Trials@uspto.gov
`571-272-7822
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` Paper 20
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` Entered: June 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00394
`Patent 6,622,018 B1
`____________
`
`Before MIRIAM L. QUINN, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
`
`
` Paper 20
`
`
`
` Entered: June 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00394
`Patent 6,622,018 B1
`____________
`
`Before MIRIAM L. QUINN, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2018-00394
`Patent 6,622,018 B1
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Apple Inc. filed a Petition (Paper 1, “Pet.”) requesting inter
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`partes review of claims 1–27 of U.S. Patent No. 6,622,018 B1 (Ex. 1001,
`
`“the ’018 patent”). Pursuant to 35 U.S.C. § 314(a), we determined Petitioner
`
`showed a reasonable likelihood that it would prevail in establishing the
`
`unpatentability of all challenged claims and instituted an inter partes review.
`
`Paper 7, 25–26. Patent Owner Uniloc Luxembourg, S.A. filed a Response
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`(Paper 10, “Resp.”), and Petitioner filed a Reply to Patent Owner’s
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`Response (Paper 13, “Reply”). An oral hearing was held before the Board.
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`Paper 19.
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`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. Having considered the record before us and as
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`explained below, we determine Petitioner has shown by a preponderance of
`
`the evidence that claims 1–27 of the ’018 patent are unpatentable. See 35
`
`U.S.C. § 316(e).
`
`A. RELATED PROCEEDINGS
`
`The parties assert that the ’018 patent is involved in Uniloc USA, Inc.
`
`v. Logitech, Inc., 3:17-cv-06733-JSC (N.D. Cal. 2017); Uniloc USA, Inc. v.
`
`Wink Labs Inc., 1:17-cv-01656-GMS (D. Del. 2017); Uniloc USA, Inc. v.
`
`Motorola Mobility, LLC, 1:17-cv-01657-GMS (D. Del. 2017); Uniloc USA,
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`Inc. v. Peel Technologies, Inc., 1:17-cv-01552-UNA (D. Del. 2017); Uniloc
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`USA, Inc. v. Huawei Device USA, Inc., 2:17-cv-00707-JRG (E.D. Tex.
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`2017); Uniloc USA, Inc. v. HTC America, Inc., 2:17-cv-01558-JLR (W.D.
`
`Wash. 2017); Uniloc USA, Inc. v. LG Electronics U.S.A., Inc. 4:17-cv-
`
`00825-O (N.D. Tex. 2017); Uniloc USA, Inc. v. Apple, Inc., 2:17-cv-00470-
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`2
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`IPR2018-00394
`Patent 6,622,018 B1
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`
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`JRG (E.D. Tex. 2017); and concurrently filed IPR2018-00395. Pet. 2–3;
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`Paper 4, 2.
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`B. THE ’018 PATENT
`
`The ’018 patent is titled “Portable Device Control Console with
`
`Wireless Connection” and describes a system for controlling a remote device
`
`over a wireless connection. Ex. 1001, Abstract, 1:27–28. The ’018 patent
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`teaches that a portable computer system can control a variety of remote
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`devices, including newly introduced devices. Id. at 3:2–4. To discover new
`
`devices, the portable computer system transmits a broadcast message to
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`discover compliant devices within range. Id. at 8:33–41. Compliant devices
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`receiving the broadcast message then reply to the portable computer system
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`with a response. Id. at 8:42–44. After one or more devices are discovered,
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`the portable computer system can transmit a command to a selected remote
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`device based on the type of device and its capabilities. Id. at 8:56–61. The
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`’018 patent explains that a user can control a remote device by either
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`touching a rendering on the computer system’s display or by using an input
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`device such as a stroke or character recognition pad that can register stylus
`
`movements on the portable computer system. Id. at 6:20–22, 6:67–7:9,
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`9:25–50.
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`C. ILLUSTRATIVE CLAIM
`
`Of the challenged claims, claims 1, 11, and 21 are independent.
`
`Independent claim 1 (reproduced below) is representative.
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`3
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`1. A method for controlling a remote devices over a wireless
`connection, said method comprising:
`
`a) establishing said wireless connection between a transceiver
`and said remote device by:
`
`broadcasting a message, said message for locating remote
`devices within range of said transceiver; and
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`receiving a response from said remote device;
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`b) manifesting said remote device on a display device;
`
`c) registering a position where contact is made with a surface of
`an input device, wherein a particular position on said input
`device is translated into a particular command for controlling
`said remote device; and
`
`d) transmitting a command to said remote device over said
`wireless connection.
`
`Ex. 1001, 12:7–20.
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`D. ASSERTED GROUNDS OF UNPATENTABILITY
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`Petitioner asserts the following grounds of unpatentability:
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`References
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`Basis
`
`Challenged Claim(s)
`
`Ben-Ze’ev1 and Idiot’s Guide2
`
`§ 103(a) 1–7, 9, and 10
`
`§ 103(a) 8
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`§ 103(a) 11–17, 19–25, and 27
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`§ 103(a) 18 and 26
`
`Ben-Ze’ev, Idiot’s Guide, and
`Dara-Abrams3
`Ben-Ze’ev, Idiot’s Guide, and
`Osterhout4
`Ben-Ze’ev, Idiot’s Guide,
`Osterhout, and Dara-Abrams
`
`Pet. 12.
`
`
`
`1 U.S. Patent No. 6,791,467 B1 (Sept. 14, 2004) (Ex. 1007, “Ben-Ze’ev”).
`2 Preston Gralla, THE COMPLETE IDIOT’S GUIDE TO PALMPILOT AND PALM III
`(1999) (Ex. 1008, “Idiot’s Guide”).
`3 U.S. Patent No. 6,456,892 B1 (Sept. 24, 2002) (Ex. 1010, “Dara-Abrams”).
`4 U.S. Patent No. 7,149,506 B2 (Dec. 12, 2006) (Ex. 1011, “Osterhout”).
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`4
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`II. ANALYSIS
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` CLAIM CONSTRUCTION
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`The ’018 patent has not expired, and the Petition was filed before
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`November 13, 2018. Therefore, we interpret terms of the challenged claims
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`according to their broadest reasonable interpretation in light of the
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`specification. See 37 C.F.R. § 42.100(b) (2017).5 Unless the record shows
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`otherwise, we presume a claim term carries its “ordinary and customary
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`meaning,” which is “the meaning that the term would have to a person of
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`ordinary skill in the art in question” at the time of the invention. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`Petitioner asserts that “[t]he plain and ordinary meaning of
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`‘broadcasting a message’ . . . is transmitting the message to all recipients in
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`range.” Reply 2–3 (citing Ex. 1003, 54–55). Patent Owner does not set
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`forth a different construction and appears to adopt the same general
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`understanding for “broadcasting.” See Resp. 9 (asserting that “[a] ‘broadcast
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`message’ as required by the claims is a message sent to every device at
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`once”). We agree with Petitioner that in the context of the ’018 patent,
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`“broadcasting a message” means transmitting a message to all recipients in
`
`range.
`
`
`
`5 See also Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,344 (Oct. 11, 2018) (“The Office will continue to apply
`the BRI standard for construing unexpired patent claims . . . in AIA
`proceedings where a petition was filed before the [November 13, 2018]
`effective date of the rule.”).
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` OBVIOUSNESS OF CLAIMS 1–7, 9, AND 10 BASED ON BEN-ZE’EV AND
`IDIOT’S GUIDE
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`As outlined below, we conclude that Petitioner has shown by a
`
`preponderance of evidence that claims 1–7, 9, and 10 would have been
`
`obvious over Ben-Ze’ev and Idiot’s Guide.
`
`1. Overview of Ben-Ze’ev
`
`Ben-Ze’ev is a U.S. patent titled “Adaptive Remote Controller.” It
`
`teaches “[a] method and system for the remote controlling of appliances.”
`
`See Ex. 1007, Abstract. Ben-Ze’ev’s remote control “adapts itself
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`automatically to its environment so as to remotely control a plurality of
`
`appliances.” Id. Ben-Ze’ev’s “remote controller may be, for example, part
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`of a PDA (Personal Digital Assistance) device, such as 3Com’s PalmPilotTM,
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`or comprise some of the components of such a PDA product or a similar
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`product.” Id. at 10:45–48.
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`Ben-Ze’ev’s Figure 6 is reproduced below.
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`
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`6
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`Figure 6 shows Ben-Ze’ev’s adaptive remote controller. Id. at 10:66–67.
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`The remote controller uses “a wireless communication protocol . . . such as
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`Bluetooth . . . that manages the communication between all components in
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`the network, including at least the appliances, and the one or more remote
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`controllers in its vicinity.” Id. at 9:2–9. Ben-Ze’ev teaches also that its
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`adaptive remote controller includes “an interactive-type display, which can
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`display virtual keys that can be activated by pressing on their display
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`location.” Id. at 8:15–17.
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`2. Overview of Idiot’s Guide
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`Idiot’s Guide describes the features and functionality of a PalmPilot
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`PDA. Ex. 1008, 2. According to Idiot’s Guide, the PalmPilot can be used as
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`a “universal remote-control device” to “control your TV, your CD player,
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`and other items in your home.” Id. at 81. In addition, Idiot’s Guide teaches
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`the PalmPilot includes a touch-sensitive display area called the “Graffiti
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`area,” in which a user can enter information using a stylus. Id. at 32.
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`3. “broadcasting a message” in Ben-Ze’ev
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`Independent claims 1 and 11 recite “broadcasting a message, said
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`message for locating remote devices within range of said transceiver.”
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`Independent claim 21 similarly requires a transceiver “adapted to broadcast
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`a message for locating remote devices within range of said transceiver.”
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`Petitioner asserts that Ben-Ze’ev teaches the broadcasting limitations
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`“because it teaches that its adaptive remote controller ‘periodically
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`interrogates the existence of all appliances in its vicinity’ via an
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`‘interrogation signal [that] is generally sent periodically to all appliances.’”
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`Pet. 27 (quoting Ex. 1007, 10:49–65, 8:41–58); see id. at 79, 81–82.
`
`Petitioner explains, with support from its expert, Dr. Houh, that “[a]
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`7
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`POSITA would understand that Ben-Ze’ev’s adaptive remote controller
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`broadcasts the interrogation signal because the signal is not transmitted to
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`any one particular recipient—it is transmitted to all appliances in the
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`vicinity.” Id. at 27 (citing Ex. 1003, 54–55). Based on its contentions and
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`supporting evidence, we agree with Petitioner that Ben-Ze’ev teaches the
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`independent claims’ broadcasting limitation.
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`Patent Owner argues that Ben-Ze’ev’s interrogation signal is not a
`
`broadcast message because “[a] ‘broadcast message’ . . . is a message sent to
`
`every device at once,” whereas “to ‘interrogate’ multiple machines . . .
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`would have to be done sequentially, one at a time.” Resp. 9. We disagree
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`with Patent Owner that Ben-Ze’ev’s interrogation signal is a one-to-one
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`communication.
`
`Patent Owner’s assertion that interrogating multiple machines would
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`have to be done “sequentially, one at a time,” id., is undermined by evidence
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`presented by Petitioner’s expert, Dr. Houh, who points to several examples
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`describing a singular “interrogation” message that is “broadcast” to multiple
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`recipients. See Ex. 1031 (citing Ex. 1032, 1:59–2:2; Ex. 1034, 4:29–36). In
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`addition, as Dr. Houh explains, a wireless message must include an address
`
`or other individual recipient identifier for the message to be directed to an
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`individual recipient. Ex. 1031 ¶ 13 (citing Ex. 1013, 6). Yet in Ben-Ze’ev
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`there is no description of the interrogation signal containing any such
`
`recipient identifier. To the contrary, Ben-Ze’ev describes its interrogation
`
`signal as containing only “the remote controller device code” and “an
`
`interrogation code asking the device to identify itself.” Ex. 1007, 10:51–54.
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`As Petitioner explains, “[t]he absence of an appliance identifier in the
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`interrogation signal follows from Ben-Ze’ev’s teaching that the signal
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`explicitly asks a receiving device ‘to identify itself’” and “when the
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`interrogation signal is sent to all appliances, ‘the appliances respond with
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`their identification.’” Reply 11 (quoting Ex. 1007, 10:51–54, 10:57–59).
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`Moreover, Ben-Ze’ev explains that the purpose of its interrogation process is
`
`to discover “the existence of all appliances in its vicinity.” Ex. 1007, 10:49–
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`51 (emphasis added). We agree with Petitioner that “[s]imple logic dictates
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`that if the remote controller does not yet know of the existence of nearby
`
`appliances before sending the interrogation signal, the interrogation signal
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`cannot be communicated to a specific appliance.” Reply 10.
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`4. Combining Ben-Ze’ev and Idiot’s Guide
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`Petitioner relies on Ben-Ze’ev as disclosing the adaptive remote
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`controller limitations recited by the challenged independent claims, and
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`Idiot’s Guide for disclosing “registering a position where contact is made
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`with a surface of an input device, wherein a particular position on said input
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`device is translated into a particular command for controlling said remote
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`device.” See Pet. 25–40. Specifically, Petitioner asserts that it would have
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`been obvious to one skilled in the art to modify Ben-Ze’ev’s adaptive remote
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`controller to include the Graffiti writing area input device disclosed in the
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`Idiot’s Guide, because Ben-Ze’ev “expressly instruct[s] to consider ‘the
`
`components’ and features of personal digital assistants (PDAs), such as
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`3Com’s PalmPilot devices,” Pet. 21 (citing Ex. 1007, 10:45–48), and
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`“Idiot’s Guide describes the features and functionality of a well-known
`
`PDA, the PalmPilot,” id. at 22. Petitioner goes on to explain that “by giving
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`the user the choice of inputting commands into Ben-Ze’ev’s adaptive remote
`
`controller via the Graffiti writing area or the touchscreen, the user can select
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`the more efficient option in order to ‘save time.’” Id. at 23 (quoting Ex.
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`9
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`1008, 78). Petitioner further supports its proffered reason to combine Ben-
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`Ze’ev and Idiot’s Guide with an archived webpage screenshot describing
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`PalmPilot software called “PalmRemote.” Id. at 22–24. The page shows
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`providing users with the option of using Graffiti commands in a Graffiti
`
`writing area to control various functions of a consumer electronic device.
`
`Id.
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`Based on its assertions, we conclude Petitioner has articulated
`
`sufficient reasoning with some rational underpinning to support the legal
`
`conclusion that its proffered combination of Ben-Ze’ev and Idiot’s Guide
`
`would have been obvious to one of ordinary skill in the art. See KSR Int’l
`
`Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In particular, we agree with
`
`Petitioner that its proffered combination “amounts to combining prior art
`
`elements according to known methods to yield the predictable and beneficial
`
`result of Ben-Ze’ev’s adaptive remote controller having an input device,
`
`such as the Graffiti writing area, through which a user could remotely
`
`control appliances with stylus command strokes.” Pet. 24–25; see KSR, 550
`
`U.S. at 416 (“The combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable
`
`results.”).
`
`We also agree with Petitioner that one skilled in the art would have
`
`had the technical skills to successfully combine Ben-Ze’ev’s adaptive
`
`remote controller to include the PalmPilot’s Graffiti writing area. See
`
`Pet. 24–25 (citing Ex. 1003 ¶¶ 76–77). As Petitioner explains, “[t]he Idiot’s
`
`Guide and PalmPilot for Dummies provide ample evidence that
`
`POSITAs . . . could ‘customize the PalmPilot in about a zillion different
`
`ways,’ for example, to ‘add features or to make your PalmPilot behave
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`10
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`differently than a normal PalmPilot.’” Reply 17 (quoting Ex. 1008, 96;
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`Ex. 1009, 19); see Pet. 24–25 (citing Ex. 1003; Ex. 1008; Ex. 1009).
`
`Patent Owner argues that Petitioner’s rationale is insufficient for
`
`several reasons. First, Patent Owner argues that the PalmRemote software
`
`illustrated in Exhibit 1020 does not support that a skilled artisan would have
`
`been motivated to modify Ben-Ze’ev’s adaptive remote controller to include
`
`the Graffiti writing area. Resp. 13–17. According to Patent Owner a “mere
`
`illustration” of the PalmRemote software does not establish that the software
`
`actually existed or that a POSITA possessed the “technical ability and know-
`
`how” to make the proposed combination. Id. at 14–15. Petitioner, however,
`
`does not rely on the PalmRemote screenshot to show a skilled artisan’s
`
`technical ability or know-how. Rather, Petitioner references PalmRemote
`
`software as implicit support for its reason to combine. Petitioner’s evidence
`
`supports its contention that “artisans in the field had already contemplated
`
`(and most likely implemented) the very combination proposed in the
`
`Petition.” Reply 15–16 (citing Nat’l Steel Car, Ltd. v. Can. Pac. Ry., Ltd.,
`
`357 F.3d 1319, 1338–39 (Fed. Cir. 2004) (holding that an engineer’s
`
`drawing of a rail car, even if it was never built, can “be used to demonstrate
`
`a motivation to combine implicit in the knowledge of one of skill in the
`
`art”)).
`
`Patent Owner also argues the Petition is deficient because it fails to
`
`disclose the necessary modifications to Ben-Ze’ev to arrive at the proposed
`
`combination. Resp. 18. We disagree with Patent Owner’s argument. “The
`
`test for obviousness is not whether the features of a secondary reference may
`
`be bodily incorporated into the structure of the primary reference,” In re
`
`Keller, 642 F.2d 413, 425 (CCPA 1981), but whether “a skilled artisan
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`would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention,” Pfizer, Inc. v. Apotex, Inc., 480
`
`F.3d 1348, 1361 (Fed. Cir. 2007). Although an obviousness challenge needs
`
`to account for all claim limitations, we are not aware of any requirement
`
`(and Patent Owner cites to none) that a challenge must show all of the
`
`unclaimed implementation and design details for an asserted combination.
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`Here, we are persuaded that Petitioner has shown sufficient detail regarding
`
`the asserted motivation to combine the teachings of Ben-Ze’ev and the
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`Idiot’s Guide.
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`Finally, Patent Owner asserts “Petitioner’s declarant merely parrots
`
`the same conclusory statements as in the Petition, without providing the
`
`required ‘explanation as to how or why the references would be combined to
`
`produce the claimed invention.’” Resp. 13 (quoting TriVascular, Inc. v.
`
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). Again, we disagree.
`
`Petitioner explains, with relevant support from its expert, the reasons one
`
`skilled in the art would have combined the asserted prior-art teachings—i.e.,
`
`why the proffered combination would have been obvious. See, e.g., Pet. 21–
`
`22 (asserting that “a POSITA would have found it predictable and
`
`advantageous to utilize the PalmPilot’s Graffiti writing area to control the
`
`remote appliances described in Ben-Ze’ev”) (citing Ex. 1003 ¶ 71); id. at 24
`
`(asserting that “executing a command with the Command stroke in the
`
`Graffiti writing area can be ‘much faster’ than tapping on the touch screen”)
`
`(citing Ex. 1003 ¶ 75). We are persuaded that, here, Dr. Houh’s testimony
`
`on this issue is more than mere conclusory statements, and we credit it
`
`accordingly. See KSR, 550 U.S. at 418 (distinguishing between “mere
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`conclusory statements” and “some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness”).
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`5. Undisputed Elements
`
`As outlined below, Petitioner has shown by a preponderance of the
`
`evidence that the combination of Ben-Ze’ev and Idiot’s Guide teaches the
`
`remaining limitations of claims 1–7, 9, and 10. Patent Owner does not
`
`contest Petitioner’s assertions in this regard beyond the arguments addressed
`
`above.
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`a. Claim 1
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`Petitioner has shown that Ben-Ze’ev teaches “[a] method for
`
`controlling a remote devices over a wireless connection,” as claim 1
`
`requires. See Pet. 25 (citing Ex. 1007, Abstract, 1:5–11, 5:10–20, 6:34–48,
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`7:62–65, 9:2–12; Ex. 1003, 46–49). Petitioner has shown that Ben-Ze’ev
`
`teaches “establishing said wireless connection between a transceiver and
`
`said remote device,” as claim 1 requires. See id. at 26–27 (citing Ex. 1007,
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`Fig. 3 Abstract, 2:34–47, 6:34-48, 7:8–17, 8:12–15, 8:41–58, 9:2–9, 12:37–
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`40, 15:21–23; Ex. 1003, 49–53). Petitioner has shown that Ben-Ze’ev
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`teaches “broadcasting a message, said message for locating remote devices
`
`within range of said transceiver,” as claim 1 requires. See id. at 27–28
`
`(citing Ex. 1007, 2:58–63, 8:41–58, 10:49–65; Ex. 1003, 53–55). Petitioner
`
`has shown that Ben-Ze’ev teaches “receiving a response from said remote
`
`device,” as claim 1 requires. See id. at 28 (citing Ex. 1007, 8:41–58, 10:49–
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`65; Ex. 1003, 55–56). Petitioner has shown that Ben-Ze’ev teaches
`
`“manifesting said remote device on a display device,” as claim 1 requires.
`
`See id. at 28–29 (citing Ex. 1007, Fig. 6, 10:66–11:14, 11:21–24; Ex. 1003,
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`56–58). Petitioner has shown that the combination of Ben-Ze’ev and Idiot’s
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`Guide teaches “registering a position where contact is made with a surface
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`of an input device,” as claim 1 requires. See id. at 29–33 (citing Ex. 1007,
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`Fig. 7, 4:42–46, 8:15–17, 10:45–48, 12:25–31; Ex. 1008, 26, 32, 33, 35, 64–
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`66; Ex. 1003, 58–62). Petitioner has shown that the combination of Ben-
`
`Ze’ev and Idiot’s Guide teaches “wherein a particular position on said input
`
`device is translated into a particular command for controlling said remote
`
`device,” as claim 1 requires. See id. at 33–39 (citing Ex. 1007, 4:42–46,
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`8:15–17, 9:46–51, 9:60–10:25, 10:36–41, 12:25–40, 14:7–14; Ex. 1008, 4,
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`32–33, 64, 66–69, 78; Ex. 1003, 61–70). Petitioner has shown that Ben-
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`Ze’ev teaches “transmitting a command to said remote device over said
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`wireless connection,” as claim 1 requires. See id. at 39–40 (citing Ex. 1007,
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`Abstract, 5:21–37, 8:41–58, 9:2–12, 10:36–41, 12:35–40; Ex. 1003, 70–72).
`
`b. Claim 2
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`Petitioner has shown that the combination of Ben-Ze’ev and Idiot’s
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`Guide teaches the additional limitation in dependent claim 2: “wherein said
`
`step c) comprises the step of: registering a position where a stylus element
`
`makes contact with said surface of said input device.” See id. at 40–41
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`(citing Ex. 1007, 10:45–48; Ex. 1008, 64–65; Ex. 1003, 72–73).
`
`c. Claim 3
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`Petitioner has shown that Idiot’s Guide teaches “wherein said step c)
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`further comprises the step of: recognizing a movement of said stylus element
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`over said surface of said input device,” as dependent claim 3 requires. See
`
`id. at 41–42 (citing Ex. 1008, 25, 32, 64–65, 68; Ex. 1003, 73–75).
`
`Petitioner has shown that the combination of Ben-Ze’ev and Idiot’s Guide
`
`also teaches “wherein a particular movement of said stylus element is
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`translated into a particular command for controlling said remote device,” as
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`claim 3 requires. See id. at 42–44 (citing Ex. 1007, 12:25–40; Ex. 1008, 25,
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`64, 66, 68; Ex. 1003, 75–77).
`
`d. Claim 4
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`Petitioner has shown that the combination of Ben-Ze’ev and Idiot’s
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`Guide teaches “registering a position where said stylus element makes
`
`contact with a screen of said display device,” as dependent claim 4 requires.
`
`See id. at 44–45 (citing Ex. 1007, 4:42–46, 8:15–20, 12:31–35; Ex. 1008, 27,
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`42–43; Ex. 1003, 78–80). Petitioner has shown that the combination of Ben-
`
`Ze’ev and Idiot’s Guide also teaches “wherein a particular position on said
`
`screen is translated into a particular command for controlling said remote
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`device,” as claim 4 requires. See id. at 45–46 (citing Ex. 1007, Fig. 7, 4:42–
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`48, 8:15–20, 10:36–41, 12:25–51, 14:6–14; Ex. 1003, 80–83).
`
`e. Claim 5
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`Petitioner has shown that Ben-Ze’ev teaches “receiving responses
`
`from a plurality of remote devices,” as dependent claim 5 requires. See id. at
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`46 (citing Ex. 1007, 7:8–17, 10:54–60, 11:21–24; Ex. 1003, 83–84).
`
`Petitioner has shown that the combination of Ben-Ze’ev and Idiot’s Guide
`
`also teaches “manifesting each of said plurality of remote devices on said
`
`display device” and “selecting one of said plurality of remote devices” as
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`claim 5 requires. See id. at 47–48 (citing Ex. 1007, Fig. 6, 10:66–11:7,
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`11:21–34, 12:25–31; Ex. 1003, 85–87).
`
`f. Claim 6
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`Petitioner has shown that Ben-Ze’ev teaches the additional limitation
`
`in dependent claim 6: “displaying on said display device a rendering of a
`
`mechanism for controlling said remote device.” See id. at 48–49 (citing
`
`Ex. 1007, Fig. 7, 9:31–45, 12:29–40; Ex. 1003, 87–89).
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`g. Claim 7
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`Petitioner has shown that Ben-Ze’ev teaches the additional limitation
`
`in dependent claim 7: “contacting a particular position in said rendering
`
`wherein said contacting is translated into a particular command
`
`corresponding to said particular position.” See id. at 49–51 (citing Ex. 1007,
`
`Fig. 7, 4:42–48, 8:15–20, 9:31–51, 10:36–41, 12:29–40; Ex. 1003, 90–92).
`
`h. Claim 9
`
`Petitioner has shown that the combination of Ben-Ze’ev and Idiot’s
`
`Guide teaches the additional limitations in dependent claim 9: “displaying
`
`on said display device a menu of commands for controlling said remote
`
`device” and “contacting a particular position in said menu, wherein said
`
`contacting is translated into a particular command corresponding to said
`
`particular position.” See id. at 51–54 (citing Ex. 1007, 4:42–48, 10:26–41;
`
`Ex. 1008, 42, 43, 68, 77; Ex. 1003, 93–96).
`
`i. Claim 10
`
`Petitioner has shown that Ben-Ze’ev teaches the additional limitation
`
`in dependent claim 10: “wherein said transceiver and said remote device are
`
`Bluetooth-enabled devices.” See id. at 54–55 (citing Ex. 1007, 9:2–9, 6:49–
`
`52, 8:41–58, 10:57–65; Ex. 1003, 96–98).
`
` OBVIOUSNESS OF CLAIM 8 BASED ON BEN-ZE’EV, IDIOT’S GUIDE, AND
`DARA-ABRAMS
`
`As outlined below, we conclude that Petitioner has shown by a
`
`preponderance of evidence that claim 8 would have been obvious over Ben-
`
`Ze’ev, Idiot’s Guide, and Dara-Abrams.
`
`1. Combining Dara-Abrams with Ben-Ze’ev/Idiot’s Guide
`
`Petitioner relies on Dara-Abrams for teaching dependent claim 8’s
`
`user-interactive GUI element. See Pet. 56. Petitioner explains, with support
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`from the prior art references, that “like Ben-Ze’ev, Dara-Abrams is
`
`concerned with developing a ‘mechanism for interfacing with electronic
`
`devices that is flexible and can adapt to new devices and device types within
`
`the consumer electronics market.’” Pet. 57 (quoting Ex. 1010, 4:8–11 and
`
`citing Ex. 1007, 3:54–57). Petitioner adds that including Dara-Abrams’
`
`animated GUI control elements in Ben-Ze’ev’s GUI “would advance Ben-
`
`Ze’ev’s stated goal of ‘provid[ing] an adaptive remote controller that is
`
`much more user-friendly’ and that can ‘handle any remote controlled
`
`appliance, of any type, model, and with any type of feature.’” Pet. 57–58
`
`(quoting Ex. 1007, 3:18–22, 2:40–44). Patent Owner does not challenge
`
`Petitioner’s assertion in this regard. We conclude Petitioner has articulated
`
`sufficient reasoning with some rational underpinning to support the legal
`
`conclusion that its proffered combination of Dara-Abrams with Ben-Ze’ev
`
`and Idiot’s Guide would have been obvious to one of ordinary skill in the
`
`art.
`
`2. Claim Elements
`
`Petitioner has shown that Dara-Abrams accounts for the additional
`
`limitation in claim 8: “imparting motion to said rendering in response to
`
`movement of a stylus element over said surface of said input device.” See
`
`id. at 62–65 (citing Ex. 1010, Abstract, 5:2–19, 9:30–36, 10:3–14, 19:5–6,
`
`19:53–67, 20:1–12, 20:23–43; Ex. 1003, 108–114). Patent Owner does not
`
`contest Petitioner’s assertion in this regard.
`
` OBVIOUSNESS OF CLAIMS 11–17, 19–25, AND 27 BASED ON BEN-
`ZE’EV, IDIOT’S GUIDE, AND OSTERHOUT
`
`As outlined below, we conclude that Petitioner has shown by a
`
`preponderance of evidence that claims 11–17, 19–25, and 27 would have
`
`been obvious over Ben-Ze’ev, Idiot’s Guide, and Osterhout.
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`1. Combining Osterhout with Ben-Ze’ev/Idiot’s Guide
`
`Petitioner relies on Osterhout for teaching internal structural elements
`
`of a PDA, including the screen, pen-type input, wireless transceiver, and
`
`processor, each coupled together via bus. See Pet. 67. Petitioner explains,
`
`with support from the prior art references and its expert, that although Ben-
`
`Ze’ev notes that its adaptive remote controller can be “part of a PDA
`
`(Personal Digital Assistance) device,” Ben-Ze’ev does not “provide explicit
`
`details with respect to how its components are coupled together.” Id. at 66–
`
`67 (citing Ex. 1007, 10:45–48; Ex. 1003 ¶ 99). According to Petitioner, one
`
`skilled in the art, “when considering Ben-Ze’ev would have naturally
`
`considered teachings in the art more fully describing the internal structure of
`
`personal digital assistants similar to the adaptive remote controller.” Id. at
`
`67 (citing Ex. 1003 ¶ 101). Patent Owner does not challenge Petitioner’s
`
`assertion in this regard. We conclude Petitioner has articulated sufficient
`
`reasoning with some rational underpinning to support the legal conclusion
`
`that its proffered combination of Osterhout with Ben-Ze’ev and Idiot’s
`
`Guide would have been obvious to one of ordinary skill in the art.
`
`2. Undisputed Elements
`
`As outlined below, Petitioner has shown by a preponderance of the
`
`evidence that the combination of Ben-Ze’ev, Idiot’s Guide, and Osterhout
`
`teaches the limitations of claims 11–17, 19–25, and 27. Beyond the
`
`arguments addressed above, Patent Owner does not contest Petitioner’s
`
`assertions in this regard.
`
`a. Claim 11
`
`Petitioner has shown that the combination of Ben-Ze’ev and
`
`Osterhout teaches “[a] computer system comprising: a bus,” “a processor
`
`coupled to said bus,” “a transceiver coupled to said bus,” and “a display
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`device coupled to said bus,” as claim 11 requires. See Pet. 68–75 (citing Ex.
`
`1007, Fig. 3, Fig. 6, Abstract, 1:5–11, 4:42–46, 5:10–20, 7:62–65, 8:10–40,
`
`8:52–58, 10:45–48, 12: 31–35, 12:37–40, 15:21–23; Ex. 1011, Fig. 3, 8:3–
`
`25; Ex. 1003, 118–132). Petitioner has shown that the combination of Ben-
`
`Ze’ev, Idiot’s Guide, and Osterhout teaches “an input device coupled to said
`
`bus” as claim 11 requires. See id. at 75–77 (citing Ex. 1007, 10:45–48; Ex.
`
`1008, 25, 26 32, 35, 64); Ex. 1011, Fig. 3, 8:3–25; Ex. 1003, 132–135).
`
`Petitioner has shown that Ben-Ze’ev teaches “said processor for performing
`
`a method for controlling a remote device over a wireless connection, said
`
`method comprising the computer-implemented steps of:” as claim 11
`
`requires. See id. at 78 (citing Ex. 1007, Abstract, 1:5–11, 5:10–20, 6:34–48,
`
`7:72–65, 8:10–40, 9:2–12; Ex. 1003, 135–139). Petitioner has shown that
`
`the combination of Ben-Ze’ev and Idiot’s Guide teaches “a) establishing
`
`said wireless connection between said transceiver and said remote device by:
`
`broadcasting a message, said message for locating remote devices within
`
`range of said transceiver; and receiving a response from said remote device;
`
`b) manifesting said remote device on a display device; c) registering a
`
`position where contact is made with a surface of an input device, wherein a
`
`particular position on said input device is translated into a particular
`
`command for controlling said remote device; and d) transmitting a command
`
`to said remote device over said wireless connection,” as claim 11 requires.
`
`See id. at 78–79 (referring to parallel limitations in claim 1 and citing
`
`Ex. 1003, 139–140).
`
`b. Claims 12–17, 19, and 20
`
`As Petitioner notes, dependent claims 12–17, 19, and 20 parallel
`
`claims 2–7, 9, and 10. Pet. 79. Thus, based on the analysis noted above for
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`19
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`claims 2–7, 9, and 10, Petitioner has shown that the combination of Ben-
`
`Ze’ev, Idiot’s Guide and Osterhout teaches the additional limitations in
`
`dependent claims 12–17, 19, and 20. See id. at 79 (citing Ex. 1003, 140–
`
`145).
`
`c. Claim 21
`
`Petitioner has shown that Ben-Ze’ev teaches “[a] hand-held computer
`
`system for controlling a remote device over a radio connection,” as claim 21
`
`requires. See id. 79–80 (citing
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