the same Applicant,
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`Inventor and subject matter) was both submitted and considered.3 Petitioner
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`admits that Sakata I contains the same or substantially the same features on which
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`it relies for Sakata II in its Petition. Petition at 2-3 (“The same time-based concept
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`also was expressly disclosed in the primary reference relied on in this petition.”).
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`In fact, Petitioner devotes several pages of its Petition to features allegedly
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`disclosed by Sakata I that may also be found in Sakata II, including the concepts of
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`“primary” and “secondary” characters, and the method of accessing an “alternate
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`character menu” based on a “pre-determined time” of key contact. See Petition at
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`17-21; 31-43.
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`Thus, by its own admission, Petitioner recognizes that Sakata II is
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`substantially the same as the Sakata I reference already considered by the Patent
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`3 Petitioner concedes that both Sakata I and the patent that issued from Sakata I,
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`Japanese Patent No. 4,019,512 (“Sakata ’512 patent”), were cited during
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`prosecution. Petition at 2, n.1. Petitioner further acknowledges that the
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`disclosures of Sakata I and the Sakata ’512 patent “are substantially identical” and
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`can be “referenced interchangeably.” Id. Patent Owner will likewise refer to the
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`disclosures of these references interchangeably herein, unless otherwise indicated.
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`Office during prosecution. See Petition at 21. Nevertheless, Petitioner suggests
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`that Patent Owner’s conduct during prosecution should somehow make § 325(d)
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`inapplicable. Petitioner fails to offer any legal or factual support for the assertion,
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`and its observations concerning the prosecution history are irrelevant.
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`Petitioner first asserts that “Patent Owner did not submit a certified
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`translation of the text of the Sakata I reference,” and suggests this is somehow
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`relevant. Petition at 17 (emphasis in original). The Patent Office does not require
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`a “certified translation,” and in fact requires the submission of an English-language
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`translation of a non-English-language document only if one is “within the
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`possession, custody, or control of” those with a duty to disclose information. See
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`37 C.F.R. § 1.98(a)(3). As Petitioner acknowledges, during prosecution, the Patent
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`Owner did submit both the original Japanese-language Sakata ’512 patent (which
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`Petitioner concedes is “substantially identical” to Sakata I) and an English-
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`language translation, which the Examiner considered before allowing the
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`application. Petition at 2 n.1, 17-20; Ex. 1008 at 250-293 (Sakata ’512 patent and
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`English translation thereof); 514-524 (Examiner’s Notice of Allowance and IDS
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`signature