`
`
`Paper 7
`Entered: April 27, 2018
`
`Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00025
`Patent 7,184,064 B2
`____________
`
`
`
`Before KEVIN F. TURNER, KRISTEN L. DROESCH, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2018-00025
`Patent 7,184,064 B2
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`
`INTRODUCTION
`I.
`Microsoft Corporation and Microsoft Mobile Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting inter partes review
`of claims 1–9 of U.S. Patent No. 7,184,064 B2 (Ex. 1002, “the ’064 patent”).
`Koninklijke Philips N.V. (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we decline to institute an inter
`partes review.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify several federal district court cases involving the
`’064 patent. Pet. 3; Paper 4, 2–3. The parties also identify several other
`petitions for inter partes review relating to the ’064 patent. Pet. 2–4;
`Paper 4, 3.
`
`
`B. The ’064 patent
`The ’064 patent describes a touchscreen system where an image, such
`as a list, displayed on a screen begins to scroll when a user applies a
`sweeping motion of his finger along the screen. Ex. 1002, 1:7–11, 1:54–56,
`1:64–67. The speed and direction of the finger along the screen determines
`the initial speed and direction of the list. Id. at 1:57–59. After the finger
`separates from the screen, the list continues to scroll in the same direction at
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`Patent 7,184,064 B2
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`a gradually decreasing speed until scrolling is stopped by the user touching
`the screen without moving his finger along the screen, or when the speed
`decreases to zero or to a predetermined minimum speed, or when the list
`reaches its end. Id. at 1:59–64. The user may continue scrolling by
`repeating the sweeping motion of his finger along the screen, and he may
`control the speed of scrolling with the speed of the sweeping motion. Id.
`at 1:64–67, 2:7–11.
`In addition to scrolling, the user may also select or drag an item on the
`list by touching the screen, depending on the duration of the touch and any
`movement of the finger accompanying the touch. Id. at 2:3–7, 3:29–4:7.
`
`
`C. Challenged Claims
`Petitioner challenges claims 1–9 of the ’064 patent. Claims 1, 7, and
`8 are independent. Claim 1 is illustrative of the claims under challenge:
`1. An
`improved
`touch-screen
`image
`scrolling
`system,
`comprising:
`an electronic image display screen;
`a microprocessor coupled to said display screen to display
`information thereon and to receive interactive signals
`therefrom;
`timer means associated with said microprocessor to provide
`timing capacity therefor;
`a source of scroll format data capable of display on said
`display screen;
`finger touch program instructions associated with said
`microprocessor for sensing the speed, direction and time
`duration of a finger touch contact with said display
`screen[;]
`scrolling motion program instructions associated with said
`microprocessor responsive to said duration of said finger
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`
`touch contact such that, when said duration exceeds a first
`given preset minimum time and is accompanied by motion
`along the surface of said screen followed by separation of
`said finger touch from said screen, a scroll format display
`on said screen is caused to begin to scroll in said sensed
`direction and at said sensed initial speed;
`time decay program instructions associated with said
`microprocessor for reducing
`the rate of scrolling
`displacement on said display screen at a given rate until
`motion is terminated;
`stopping motion program instructions associated with said
`microprocessor for terminating scrolling displacement of
`the image on said screen upon first occurrence of any
`signal in the group of signals comprising:
`(a) a substantially stationary finger touch on the screen
`enduring for a period longer than a preset minimum
`time, and
`(b) an end-of-scroll signal received from said scroll
`format data source.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–9 of the ’064 patent on the following
`grounds. Pet. 5, 23–65.
`References
`Anwar1 and Narutaka2
`Anwar, Narutaka, and Westerman3
`Anwar, Narutaka, and Astala4
`
`Claims Challenged
`1 and 5–7
`1 and 5–7
`2, 3, and 8
`
`Basis
`§103
`§103
`§103
`
`
`1 Anwar, U.S. Patent No. 7,450,114 B2, issued Nov. 11, 2008 (Ex. 1005).
`2 Narutaka, Japanese Pub. No. H06-309138, published Nov. 4, 1994
`(Ex. 1006).
`3 Westerman, Int’l Pub. No. WO 99/38149, published July 29, 1999
`(Ex. 1007).
`4 Astala, U.S. Patent No. 6,943,778 B1, issued Sept. 13, 2005 (Ex. 1008).
`
`4
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`References
`Anwar, Narutaka, Westerman, and
`Astala
`Anwar, Narutaka, and Korhonen5
`Anwar, Narutaka, Westerman, and
`Korhonen
`In support of its arguments, Petitioner relies on the declaration of Dr. Loren
`Terveen (Ex. 1004). See id.
`
`
`Basis
`§103
`
`§103
`§103
`
`Claims Challenged
`2, 3, and 8
`
`4 and 9
`4 and 9
`
`E. Claim Construction
`We construe claims in an unexpired patent by applying the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under this standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A “claim term will not receive its ordinary meaning if the patentee
`acted as his own lexicographer,” and clearly set forth a definition of the
`claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288
`F.3d 1359, 1366 (Fed. Cir. 2002).
`The parties separately argue proposed constructions for various
`limitations of the claims. Pet. 15–17; Prelim. Resp. 12–14. In light of the
`
`
`5 Korhonen, EP 0 880 091 A2, published Nov. 25, 1998 (Ex. 1009).
`
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`Patent 7,184,064 B2
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`parties’ arguments and evidence, we address the following claim term,
`which appears in independent claims 1, 7, 6 and 8:
`stopping motion program instructions associated with said
`microprocessor for terminating scrolling displacement of the
`image on said screen upon first occurrence of any signal in
`the group of signals comprising:
`(a) a substantially stationary finger touch on the screen
`enduring for a period longer than a preset minimum time,
`and
`(b) an end-of-scroll signal received from said scroll format
`data source.
`Referring to our previous construction of “stopping motion program
`instructions” in a different case, both parties contend that we should interpret
`the same term in this case in the same way, namely, as requiring sensing for
`each of the signals in the recited group and terminating scrolling upon
`whichever signal is sensed first. Pet. 16 (“Microsoft adopts the Board’s
`construction in this Petition.”); Prelim. Resp. 12–13; see also, e.g., Google
`Inc. v. Koninklijke Philips N.V., Case IPR2017-00410, slip op. at 8–12
`(PTAB May 24, 2017) (Paper 10). We agree with the parties.
`Each of claims 1, 7, and 8 recites a system including instructions that
`program and execute on a microprocessor or a computer apparatus.
`Although the “stopping motion program instructions” are recited in
`functional terms, these instructions constitute the structure of the system
`claims. Cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (“We have
`held that such programming creates a new machine, because a general
`purpose computer in effect becomes a special purpose computer once it is
`programmed to perform particular functions pursuant to instructions from
`
`6 Claim 7 recites “computer apparatus” instead of “microprocessor.”
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`program software.”). Here, the “stopping motion program instructions”
`configure the microprocessor or the computer apparatus to respond to a “first
`occurrence of any signal” in a group of signals, including the signals recited
`in “(a)” and “(b).” Because the programmed microprocessor or computer
`apparatus must respond to the first occurrence of “any signal in the group of
`signals,” that programming must configure the microprocessor to be capable
`of responding to both (a) and (b), whichever occurs first.
`On this record, we agree with the parties that “stopping motion
`program instructions” should be construed as requiring sensing for each of
`the signals in the recited group and terminating scrolling upon whichever
`signal is sensed first. We do not explicitly construe any other claim
`limitations for purposes of this Decision.
`
`
`III. DISCUSSION7
`A. Obviousness over Anwar and Narutaka
`Petitioner argues that claims 1 and 5–7 of the ’064 patent would have
`been obvious over Anwar and Narutaka. Pet. 22–51. For the reasons
`explained below, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this asserted ground.
`
`
`
`7 Because we deny the Petition on substantive grounds, as explained in this
`section, we do not reach Patent Owner’s arguments that we should exercise
`our discretion to deny the Petition under 35 U.S.C. §§ 314(a). See Prelim.
`Resp. 18–27.
`
`7
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`
`1. Anwar
`Anwar describes a system and method for viewing and manipulating a
`display of digital documents, where the display may be a touch screen
`display on a handheld computer. Ex. 1005, 1:16–18, 5:53–56. Figure 3 of
`Anwar, which is reproduced below, illustrates an example of a display.
`
`
`In particular, Figure 3 shows screen display 26, which includes screen
`document 52 with sub document 44 and thumbnail documents 60–72. Id. at
`
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`10:3–6. Center document 60 is the largest thumbnail document and
`represents document 44, which takes up most of the viewing area of the
`display. Id. at 10:6–8, 10:31–32. As the thumbnail documents increase in
`distance from center document 60, they decrease in size. Id. at 10:15–17.
`The measure in distance from center document 60 may represent the
`distance in pages from document 44, the amount of time that has passed
`since the document was last viewed, or the difference in some other
`characteristic. Id. at 10:17–23. The user may select a new document to
`appear within the viewing area by touching the respective thumbnail
`document. Id. at 10:41–45.
`The user may also click and drag a document to cause page movement
`within the viewing area. Id. at 14:3–6. During a document drag operation, a
`page velocity determination is made. Id. at 14:6–9. Such determination
`allows the user interface to present a more natural way of moving documents
`through a viewing space. Id. at 14:10–12. For example, a user may drag a
`document at a certain speed and then release the stylus or other input device
`from the document. Id. at 14:15–18. Upon release, the document may stop
`moving, or it may continue to move in the established direction until the user
`stops the motion by clicking on the document. Id. at 14:18–22. For multi-
`page documents, the user may scroll different pages across the screen at a
`rate according to the page velocity determination. Id. at 14:22–26. The
`velocity may decrease by a constant page inertia until it reaches zero and
`page scrolling ceases. Id. at 14:26–28.
`
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`
`2. Narutaka
`Narutaka describes a system, where a user can initiate scrolling of a
`screen by touching the display screen with his finger. Ex. 1006, at [57]
`(Abstract). The system checks whether touch location data are continuously
`output, interpreting data that are output for a fixed amount of time or longer
`as a scrolling instruction and data that are not output for the fixed amount of
`time as some other instruction. Id. ¶¶ 18–20. The direction and amount of
`scrolling are computed according to changes in the touch location data.
`Id. ¶ 14. That is, the screen is scrolled according to how much the user’s
`finger moves. Id. ¶ 51. Narutaka teaches that the screen may start to scroll
`when the user’s finger separates from the screen. Id. ¶ 26, Fig. 2.
`Alternatively, the screen may start to scroll when the user touches the screen
`and moves his finger over the screen without lifting it off the screen.
`Id. ¶ 26, Fig. 5.
`
`
`3. Analysis
`Independent claims 1 and 78 recite:
`stopping motion program instructions associated with said
`microprocessor for terminating scrolling displacement of the
`image on said screen upon first occurrence of any signal in the
`group of signals comprising:
`(a) a substantially stationary finger touch on the screen
`enduring for a period longer than a preset minimum time,
`and
`(b) an end-of-scroll signal received from said scroll format data
`source.
`
`
`8 As noted above, claim 7 recites “computer apparatus” instead of
`“microprocessor.”
`
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`As discussed above in the Claim Construction section, we determine that
`“stopping motion program instructions” requires sensing for each of the
`recited signals, namely, a substantially stationary finger touch and an end-of-
`scroll signal. We address Petitioner’s arguments with respect to the end-of-
`scroll signal.
`Petitioner asserts that “[t]he ’064 patent explains that th[e] ‘end of
`scroll signal’ is an indication that the end of the document has been
`reached.” Pet. 47 (citing Ex. 1002, 1:59–64). Petitioner further asserts that
`“Anwar does not expressly disclose program instructions for also
`terminating scrolling upon ‘an end-of-scroll signal received from said scroll
`format data source,’ whichever condition occurs first.” Id. According to
`Petitioner, however, a skilled artisan “would have found it obvious to
`terminate scrolling in Anwar’s system upon reaching the end of the
`displayed document.” Id. As support, Petitioner directs us to where Anwar
`teaches that, during page scrolling, “the velocity may decrease by a constant
`page inertia until it reaches zero velocity and page scrolling ceases.” Id.
`(citing Ex. 1005, 14:26–28). Petitioner contends that “[t]he purpose behind
`this inertial scrolling is to ‘present a more natural way of moving documents
`through a viewing space.’” Id. (citing Ex. 1005, 14:10–12). Relying on the
`declaration testimony of Dr. Terveen, Petitioner further contends that a
`skilled artisan “would have found it entirely natural, and in line with
`Anwar’s goal, for the document scrolling to stop when the end of the
`document had been reached if that condition occurred before the finger
`touch.” Id. at 47–48 (citing Ex. 1004 ¶ 1469). Petitioner adds that “any
`
`
`9 Petitioner cites to paragraph 146 of Dr. Terveen’s Declaration, but the
`relevant testimony appears at paragraph 145.
`
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`alternative operation would have been completely unnatural to a user—if the
`system caused the document to loop back to the beginning, for example, or
`scrolled through a series of blank pages—frustrating Anwar’s goal.” Id. at
`48 (citing Ex. 1004 ¶ 14610).
`We disagree with Petitioner’s reasoning that modifying Anwar to
`include an end-of-scroll signal would have been obvious as being “in line
`with Anwar’s goal.” Anwar explains that its “user interface [can] present a
`more natural way of moving documents through a viewing space” during a
`document drag operation by using a page velocity determination “to redraw
`the document in a series of pictures that will portray the document as
`moving across the screen.” Ex. 1005, 14:6–15. Anwar also explains that,
`“[f]or multi page documents the velocity measure may be used for panning
`different pages of the document across the screen at a rate determined by the
`page velocity set when the user drags one page of the document across the
`screen.” Id. at 14:22–26. Thus, Anwar describes the goal of “present[ing] a
`more natural way of moving documents through a viewing space” in the
`context of a user moving a document. Inertial scrolling does not involve the
`user moving a document as during a document drag operation or a page
`panning (i.e., page scrolling) operation. Indeed, Anwar teaches that inertial
`scrolling is optional (id. at 14:26–28), and that “upon release the document
`may stop moving” (id. at 14:18–19), or it “may continue to move in the
`established direction until the user indicates the document is to stop moving”
`(id. at 14:19–20). That is, Anwar’s goal can still be met without such
`actions that do not involve the user moving a document. Accordingly, on
`
`
`10 Petitioner cites to paragraph 146 of Dr. Terveen’s Declaration, but the
`relevant testimony appears at paragraph 145.
`
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`this record, we are not persuaded by Petitioner’s reasoning that adding an
`end-of-scroll signal to Anwar would have been obvious as being “in line
`with Anwar’s goal,” namely, to provide a more natural way for the user to
`move documents through a viewing space. Like inertial scrolling, an end-of-
`scroll signal does not involve the user moving a document.
`As for Petitioner’s broader reasoning that it would have been “entirely
`natural” for a skilled artisan to modify Anwar to include an end-of-scroll
`signal, we disagree in this regard as well. Neither Petitioner nor Dr. Terveen
`explains persuasively why a skilled artisan would have considered adding an
`end-of-scroll signal to Anwar. For example, Petitioner merely states that it
`would have been unnatural not to add an end-of-scroll signal to Anwar. See
`Pet. 48 (“any alternative operation would have been completely unnatural to
`a user—if the system caused the document to loop back to the beginning, for
`example, or scrolled through a series of blank pages—frustrating Anwar’s
`goal.”). Moreover, we note that, in addition to teaching that inertial
`scrolling is optional (Ex. 1005, 14:26–28), Anwar further teaches that “the
`page may continue to move in the established direction until the user
`indicates that the document is to stop moving such as [by] clicking on the
`document” (id. at 14:19–22 (emphasis added)). Contrary to what Petitioner
`argues, we find that these teachings contemplate scrolling beyond the end of
`a document.
`For both rationales, Petitioner ultimately relies on “common sense” to
`supply a missing claim element. Although “common sense and common
`knowledge have their proper place in the obviousness inquiry,” common
`sense “cannot be used as a wholesale substitute for reasoned analysis and
`evidentiary support, especially when dealing with a limitation missing from
`
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`the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d
`1355, 1361–62 (Fed. Cir. 2016). Here, Petitioner’s reliance on a theory of
`“common sense” is not adequately explained. As our reviewing court has
`observed, “[a]bsent some articulated rationale, a finding that a combination
`of prior art would have been ‘common sense’ or ‘intuitive’ is no different
`than merely stating the combination ‘would have been obvious.’” In re Van
`Os, 844 F.3d 1359, 1361 (Fed. Circ. 2017). For the reasons given above, we
`determine that Petitioner has not articulated persuasive reasoning with a
`rational underpinning for modifying Anwar to include an “end-of scroll
`signal.” See In re Kahn, 441 F.3d at 977, 988 (Fed. Cir. 2006) (“there must
`be some articulated reasoning with some rational underpinning to support
`the legal conclusion of obviousness”).
`In view of the foregoing, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in showing that
`independent claims 1 and 7 would have been obvious over Anwar and
`Narutaka. As claims 5 and 6 depend from claim 1, we determine that
`Petitioner also has not demonstrated a reasonable likelihood of prevailing in
`showing that these dependent claims would have been obvious over Anwar
`and Narutaka.
`
`
`B. Obviousness over Anwar, Narutaka, and Astala
`Petitioner argues that claims 2, 3, and 8 would have been obvious over
`Anwar, Narutaka, and Astala. Pet. 52–62. For the reasons explained below,
`we are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on this asserted ground.
`
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`
`1. Astala
`Astala describes a process for differentiating between touch screen
`inputs, such as a “long click” (which corresponds to a double-click of a left
`mouse button) and a “short click” (which corresponds to a single click of a
`left mouse button). Ex. 1008, 8:64–9:8. For example, if the touch time is
`greater than a predetermined threshold value, then it is determined that a
`long click has been input; otherwise, it is determined that a short click has
`been input. Id.
`Astala teaches that three or more different touch times may be used to
`detect different intended input functions. Id. at 9:27–29. Using three such
`touch times involves three scenarios: (1) the detected time period is less
`than a first predetermined value, (2) the detected time period is equal to or
`greater than the first predetermined value and less than or equal to a second
`predetermined value, and (3) the detected time period is greater than the
`second predetermined value. Id. at 9:29–37.
`
`
`2. Analysis
`Claims 2 and 3 depend from claim 1. As discussed above with respect
`to obviousness over Anwar and Narutaka, we determine that Petitioner has
`not demonstrated a reasonable likelihood of prevailing in showing the
`unpatentability of claim 1 based on this combination of asserted references.
`In its analysis of claims 2 and 3, Petitioner does not provide any argument or
`evidence overcoming the deficiencies we noted above as to claim 1. See
`generally Pet. 52–61. We therefore determine that Petitioner also has not
`demonstrated a reasonable likelihood of prevailing in showing that claims 2
`and 3 would have been obvious over Anwar, Narutaka, and Astala.
`
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`
`Claim 8 is similar to claims 1 and 7, reciting:
`stopping motion program instructions associated with said
`microprocessor for terminating scrolling displacement of the
`image on said screen upon first occurrence of any signal in the
`group of signals comprising:
`(a) a substantially stationary finger touch on the screen
`enduring for a period longer than a preset minimum time,
`and
`(b) an end-of-scroll signal received from said scroll format data
`source.
`As explained previously, “stopping motion program instructions” requires
`sensing for each of the recited signals. Petitioner relies on its arguments
`with respect to claim 1. Pet. 61–62. For the reasons given above, we are
`unpersuaded that the recited “stopping motion program instructions” would
`have been obvious over the combination of Anwar and Narutaka. Namely,
`we find that Petitioner does not adequately explain why a skilled artisan
`would have considered adding an end-of-scroll signal to Anwar. We are not
`persuaded that adding an end-of-scroll signal to Anwar would have been
`obvious as being “in line with Anwar’s goal” of providing a more natural
`way for the user to move documents through a viewing space, or that doing
`so would have been “entirely natural.” Without “some articulated rationale,
`a finding that a combination of prior art would have been ‘common sense’ or
`‘intuitive’ is no different than merely stating that the combination ‘would
`have been obvious.’” Van Os, 844 F.3d at 1361. Petitioner does not provide
`further argument or evidence in its analysis of claim 8 that overcomes the
`deficiencies we discussed as to claims 1 and 7. See generally Pet. 61–62.
`Accordingly, we determine that Petitioner has not demonstrated a reasonable
`
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`likelihood of prevailing in showing that claim 8 would have been obvious
`over Anwar, Narutaka, and Astala.
`
`
`C. Obviousness over Anwar, Narutaka, and Korhonen
`Petitioner argues that claims 4 and 9 would have been obvious over
`Anwar, Narutaka, and Korhonen. Pet. 63–65. Claims 4 and 9 depend from
`claims 1 or 7. As discussed above with respect to obviousness over Anwar
`and Narutaka, we determine that Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing the unpatentability of claims
`1 or 7 based on the combination of Anwar and Narutaka. In its analysis of
`claims 4 and 9, Petitioner does not provide any argument or evidence
`overcoming the deficiencies we noted above as to claims 1 and 7. See
`generally id. Accordingly, we determine that Petitioner also has not
`demonstrated a reasonable likelihood of prevailing in showing that claims 4
`and 9 would have been obvious over Anwar, Narutaka, and Korhonen.
`
`
`D. Westerman-Based Grounds
`With respect to each of the grounds discussed above, Petitioner relies
`additionally on Westerman under an alternative theory. Specifically,
`Petitioner argues that claims 1 and 5–7 would have been obvious over
`Anwar, Narutaka, and Westerman. Pet. 22–51. Petitioner also argues that
`claims 2, 3, and 8 would have been obvious over Anwar, Narutaka, Astala,
`and Westerman. Id. at 52–62. In addition, Petitioner argues that claims 4
`and 9 would have been obvious over Anwar, Narutaka, Korhonen, and
`Westerman. Id. at 63–65. For the reasons explained below, we are not
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`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on any of these asserted grounds.
`
`
`1. Westerman
`Westerman describes a system and method for integrating different
`types of manual input on a multi-touch surface. Ex. 1007, 8. For input
`differentiation, Westerman uses a touch sensing technology that
`distinguishes between different hand configurations and motions such as
`sliding finger chords and grips. Id. at 5. A finger chord refers to a
`combination of fingers. Id. at 26.
`According to one aspect of Westerman, a user can initiate a motion
`continuation mode to automatically scroll a document at readable speeds.
`Id. at 62. Specifically, the user starts by moving all the fingers of an
`established chord along the touch surface, thereby enabling a slide mode.
`Id. at 69. To enable the motion continuation mode, the user then lifts all the
`fingers in that chord off the touch surface without significant deceleration.
`Id. at 72. The user can use any fingers (which are not part of the chord)
`remaining on the touch surface during the motion continuation mode to
`adjust the scrolling velocity. Id. The motion continuation mode does not
`stop until any of the remaining fingers are lifted off the touch surface or until
`more fingers newly touch down. Id. In addition, the motion continuation
`mode can be cancelled when the cursor reaches the edge of the screen or the
`end of the document. Id.
`
`
`18
`
`
`
`IPR2018-00025
`Patent 7,184,064 B2
`
`
`2. Analysis
`As discussed above, independent claims 1, 7, and 8 require sensing for
`both the recited “substantially stationary finger touch” and the recited “end-
`of-scroll signal.” Petitioner argues that Westerman teaches both the recited
`signals. Pet. 48–49; see also id. at 48 (“To the extent the Board determines
`that a [skilled artisan] would not have found it obvious to stop scrolling
`based on an end of file signal in view of Anwar’s teachings, Westerman
`discloses this limitation.”). With respect to the substantially stationary
`finger touch, Petitioner directs us to where Westerman teaches that the
`“[m]otion continuation mode does not stop until . . . more fingers newly
`touch down.” Id. at 48 (citing Ex. 1007, 72). With respect to the end-of-
`scroll signal, Petitioner directs us to where Westerman teaches that “the host
`computer can send a signal instructing motion continuation mode to be
`canceled if the cursor reaches the . . . end of a document.” Id. at 48–49
`(citing Ex. 1007, 72).
`Referring to the arguments discussed above with respect to
`obviousness over Anwar and Narutaka, Petitioner further contends that a
`skilled artisan “would have found it obvious to incorporate Westerman’s
`teaching of terminating scrolling upon either an end of scroll signal or a
`stationary finger touch, whichever occurs first, for similar reasons to those
`discussed above.” Id. at 49 (citing Pet. 47–48). In particular, Petitioner
`asserts that “[t]erminating scrolling of a document when it reached its
`end . . . would have furthered Anwar’s goal of natural document scrolling
`
`19
`
`
`
`IPR2018-00025
`Patent 7,184,064 B2
`
`operation.” Id. As support, Petitioner relies on the declaration testimony of
`Dr. Terveen. Id. (citing Ex. 1004 ¶ 14811).
`Based on the record before us, we find that Petitioner does not explain
`sufficiently why a skilled artisan would have considered combining Anwar,
`Narutaka, and Westerman to arrive at the claimed invention. For example,
`regarding the recited “substantially stationary finger touch,” Petitioner does
`not explain why a skilled artisan would have modified the combination of
`Anwar and Narutaka to include Westerman’s feature of stopping a motion
`continuation mode (i.e., a scrolling action) upon sensing a touch, when
`Anwar already provides for stopping a scrolling action upon sensing a touch.
`See Ex. 1005, 14:19–22 (In Anwar, “the page may continue to move in the
`established direction until the user indicates that the document is to stop
`moving such as [by] clicking on the document.”); Ex. 1007, 72 (In
`Westerman, “[m]otion continuation mode does not stop until . . . more
`fingers newly touch down.”).
`As for the recited “end-of-scroll signal,” we find that Petitioner does
`not explain sufficiently why a skilled artisan would have modified the
`combination of Anwar and Narutaka to include Westerman’s feature of
`cancelling a motion continuation mode upon reaching the end of a document
`for reasons similar to those discussed above with respect to obviousness over
`Anwar and Narutaka. Namely, we are not persuaded that adding
`Westerman’s end-of-scroll signal to Anwar would have been obvious as
`being “in line with Anwar’s goal” of providing a more natural way for the
`user to move documents through a viewing space. See Ex. 1005, 14:6–15,
`
`
`11 Petitioner cites to paragraph 148 of Dr. Terveen’s Declaration, but the
`relevant testimony appears at paragraph 147.
`
`20
`
`
`
`IPR2018-00025
`Patent 7,184,064 B2
`
`14:22–26. As noted previously, an end-of-scroll signal does not involve the
`user moving a document. Further, we also are not persuaded that adding
`Westerman’s end-of-scroll signal to Anwar would have been “entirely
`natural.” Petitioner merely states that it would have been unnatural not to do
`so. Pet. 48. “Absent some articulated rationale, a finding that a combination
`of prior art would have been ‘common sense’ or ‘intuitive’ is no different
`than merely stating that the combination ‘would have been obvious.’” Van
`Os, 844 F.3d at 1361.
`We note Petitioner’s additional arguments that a skilled artisan would
`have found it obvious to combine Anwar and Westerman because they “are
`in the same field of endeavor,” share a “common approach to a common
`goal,” and “relate to generally compatible technology and gesture-
`interpretation techniques.” Pet. 22–24. The mere fact tha
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