`
`
`Paper 9
`Entered: August 10, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`IPR2018-00025
`Patent 7,184,064 B2
`
`
`I. INTRODUCTION
`Microsoft Corporation and Microsoft Mobile Inc. (collectively,
`“Petitioner”) filed a Request for Rehearing (Paper 8, “Req. Reh’g”) of our
`Decision Denying Institution of Inter Partes Review (Paper 7, “Institution
`Decision” or “Inst. Dec.”) of U.S. Patent No. 7,184,064 B2 (Ex. 1002, “the
`’064 patent”). Petitioner seeks rehearing of our determination not to
`institute inter partes review of the ’064 patent over all six asserted grounds,
`each of which is based on some combination of references including Anwar1
`and Narutaka.2 Req. Reh’g 3, 13. In our Institution Decision, we
`determined that Petitioner had not explained sufficiently why an ordinarily
`skilled artisan would have considered modifying Anwar to arrive at the
`claimed invention, which features an “end-of-scroll signal.” Inst. Dec. 12–
`14, 16, 20–22. According to Petitioner, we “misapprehended Anwar’s
`teachings and overlooked [Petitioner’s] arguments and evidence relating to
`obviousness of the ‘end-of-scroll signal’ limitations recited by independent
`claims 1, 7, and 8.” Req. Reh’g 2. For the reasons that follow, Petitioner’s
`request for rehearing is denied.
`
`
`II. BACKGROUND
`The Petition (Paper 2, “Pet.”) challenged claims 1–9 of the ’064
`patent on the following six grounds. Pet. 5, 22–65.
`
`
`1 Anwar, U.S. Patent No. 7,450,114 B2, issued Nov. 11, 2008 (Ex. 1005).
`2 Narutaka, Japanese Publ’n No. H06-309138, published Nov. 4, 1994
`(Ex. 1006).
`
`2
`
`
`
`Claims Challenged
`1 and 5–7
`1 and 5–7
`2, 3, and 8
`2, 3, and 8
`
`4 and 9
`4 and 9
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`IPR2018-00025
`Patent 7,184,064 B2
`
`References
`Anwar and Narutaka
`Anwar, Narutaka, and Westerman3
`Anwar, Narutaka, and Astala4
`Anwar, Narutaka, Westerman, and
`Astala
`Anwar, Narutaka, and Korhonen5
`Anwar, Narutaka, Westerman, and
`Korhonen
`Petitioner argued that it would have been obvious for an ordinarily
`skilled artisan to modify Anwar to include the recited “end-of-scroll signal”
`based on Anwar’s own teachings. Id. at 47–48. Petitioner also argued under
`an alternative theory that it would have been obvious to modify Anwar to
`include the recited “end-of-scroll signal” based on the combined teachings
`of Anwar and Westerman. Id. at 48–49. We denied institution of review on
`all six grounds because we were not persuaded that Petitioner had provided
`adequately articulated reasoning with some rational underpinning to support
`the legal conclusion of obviousness over the asserted combinations of
`references. Inst. Dec. 12–17, 20–23.
`
`
`III. STANDARD OF REVIEW
`When considering a request for rehearing of a decision, the Board
`reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c).
`An abuse of discretion occurs when a “decision [i]s based on an erroneous
`
`
`3 Westerman, Int’l Publ’n 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).
`5 Korhonen, European Publ’n No. EP 0 880 091 A2, published Nov. 25,
`1998 (Ex. 1009).
`
`3
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`IPR2018-00025
`Patent 7,184,064 B2
`
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should
`be modified lies with the party challenging the decision.” Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its
`request for rehearing, the dissatisfied party must (1) “specifically identify all
`matters the party believes the Board misapprehended or overlooked,” and
`(2) identify the place “where each matter was previously addressed.”
`37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48,768. We address Petitioner’s arguments with these principles in mind.
`
`
`IV. ANALYSIS
`Petitioner contends that we abused our discretion because: (1) we
`misapprehended Anwar’s teachings and overlooked Petitioner’s arguments
`regarding modifying Anwar to include an end-of-scroll signal based on
`Anwar’s teachings, and (2) we overlooked Petitioner’s arguments regarding
`modifying Anwar to include an end-of-scroll signal based on the combined
`teachings of Anwar and Westerman. Req. Reh’g 3–15. Petitioner further
`contends that it would be “most efficient” for us to institute review of the
`challenged claims in this case given that we have instituted review of
`“nearly identical” claims of a related patent in a different case, namely,
`IPR2018-00023, in which the asserted grounds and arguments are
`“substantively identical” to the asserted grounds and arguments presented
`here. Id. at 2. We address Petitioner’s contentions in turn.
`
`
`4
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`IPR2018-00025
`Patent 7,184,064 B2
`
`
`A. Modifying Anwar Based on Anwar’s Teachings
`With respect to the recited “end-of-scroll signal,” Petitioner argued in
`its Petition that it would have been “obvious to terminate scrolling in
`Anwar’s system upon reaching the end of the displayed document” because
`“[t]he purpose behind [Anwar’s] inertial scrolling is to ‘present a more
`natural way of moving documents through a viewing space,’” and an
`ordinarily 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.” Pet. 47–48. That is, Petitioner argued that an ordinarily skilled
`artisan would have found it obvious to add an end-of-scroll signal to Anwar
`because it would have been “entirely natural” and “in line with Anwar’s
`goal.” In our Institution Decision, we were not persuaded by this argument,
`finding that Petitioner did not explain sufficiently why an ordinarily skilled
`artisan would have considered modifying Anwar to provide an end-of-scroll
`signal based on Anwar’s teachings. Inst. Dec. 12–14.
`Regarding Petitioner’s reasoning that it would have been “in line with
`Anwar’s goal” to add an end-of-scroll signal to Anwar, we found that
`Anwar’s goal of “present[ing] a more natural way of moving documents
`though a viewing space” was described in the context of a user moving a
`document, and that an end-of-scroll signal does not involve a user moving a
`document. Id. at 12–13. Petitioner contends in its Request for Rehearing
`that such a goal instead “applies to [Anwar’s] user interface processes
`generally, and particularly those that use velocity determination—such as
`the inertial scrolling process upon which the Petition relies for the ‘end-of-
`scroll signal’ limitations.” Req. Reh’g 9.
`
`5
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`IPR2018-00025
`Patent 7,184,064 B2
`
`
`We disagree. As we noted in our Institution Decision, Anwar
`describes “present[ing] a more natural way of moving documents through a
`viewing space” in various contexts, including document dragging and page
`panning. Inst. Dec. 12 (citing Ex. 1005, 14:6–15, 14:22–26). Anwar refers
`explicitly to “clicking and dragging a document to cause page movement of
`that document within the viewing area” for document dragging and to
`“movement against the page inertia enabling smooth continu[ous] movement
`of the page between rapid sequential drag operations” for page panning.
`Ex. 1005, 14:3–6 (emphasis added); id. at 14:28–32 (emphasis added).
`These references illustrate Anwar’s focus throughout its specification on
`“simulating tactile control over a document.” Id. at 2:9–12 (emphasis
`added); see also id. at 1:17–24 (“The systems and methods described herein
`relate to . . . user interface systems . . . such as . . . a display device
`associated with a tactile commander.”) (emphasis added); id. at 9:60–64
`(“The power of this approach allows for the development of novel graphical
`user interface tools that allow a user to manipulate and view a document on
`a display to simulate tactile control over the depicted documents.”)
`(emphases added).
`Although inertial scrolling in Anwar may be based on velocity
`determination (as are document dragging and page panning), Petitioner has
`not shown sufficiently how inertial scrolling provides a context in which
`tactile control of a document can be simulated. We note Petitioner’s
`contention that Anwar’s discussion about page panning indicates that
`“inertial scrolling does involve a user moving a document.” Req. Reh’g 8
`n.2. This contention is not persuasive, however, because that discussion
`shows that page panning (not inertial scrolling) provides a context in which
`
`6
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`IPR2018-00025
`Patent 7,184,064 B2
`
`tactile control of a document can be simulated. See Ex. 1005, 14:23–26
`(“panning different pages . . . when the user drags one page of the document
`across the screen”) (emphasis added); id. at 14:31–32 (“smooth continu[ous]
`movement of the page between rapid sequential drag operations”)
`(emphasis added).
`Further, as we noted in our Institution Decision, Anwar teaches that
`inertial scrolling is an optional feature, where, “upon release the document
`may stop moving,” or it “may continue to move.” Inst. Dec. 12 (quoting
`Ex. 1005, 14:18–20, 26–28); see also Ex. 1005, 14:22–27 (“panning
`different pages . . . at a rate determined by the page velocity set when the
`user drags one page of the document across the screen,” or “the velocity may
`decrease by a constant page inertia”). Petitioner does not explain why
`inertial scrolling is “more natural” than other available options in Anwar,
`namely, moving at a constant rate or stopping movement all together. Even
`if we were to find that inertial scrolling is “more natural” than the other
`options, we note that the options appear to be preselected, rather than within
`the control of a user’s touch.
`In view of the foregoing, we maintain our finding that Anwar’s goal
`of “present[ing] a more natural way of moving documents through a viewing
`space” applies in the context of a user moving a document, that is, a context
`in which tactile control of a document can be simulated. As such, we are not
`persuaded that an ordinarily skilled artisan would have considered
`incorporating the recited “end-of-scroll signal” (which does not involve the
`user moving a document) based on Anwar’s teaching of this goal.
`As to Petitioner’s reasoning that it would have been “entirely natural”
`to add an end-of-scroll signal to Anwar (see Pet. 47–48), we found that
`
`7
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`IPR2018-00025
`Patent 7,184,064 B2
`
`neither Petitioner nor Dr. Terveen had explained sufficiently why an
`ordinarily skilled artisan would have considered doing so. Inst. Dec. 13. In
`that regard, Petitioner now argues in its Request for Rehearing that our
`finding “overlooks the evidence presented in the Terveen Declaration and
`analysis in the Petition.” Req. Reh’g 9. As support, Petitioner contends that
`Dr. Terveen “explained that a user of Anwar’s system would have expected
`a document to stop scrolling when it reached the end” and that it would have
`been “strange if Anwar’s system caused the document to loop back to the
`beginning or scroll through a series of blank pages.” Id. at 9–10 (citing Ex.
`1004 ¶ 145). Petitioner further contends that Dr. Terveen “explained that it
`would have been natural and intuitive for a document (as opposed to, e.g., a
`list of items) to stop scrolling when it reached its end.” Id. at 10 (citing Ex.
`1004 ¶ 145); see also id. (an ordinarily skilled artisan “would have seen it as
`a natural, direct extension of [Anwar’s] goal to stop scrolling a document
`when it reached the end”); id. (“if Anwar’s inertial scrolling worked
`differently, a user would have found it bizarre,” and “[t]his counterintuitive
`operation . . . show[s] unnatural document movement”).
`Petitioner’s contentions are not persuasive. Petitioner essentially
`contends that it would have been “expected,” “natural,” and “intuitive” to
`add an end-of-scroll signal to Anwar because it would have been “strange,”
`“bizarre,” “counterintuitive,” and “unnatural” not to do so. See also Pet. 48
`(“any alternative operation would have been completely unnatural to a
`user”). This reasoning is inadequate to support a legal conclusion of
`obviousness, and Dr. Terveen’s testimony does not sufficiently elaborate on
`why it would have been natural for an ordinarily skilled artisan to add an
`end-of-scroll signal to Anwar. See Ex. 1004 ¶ 145; In re Van Os, 844 F.3d
`
`8
`
`
`
`IPR2018-00025
`Patent 7,184,064 B2
`
`1359, 1361 (Fed. Circ. 2017) (“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.’”) (cited by Inst. Dec. 13–14).
`We note that Petitioner further argues in its Request for Rehearing
`that our finding that Anwar contemplates scrolling beyond the end of the
`document is not supported by the record evidence. Req. Reh’g 11–13. Even
`if this were true, Petitioner still has not explained persuasively why an
`ordinarily skilled artisan would have considered adding an end-of-scroll
`signal to Anwar.
`
`B. Modifying Anwar Based on the Teachings of Anwar and Westerman
`Petitioner argued in its Petition that Westerman teaches both the
`recited “substantially stationary finger touch” and the recited “end-of-scroll
`signal.” Pet. 48–49. Petitioner further argued that an ordinarily 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). Petitioner asserted, in particular, that
`“[t]erminating scrolling of a document when it reached its end . . . would
`have furthered Anwar’s goal of natural document scrolling operation.” Id.
`In our Institution Decision, we were unpersuaded by Petitioner’s rationale
`for combining Anwar and Westerman, finding that Petitioner did not explain
`sufficiently why an ordinarily skilled artisan would have considered
`combining the references to arrive at the claimed invention. Inst. Dec. 19–
`21.
`
`9
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`IPR2018-00025
`Patent 7,184,064 B2
`
`
`For example, with respect to the recited “substantially stationary
`finger touch,” we found that Petitioner had not explained why an ordinarily
`skilled artisan would have had a reason to modify Anwar 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. Id. at 20 (citing Ex. 1005,
`14:19–22; Ex. 1007, 72). Petitioner contends in its Request for Rehearing
`that it had explained in its Petition that “stopping at the end of the document
`would have been more natural to a user than allowing the document to scroll
`through blank pages or loop from the beginning; it would have furthered
`Anwar’s goal of moving documents more naturally for a user and allowing
`more facile manipulation; and it would have been trivial to incorporate this
`functionality into Anwar.” Req. Reh’g 14–15. This contention is
`unpersuasive, however, because it does not address why it would have been
`obvious to add Westerman’s feature of stopping a scrolling action upon
`sensing a touch, when Anwar already provides the same feature.
`With respect to the recited “end-of-scroll signal,” we found that
`Petitioner had not explained sufficiently why an ordinarily skilled artisan
`would have considered modifying Anwar 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. Inst. Dec. 20–21. Namely, we
`were 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, or that adding Westerman’s end-of-scroll signal to Anwar would have
`been “entirely natural.” Id. In its Request for Rehearing, Petitioner repeats
`
`10
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`IPR2018-00025
`Patent 7,184,064 B2
`
`its argument that “Anwar discloses that [its] goal applies to its user interface
`processes generally, and certainly to processes like inertial scrolling that use
`velocity determination, the very subject of the paragraph and sentence in
`which the ‘natural way of moving documents through a viewing space’ is
`mentioned.” Req. Reh’g 15. Petitioner also argues that it “has already
`identified the evidence and analysis from the Petition and Terveen
`declaration that details why [an ordinarily skilled artisan] would have found
`it obvious to add this functionality to Anwar’s system.” Id. For the reasons
`discussed above, we remain unpersuaded by these arguments. In particular,
`we find that Anwar’s goal applies in the context of a user moving a
`document, where tactile control of a document can be simulated, and that an
`end-of-scroll signal does not involve a user moving a document.
`Additionally, we find that merely stating that it would have been “expected,”
`“natural,” and “intuitive” to add an end-of-scroll signal to Anwar because it
`would have been “strange,” “bizarre,” “counterintuitive,” and “unnatural”
`not to do so does not adequately support a legal conclusion of obviousness.
`
`
`C. Instituting for Purposes of Efficiency
`Petitioner asserts that “[t]he claims recited by the ’064 patent are
`nearly identical to those recited by [] related [U.S. Patent No. 6,690,387 B2],
`which is the subject of instituted Case No. IPR2018-00023.” Req. Reh’g 2.
`Petitioner further asserts that the “petition in this matter presents grounds
`that are substantively identical to those that the Board must resolve in the
`parallel case [IPR2018-00023].” Id. According to Petitioner, “given the
`near-identity of arguments between the petition in this case and in No.
`IPR2018-00023, it would be most efficient for the Board to institute trial on
`
`11
`
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`IPR2018-00025
`Patent 7,184,064 B2
`
`the grounds presented in this petition and decide the issues common to both
`of the related patents jointly.” Id.
`As we noted in our Institution Decision, 35 U.S.C. § 314 provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petition would prevail with respect to at least 1 of the
`claims challenged in the petition.” Inst. Dec. 2. In that same decision, we
`determined that Petitioner had not demonstrated a reasonable likelihood that
`it would prevail with respect to any challenged claim of the ’064 patent. Id.
`at 23. Having considered Petitioner’s Request for Rehearing, we maintain
`our determination for the reasons discussed above. Accordingly, pursuant to
`35 U.S.C. § 314, we cannot institute an inter partes review in this case even
`if it would be “most efficient” for us to do so.
`
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion by not instituting inter partes review of the challenged
`claims of the ’064 patent on any of the asserted grounds.
`
`
`VI. ORDER
`Accordingly, it is ORDERED that Petitioner’s request for rehearing is
`denied.
`
`
`12
`
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`IPR2018-00025
`Patent 7,184,064 B2
`
`
`
`
`PETITIONER:
`Christina McCullough
`PERKINS COIE LLP
`cmccullough@perkinscoie.com
`
`PATENT OWNER:
`Justin J. Oliver
`Stephen K. Yam
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`philipsipr@fchs.com
`syam@fchs.com
`jdorsky@fchs.com
`
`
`13
`
`
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