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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`ACER INC., ACER AMERICA CORPORATION,
`ASUSTEK COMPUTER INC., ASUS COMPUTER INTERNATIONAL,
`GOOGLE LLC, MICROSOFT CORPORATION, and
`MICROSOFT MOBILE INC.
`Petitioners,
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`v.
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`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
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`Case IPR2017-00386
`Patent RE44,913
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`PETITIONER GOOGLE LLC’S NOTICE OF APPEAL
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioner
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`Google LLC (“Google”) hereby appeals to the United States Court of Appeals for
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`the Federal Circuit from the Final Written Decision entered September 26, 2018
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`(Paper 25) as it relates to claims of U.S. Patent No. RE44,913 (“the ’913 patent”),
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`and any finding or determination supporting or relating to that decision, including
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`the Decision on Institution of Inter Partes Review entered June 12, 2017 (Paper 8)
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`and the Decision on Institution and Joinder in IPR2017-01766 entered January 16,
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`2018 (Paper 15). A copy of the Final Written Decision is attached hereto as
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`Exhibit A.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that
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`the issues on appeal include, but are not limited to, the Patent Trial and Appeal
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`Board’s determinations that Petitioner failed to demonstrate by a preponderance of
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`the evidence that claims 1 and 3-16 of the ’114 patent are unpatentable as obvious
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`over Sakata, Japanese Unexamined Patent Application No. 2000-148366 (“Sakata
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`II”), or as obvious over Sakata II and U.S. Patent No. 6,094,197 (“Buxton”).
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`Pursuant to 37 C.F.R. § 90.2(a), with this submission: (1) a copy of this
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`Notice of Appeal is being filed electronically with the Patent Trial and Appeal
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`Board in accordance with 37 C.F.R. § 42.6(b); (2) a paper copy of this Notice of
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`Appeal, an electronic copy of this Notice of Appeal on the CM/ECF Document
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`Filing System, and the docketing fee of $500 are being simultaneously filed with
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`(3) the original of this Notice of Appeal is being filed by hand with the United
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`States Patent and Trademark Office as provided in 37 C.F.R. § 104.2; and (4) a
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`copy of this Notice of Appeal is being served on Patent Owner Koninklijke Philips
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`N.V.
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`Dated: November 26, 2018
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`Respectfully submitted,
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` /Aaron Maurer/
`Aaron Maurer
`Reg. No. 44,911
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5282 (Telephone)
`202-434-5029 (Facsimile)
`amaurer@wc.com
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`Attorney for Petitioner
`Google LLC
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`CERTIFICATE OF FILING
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`The undersigned hereby certifies that, in addition to being electronically
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`filed through PTAB E2E, the above-captioned Petitioner Google LLC’s Notice of
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`Appeal is being filed by hand with the Director on November 26, 2018, at the
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`following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314
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`The undersigned also hereby certifies that a true and correct paper copy of the
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`above-captioned Petitioner Google LLC’s Notice of Appeal, a true and correct
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`electronic copy of the above-captioned Petitioner Google LLC’s Notice of Appeal,
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`and the docketing fee of $500 are being filed by hand, CM/ECF, and Pay.gov,
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`respectively, with the Clerk’s Office of the United States Court of Appeals for the
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`Federal Circuit on November 26, 2018.
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`Dated: November 26, 2018
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`Respectfully submitted,
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` /Aaron Maurer/
`Aaron Maurer
`Reg. No. 44,911
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5282 (Telephone)
`202-434-5029 (Facsimile)
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`amaurer@wc.com
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`Attorney for Petitioner
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`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned Petitioner Google
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`LLC’s Notice of Appeal was served on November 26, 2018 by sending a copy by e-
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`mail to the following attorneys of record for the Patent Owner:
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`Justin J. Oliver
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`PhilipsIPR@fchs.com
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`In addition, a courtesy copy was sent by e-mail to joliver@Venable.com and
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`jmdorsky@Venable.com.
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`Date: November 26, 2018
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`/Aaron Maurer/
`Aaron Maurer
`Reg. No. 44,911
`Lead Counsel for Petitioner
`Google LLC
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`EXHIBIT A
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`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
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` Paper No. 25
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`Entered: September 26, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ACER INC., ACER AMERICA CORPORATION,
`ASUSTEK COMPUTER INC., ASUS COMPUTER INTERNATIONAL,
`GOOGLE LLC, MICROSOFT CORPORATION, and
`MICROSOFT MOBILE INC.,
`Petitioner,
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`v.
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`KONINKLIJKE PHILIPS ELECTRONICS N.V.,
`Patent Owner.
`____________
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`Case IPR2017-003861
`Patent RE44,913
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`
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`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK, and
`KAMRAN JIVANI, Administrative Patent Judges.
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`JIVANI, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Microsoft Corporation and Microsoft Mobile Inc. (collectively,
`“Microsoft”) filed a petition in IPR2017-01766, and Microsoft has been
`joined to the instant proceeding.
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`
`INTRODUCTION
`I.
`Acer Inc., Acer America Corporation, ASUSTek Computer Inc.,
`ASUS Computer International, and Google LLC requested an inter partes
`review of claims 1 and 3–16 (the “challenged claims”) of U.S. Patent No.
`RE44,913 (Ex. 1001, “the ’913 patent”). Paper 2 (“Petition” or “Pet.”).
`Patent Owner Koninklijke Philips Electronics N.V. filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, we instituted an inter partes review pursuant to
`35 U.S.C. § 314 of the challenged claims. Paper 8 (“Decision on Institution”
`or “Dec. on Inst.”), 19.
`After institution, Microsoft Corporation and Microsoft Mobile Inc.
`requested an inter partes review of the challenged claims and filed a motion
`for joinder to the instant proceeding. IPR2017-01766, Papers 2 and 3.
`Patent Owner, together with Microsoft Corporation and Microsoft Mobile
`Inc., filed a joint stipulation stating that Patent Owner did not oppose the
`requested joinder. IPR2017-01766, Paper 7, 3. We granted the motion and
`joined the Microsoft entities to the instant proceeding. IPR2017-01766,
`Paper 15, 10. Consequently, we refer herein to Acer Inc., Acer America
`Corporation, ASUSTek Computer Inc., ASUS Computer International,
`Google LLC, Microsoft Corporation, and Microsoft Mobile Inc. collectively
`as “Petitioner.”
`Petitioner and Patent Owner requested an oral hearing, and a hearing
`was held on February 28, 2018. Paper 20. A transcript of the oral hearing
`has been entered into the record. Paper 23 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons discussed below, we determine that Petitioner has failed to
`show by a preponderance of the evidence that any of the challenged claims
`are unpatentable.
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`BACKGROUND
`II.
`Asserted Grounds of Unpatentability
`A.
`Petitioner advances the following grounds of unpatentability under
`35 U.S.C. § 103(a) (Pet. 3–4):
`1. Obviousness of claims 1 and 3–16 over Sakata II2; and
`2. Obviousness of claims 1 and 3–16 over Sakata II and Buxton3.
`B. Overview of the ’913 patent
`The ’913 patent relates to entering characters on a handheld mobile
`device via a keypad. Ex. 1001, 1:18–21. Figure 1 of the ’913 patent is
`reproduced below.
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`2 Sakata, Japanese Unexamined Patent Application No. 2000-148366
`(“Sakata II”) (Ex. 1004).
`3 Buxton, U.S. 6,094,197; iss. July 25, 2000 (“Buxton”) (Ex. 1006).
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`Figure 1 depicts a default display state of a keypad 100 with twelve
`keys 102, where each key is associated with a primary character 104 and a
`plurality of secondary characters 106. Id. at 3:25–28. The primary
`characters in Figure 1 are the numbers and symbols displayed on the keys of
`the keypad. Id. at 3:28–31. The secondary characters in Figure 1 are the
`letters displayed in groups below each key. Id. at 3:31–37.
`In one embodiment, a user selects a primary character by initiating a
`“quick tapping” of the corresponding key for a pre-determined time period,
`for instance 0.2 seconds. Id. at 6:1–6. If the user’s tap is longer than the
`pre-determined time period, the keypad responds to the user’s tap by
`entering into a second state, wherein secondary characters associated with
`the selected key are made available. Id. at 4:4–6, 6:3–6. Figure 2 of the
`’913 patent is reproduced below.
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`Figure 2 depicts a second display state of the keypad after a first key
`selection by a user. Id. at 3:42–43. In this instance, the user has selected the
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`key associated with primary character ‘5’, causing the primary character ‘5’
`to remain displayed on the selected key and causing the associated
`secondary characters ‘j’, ‘k’, and ‘l’ each to be displayed on an adjacent key.
`Id. at 3:44–52. The user may now select any of the displayed characters by
`tapping on the corresponding key, thereby providing “quick and accurate
`character input wherein secondary characters are available with only two
`key selections.” Id. at 3:63–65, 4:4–6. “Following a character input, the
`keypad of [Figure] 2 is returned to the default display state as shown in
`[Figure] 1.” Id. at 3:60–62.
`C.
`Prosecution History
`The ’913 patent is a reissue of U.S. Patent No. 6,885,318. Ex. 1001,
`1. During prosecution of the reissue application and pursuant to a request
`for continued examination, Patent Owner submitted an information
`disclosure statement (IDS) disclosing Japanese Patent No. 4,019,512 to
`Sakata (the “Sakata ’512 patent”), which results from Japanese Unexamined
`Patent Application No. 2000–56912 (“Sakata I”). Ex. 1008, 522. The IDS
`does not identify the secondary reference, Buxton, and Buxton was not
`before the Examiner during prosecution. Id.; see also Pet. 15 n. 4.
`Moreover, the translation of Sakata II upon which Petitioner relies appears
`to be materially different from the translation of the Sakata ’512 patent
`before the Examiner. Compare, e.g., Ex. 1004, ¶ 55 (Sakata II describing,
`“when a user wants to select and enter a special character or symbol that is
`not displayed on the soft keyboard 20, a user touches the key position of the
`group of similar characters and symbols with the touch pen 4 for longer than
`the threshold time.”) with Ex. 1008, 289 (Sakata ’512 patent stating, “[o]n
`the other hand, when changing the character classification displayed on a
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`soft keyboard 6, as for a user, the drag|drug menu 18 is displayed in the
`place which touched arbitrary characters and passed for a fixed time with the
`pointing device 3 like FIG. 19.”).
`D.
`Illustrative Claim
`Claims 1, 3, and 4 are independent. Claim 1 is illustrative of the
`claimed subject matter and is reproduced below.
`1.
`A method for inputting a character to a device, the
`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,
`returning the primary character as an input character
`in 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:
`the secondary characters
`displaying each of
`associated with the first selected key in a
`respective display area;
`detecting a second key selection;
`selecting for the input character the secondary
`character associated with the second key
`selection; and
`returning the keypad to the default state.
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`Related District Court Proceedings
`E.
`Petitioner identifies several actions for infringement of the ’913 patent
`pending in the United States District Court for the District of Delaware.
`Pet. 3.
`Testimony
`F.
`Petitioner supports its challenges with the declaration of Dr. Andrew
`Cockburn. Ex. 1002. Dr. Cockburn testified by deposition on August 29,
`2017, and a transcript of his testimony has been entered into evidence.
`Ex. 2006.
`Patent Owner supports its challenges with a declaration of
`Dr. Adam Porter. Ex. 2005. Dr. Porter testified by deposition on November
`29, 2017, and a transcript of his testimony has been entered into evidence.
`Ex. 1029.
`
`III. ANALYSIS
`Principles of Law
`A.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail on its challenges, Petitioner must
`demonstrate by a preponderance of the evidence that the challenged claims
`are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter as a whole would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
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`of underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and, if presented, (4) objective
`evidence of nonobviousness, i.e., secondary considerations such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The obviousness
`inquiry further requires an analysis of “whether there was an apparent reason
`to combine the known elements in the fashion claimed by the patent at
`issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006) (requiring “articulated reasoning with some rational underpinning
`to support the legal conclusion of obviousness”)).
`B.
`Claim Construction
`1.
`Applicable Standards and Principles of Law
`In an inter partes review, claim terms are given their broadest
`reasonable interpretation in light of the specification in which they appear.4
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016); 37
`C.F.R. § 42.100(b). We presume that claim terms have their ordinary and
`customary meaning. See TriVascular, Inc. v. Samuels, 812 F.3d 1056,
`1061–62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” (citation
`omitted)); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
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`4 We would construe the claim terms discussed below the same under
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`special definition or other consideration, “limitations are not to be read into
`the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms that are in controversy need to be
`construed and only to the extent necessary to resolve the controversy. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (citing Vivid Techs. Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`The parties’ claim construction dispute at trial focuses on the meaning
`of the terms “primary character” and “secondary character,” as recited in
`each of independent claims 1, 3, and 4. See, e.g., Tr. 32:23–25, 33:10–12
`(counsel for Patent Owner arguing that its constructions were offered “in
`anticipation of potential new arguments” and that those arguments were in
`fact presented in Petitioner’s Reply). We interpret claim terms to the extent
`necessary to resolve the controversy before us. See Nidec Motor Corp., 868
`F.3d 1013 at 1017. Accordingly, we construe below the terms “primary
`character” and “secondary character” in order to resolve the parties’ claim
`construction dispute. We further determine that construction of additional
`terms is not necessary for our analysis and, therefore, do not construe any
`additional terms. See id.
`2.
`Primary character and secondary character
`Patent Owner asserts the term “primary character” should be
`construed as “a key character assigned to be selectable in a default state.”
`PO Resp. 21–23 (citing Ex. 2005 ¶¶ 30–38); Tr. 35:1–22. Patent Owner
`further asserts the term “secondary character” should be construed as “a key
`character assigned to be selectable only in a second state.” Id.
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`Petitioner contends that “the plain meaning is appropriate” for the
`terms “primary character” and “secondary character.” Reply 24. Petitioner
`elaborates, “their plain meaning . . . is that the primary characters are ones
`that appear in the default state, and the secondary characters are ones that
`appear in the secondary state.” Tr. 4:25–5:2.
`In determining the broadest reasonable construction of a claim term,
`we begin with the language of the claim itself. In re Power Integrations,
`Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (quoting Amgen Inc. v. Hoechst
`Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006)) (“[C]laim
`construction must begin with the words of the claims themselves.”); In re
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim
`construction analysis, we begin with the claim language.”). Here, claim 1
`recites at least one key of a keypad having “a primary character” and “a
`plurality of secondary characters.” Ex. 1001, 6:50–51. The claim continues
`by defining a “default state” in which the “the primary character” is
`displayed and is returned “in response to selection of the . . . key.” Id. at
`6:53–60. Thus, consistent with Patent Owner’s proposed construction,
`claim 1 defines a primary character as one that is selectable in the default
`state. See PO Resp. 21–23 (citing Ex. 2005 ¶¶ 30–38). With respect to
`“secondary characters,” claim 1 recites a “second state” wherein each of the
`secondary characters associated with a key is selectable. Ex. 1001, 6:61–
`7:2. Thus, consistent with Patent Owner’s proposed construction, claim 1
`recites a secondary character as one that is selectable in the secondary state.
`See PO Resp. 21–23 (citing Ex. 2005 ¶¶ 30–38).
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`Central to the parties’ claim construction dispute is a question of
`whether primary and secondary characters are limited to being selectable
`only in particular states. According to Patent Owner, the Specification
`describes primary characters as selectable in both the default and secondary
`states, whereas secondary characters “are only selectable after the keypad
`has entered the second state.” PO. Resp. 22. In support of its position,
`Patent Owner asserts, “[a]s 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 of long duration). . . . However, secondary
`character ‘j’ is only selectable after the keypad has entered the second state.”
`Id. (citing Ex. 1001, 3:25–62; 5:10–14; 5:54–66; 6:1–14; Figs. 1, 2).
`Conversely, Petitioner contends that primary characters are those that
`are selectable in the default state, secondary characters are those that are
`selectable in the secondary state, and the Specification provides as an
`example the character ‘5’ that is both a primary and secondary character.
`Reply 24. Petitioner directs our attention to Table 2 of ’913 Patent, which is
`reproduced below.
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`Table 2 depicts “the characters displayed upon a first key selection
`corresponding to key 5 thereby providing a second keypad display state as
`shown in FIG. 2.” Ex. 1001, 3:34–36. At oral hearing, Petitioner’s counsel
`noted that the character ‘5’ is listed in the second column and asserted that,
`“Table 2 clearly labels all of those as secondary characters.” Tr. 5:23–24.
`The Specification describes primary and secondary characters—as
`well as Table 2 upon which Petitioner relies—with respect to Figures 1 and
`2, which are reproduced below again for ease of reference.
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`Figure 1 depicts a default display state of a keypad 100 with twelve
`keys 102, where each key is associated with a primary character 104 and a
`plurality of secondary characters 106. Ex. 1001, 3:25–28. The primary
`characters in Figure 1 are the numbers and symbols displayed on the keys of
`the keypad. Id. at 3:28–31. The secondary characters in Figure 1 are the
`letters displayed in groups below each key. Id. at 3:31–37. Significantly,
`although “[t]he secondary characters 106 associated with each key are
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`shown in groups adjacent the respective key,” the secondary characters are
`not shown as selectable in the default state (i.e., Figure 1). Id. at 3:31–33.
`Rather, consistent with Patent Owner’s argument, the secondary characters
`are only shown in Figure 1 as becoming selectable upon entering the second
`state, depicted in Figure 2. Id. at 3:41–52; 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.”) (emphasis added).
`Figure 2 depicts a second display state of the keypad after a first key
`selection by a user. Id. at 3:42–43. The Specification describes the second
`state shown in Figure 5 as depicting secondary characters ‘j’, ‘k’, and ‘l’
`each to be displayed on keys adjacent to “the key associated with the
`primary character ‘5’.” Id. at 3:44–52. Contrary to Petitioner’s argument,
`this passage of the Specification does not describe the character ‘5’ as a
`secondary character. The character ‘5’ in Figure 2 bears the label 104,
`which the Specification designates “a primary character 104.” Id. at 3:27.
`The Specification continues, “the remaining keys have displayed upon them
`further characters 200 which are useful for text entry.” Id. at 3:52–57.
`Thus, the Specification discloses that the second state shown in Figure 2
`depicts a primary character, secondary characters, and “further characters.”
`Turning to Table 2, the Specification’s textual description of this table
`refers to its contents broadly as characters, and not merely as secondary
`characters. See, e.g., id. at 3:34–36 (Table 2 depicts “the characters
`displayed upon a first key selection corresponding to key 5 thereby
`providing a second keypad display state as shown in FIG. 2”) (emphasis
`added); see also id. at 3:42–44 (“the appropriate characters to be displayed
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`are retrieved from an appropriate stored KCT (e.g. Table 2) by the
`microprocessor”) (emphasis added). This usage of the broader term
`“characters” with regard to the second keypad display state is consistent with
`the Specification’s description of the second display state shown in Figure 2
`as depicting a primary character, the associated secondary characters of that
`primary character, and further characters—all of which appear in the second
`column of Table 2 under the heading “DISPLAY SECONDARY
`CHARACTER.” It further stands in contrast to the immediately preceding
`description of Table 1, which identifies the primary and secondary
`characters associated with each key under the headings “PRIMARY
`CHARACTER” and “SECONDARY CHARACTER,” respectively. Id. at
`5:10–14 (“Table 1 thereby provides primary and secondary characters to the
`microprocessor which, under the guidance of PRG instructs the touchscreen
`to display these characters in the appropriate locations to build up a default
`keypad display state corresponding to FIG. 1 and Table 1.”). Contrary to
`Petitioner’s argument regarding the character “5” as being both a primary
`character and a secondary character, Table 1 identifies that key character
`only as a “PRIMARY CHARACTER” and not a “SECONDARY
`CHARACTER.” Id. at 4:64.
`In light of the foregoing disclosures, we are not persuaded by
`Petitioner’s argument that one of ordinary skill would understand the
`Table 2 column heading as defining the character “5” as a secondary
`character. Rather, we agree with Patent Owner that the Specification only
`discloses secondary characters that are selectable in the second state.
`Reading these terms in light of how they are described in the ’913 patent, we
`agree with and adopt Patent Owner’s construction of the term “primary
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`character” as “a key character assigned to be selectable in at least a default
`state” and the term “secondary character” as “a key character assigned to be
`selectable only in a second state.”5
`C.
`Level of Ordinary Skill in the Art
`Petitioner states that a person of ordinary skill in the art for the
`technology in the ’913 patent “would have at least an undergraduate degree
`in computer science or computer engineering, or the equivalent” and “at
`least two years of experience in designing and/or implementing user
`interfaces, or equivalent academic experience.” Pet. 22 (citing Ex. 1002
`¶ 30). Patent Owner does not dispute Petitioner’s formulation, presents an
`analysis based on Petitioner’s formulation, and argues that, even under
`Petitioner’s formulation, Petitioner has failed to show the challenged claims
`are unpatentable. PO Resp. 20.
`In view of the foregoing, we adopt Petitioner’s formulation of the
`level of ordinary skill in the art. Further, this level of ordinary skill is
`reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of
`ordinary skill in the art).
`D.
`Asserted Obviousness of Claims 1 and 3–16 over Sakata II
`1.
`Overview of Sakata II
`Sakata II is a certified translation of a Japanese published patent
`application directed at a device and method for inputting text using a
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`5 Because the Specification describes and depicts primary character “5” as
`selectable in the second state shown in Figure 2, we modify slightly Patent
`Owner’s proposed construction to recite explicitly “at least” and thus not
`arguably limited to only a default state.
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`software keyboard shown on a display screen. Ex. 1004, Abst. Figure 8 of
`Sakata II is reproduced below.
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`Figure 8 depicts a display of a “soft keyboard” wherein a user may
`touch and immediately release a key using pen 4 to select the character
`displayed on the key. Id. at ¶¶ 52–54. If, however, the user touches the key
`for longer than a “preset threshold time, for example, longer than two
`seconds,” then drag menu 23 is displayed over the location of the key. Id. at
`¶¶ 52, 53, 55. The user may then drag pen 4 over the menu 23 to select a
`character. Id. at ¶ 55. The newly-selected character is input and replaces the
`character previously-displayed on the key. Id. at ¶¶ 40, 41, 55, Figs. 5–8.
`2.
`Analysis of Independent Claim 1 and Dependent
`Claims 9–12
`The final limitation of claim 1 recites: “returning the keypad to the
`default state.” Ex. 1001, 7:3. The parties agree that Sakata II does not meet
`this limitation and dispute whether one of ordinary skill in the art would
`have modified Sakata II to return the keypad to a default state, as claimed.
`Compare Reply 3 (citing Ex. 1002 ¶ 143) with PO Resp. 16 (citing Ex. 2005
`¶¶ 68, 81–87).
`Petitioner contends that “[t]he Sakata II invention performs an extra
`step” beyond the method of claim 1 because “[r]ather than return to the
`keyboard’s original ‘default’ state, it substitutes the just selected character
`key for the initial primary key.” Pet. 38. According to Petitioner, this
`character substitution is “[t]he only distinction between Sakata II and the
`’913 patent.” Reply 3. Petitioner and Dr. Cockburn assert, “[o]mitting this
`extra step is an insubstantial change, and would have been obvious to the
`[person of ordinary skill in the art].” Id. at 38–39 (citing Ex. 1002 ¶¶ 144–
`48, 171–81). This is because one of ordinary skill in the art would find it
`obvious to try an implementation of Sakata II that omits the extra step in
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`light of “general notions of consistency” and a desire to improve efficiency.
`Pet. 40–43, 53; Reply 15–16.
`Patent Owner responds that Sakata II does not teach the final
`limitation of claim 1 because it never returns to the claimed default state.
`PO Resp. 16 (“Following character selection from a drag menu, the keypad
`in Sakata II does not return to a default state. That is because, by purposeful
`design, Sakata II’s keypad does not have a default state.”). According to
`Patent Owner, “Sakata II is explicitly directed to an adaptive keyboard, in
`which, following the selection of a special character from a group associated
`with a particular key, the selected character is displayed on that key after the
`drag menu disappears, regardless of what was previously displayed on the
`key.” Id. Patent Owner asserts that this functionality is “designed for a
`particular need—increased speed and efficiency through personal
`customization”—and “having a default state as disclosed in the RE’913
`patent would effectively destroy Sakata II’s intended purpose, as the
`keyboard would no longer be adaptable to the preferences of the user.”
`Id. at 31–32 (citing Ex. 2005 ¶¶ 85–89). Patent Owner continues that
`Sakata II teaches away from the modification Petitioner proposes and that
`“[i]n essence, Petitioner improperly attempts to use the RE’913 patent as a
`roadmap to modify Sakata II in a manner that was never contemplated or
`intended.” Id. at 33–34.
`Having considered the complete trial record, we determine that
`Petitioner has failed to establish by a preponderance of the evidence that one
`of ordinary skill in the art would have modified Sakata II to return the
`keypad to a default state, as claimed. Applying our constructions of the
`terms “primary character” and “secondary character” set forth above, we
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`find Sakata II does not return to a “default state” because it does not return
`after selection of a secondary character to a state in which the primary
`character is displayed. See Ex. 1004 ¶¶ 40, 41, 55, Figs. 5–8. For instance,
`Figure 8 of Sakata II depicts the process when a user selects the dynamic
`key 22 bearing the character ‘mm’ for a longer than a preset threshold time.6
`Ex. 1004 ¶¶ 52, 53. Upon reaching the threshold