Trials@uspto.gov
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` Paper No. 7
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` Entered: June 29, 2018
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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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
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` Paper No. 7
`
`
` Entered: June 29, 2018
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2018-00394
`Patent 6,622,018 B1
`
`
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
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`inter partes review of claims 1–27 of U.S. Patent No. 6,622,018 B1 (Ex.
`
`1001, “the ’018 patent”). Uniloc Luxembourg, S.A. (“Patent Owner”) filed
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`a Preliminary Response (Paper 6, “PO Prelim. Resp.”).
`
`
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`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
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`instituted unless “the information presented in the petition . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” Having considered the
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`Petition and the Preliminary Response, we determine that there is a
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`reasonable likelihood that Petitioner would prevail in establishing that
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`claims 1–27 of the ’018 patent are unpatentable. Therefore, for the reasons
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`set forth below, we institute an inter partes review of claims 1–27.
`
`I. BACKGROUND
`
`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,
`
`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.
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`Wash. 2017); Uniloc USA, Inc. v. LG Electronics U.S.A., Inc. 4:17-cv-
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`00825-O (N.D. Tex. 2017); Uniloc USA, Inc. v. Apple, Inc., 2:17-cv-00470-
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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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`2
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`Patent 6,622,018 B1
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`B. THE ’018 PATENT
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`The ’018 patent is titled “Portable Device Control Console with
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`Wireless Connection” and describes a system for controlling a remote device
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`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
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`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
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`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
`
`
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`Of the challenged claims, claims 1, 11, and 21 are independent.
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`Independent claim 1 (reproduced below) is representative.
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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:
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`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;
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`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
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`d) transmitting a command to said remote device over said
`wireless connection.
`
`Ex. 1001, 12:7–19.
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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
`Ben-Ze’ev1 and Idiot’s Guide2
`Ben-Ze’ev, Idiot’s Guide, and
`Dara-Abrams3
`Ben-Ze’ev, Idiot’s Guide, and
`Osterhout4
`
`Challenged Claim(s)
`Basis
`§ 103(a) 1–7, 9, and 10
`§ 103(a) 8
`
`§ 103(a) 11–17, 19–25, and 27
`
`
`1 U.S. Patent No 6,791,467 B1 (Sep. 14, 2004) (Ex. 1007, “Ben-Ze’ev”).
`2 Person 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 (Sep. 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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`IPR2018-00394
`Patent 6,622,018 B1
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`
`References
`Ben-Ze’ev, Idiot’s Guide,
`Osterhout, and Dara-Abrams
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`Pet. 12.
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`Challenged Claim(s)
`Basis
`§ 103(a) 18 and 26
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`II. ANALYSIS
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`A. CLAIM CONSTRUCTION
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`Neither party offers any express claim constructions. See Pet. 11; PO
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`Prelim. Resp. 7. We conclude no additional express claim construction is
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`necessary for our determination of whether to institute inter partes review of
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`the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
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`are in controversy, and only to the extent necessary to resolve the
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`controversy.”).
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`1. Ben-Ze’ev (Ex. 1007)
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`B. ASSERTED PRIOR ART
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`Ben-Ze’ev is a U.S. patent titled “Adaptive Remote Controller.” It
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`teaches “a method and system for the remote controlling of appliances.” See
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`Ex. 1007, Abstract. Ben-Ze’ev’s remote control “adapts itself automatically
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`to its environment so as to remotely control a plurality of appliances.” Id.
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`Ben-Ze’ev’s “remote controller may be, for example, part of a PDA
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`(Personal Digital Assistance) device, such as 3Com’s PalmPilotT M, or
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`comprise some of the components of such a PDA product or 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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`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 communication between all components in the
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`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. Idiot’s Guide (Ex. 1008)
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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 a graffiti area in
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`which a user can enter information using a stylus.
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`3. Dara-Abrams (Ex. 1010)
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`Dara-Abrams is a U.S. patent titled “Data Driven Interaction for
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`Networked Control of a DDI Target Device over a Home Entertainment
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`Network.” Dara-Abrams is directed to “a mechanism for interfacing with
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`electronic devices that operates using a remote controller and a central
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`display for instructing different electronic devices and for receiving Status
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`information regarding the different electronic devices.” Ex. 1010, 4:21–25.
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`Dara-Abrams describes a number of user-interactive GUI elements on the
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`controller including buttons, dials, sliders, and toggles. Id. at 19:5–6, 19:56–
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`62.
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`4. Osterhout (Ex. 1011)
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`Osterhout is a U.S. patent titled “Portable Call Management System.”
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`Osterhout discloses internal structural elements of a PDA, including the
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`screen, pen-type input, wireless transceiver, and processor, each coupled
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`together via bus. Ex. 1011, Fig. 3, 8:7–21.
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`C. ANALYSIS
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`1. Ground 1: Obviousness of Claims 1–7, 9, and 10 Based on Ben-Ze’ev
`and Idiot’s Guide
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`Petitioner asserts claims 1–7, 9, and 10 would have been obvious over
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`Ben-Ze’ev and Idiot’s Guide. Pet. 13–55. On the current record, we
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`determine that Petitioner has set forth a reasonable likelihood of succeeding
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`on this challenge, as outlined below.
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`a. “broadcasting a message”
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`Independent claim 1 requires “broadcasting a message, said message
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`for locating remote devices within range of said transceiver.” Petitioner
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`asserts that Ben-Ze’ev teaches the broadcasting limitation “because it
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`teaches that its adaptive remote controller ‘periodically interrogates the
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`existence of all appliances in its vicinity’ via an ‘interrogation signal [that] is
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`generally sent periodically to all appliances.’” Pet. 27 (quoting Ex. 1007,
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`10:49–65, 8:41–58). Petitioner explains, with support from its Expert, Dr.
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`Houh, that “[a] POSITA would understand that Ben-Ze’ev’s adaptive remote
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`controller broadcasts the interrogation signal because the signal is not
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`transmitted to any one particular recipient—it is transmitted to all appliances
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`in the vicinity.” Id. (citing Ex. 1003, 54–55).
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`Patent Owner, citing support from its expert, Mr. Easttom, argues that
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`Ben-Ze’ev’s interrogation signal is not a broadcast message because “a
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`‘broadcast message’. . . is a message sent to every device at once,” whereas
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`“to ‘interrogate’ multiple machines would mean doing so sequentially, one
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`at a time.” PO Prelim. Resp. 17 (citing Ex. 2001 ¶¶ 45, 48).
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`We find that Dr. Houh’s and Mr. Easttom’s competing testimony
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`creates a genuine issue of material fact as to whether Ben-Ze’ev’s
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`interrogation signal teaches the claimed broadcasting feature. At this stage
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`of the proceeding, however, we view such evidence in the light most
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`favorable to the Petitioner. See 37 C.F.R. § 42.108(c). Accordingly, on this
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`record, Petitioner provides adequate evidence that Ben-Ze’ev discloses
`
`broadcasting a message for locating remote devices within range of the
`
`transceiver as the challenged claims require.
`
`b. Undisputed Elements
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`On this record and for purposes of this Decision, Petitioner has made
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`an adequate showing (unchallenged by Patent Owner in its Preliminary
`
`Response) that the combination of Ben-Ze’ev and Idiot’s Guide teaches or
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`suggests the remaining limitations of claims 1–7, 9, and 10, as outlined
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`below.
`
`i. Claim 1
`
`Petitioner made an adequate showing 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, 7:62–65, 9:2–12; Ex. 1003, 46–49). Petitioner made an adequate
`
`showing that Ben-Ze’ev teaches “establishing said wireless connection
`
`between a transceiver and said remote device by,” as claim 1 requires. See
`
`id. at 26–27 (citing Ex. 1007, Fig. 3 Abstract, 2:34–47, 6:34-48, 7:8-17,
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`8:12–15, 8:41–58, 9:2–9:9, 12:37–40, 15:21–23; Ex. 1003, 49–53).
`
`Petitioner made an adequate showing that Ben-Ze’ev 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,
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`8:41–58, 10:49–65; Ex. 1003, 53–55). Petitioner made an adequate showing
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`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, 10:49–65; Ex.
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`1003, 55–56). Petitioner made an adequate showing that Ben-Ze’ev teaches
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`“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,
`
`56–58). Petitioner made an adequate showing that the combination of Ben-
`
`Ze’ev and Idiot’s Guide teaches “registering a position where contact is
`
`made with a surface of an input device,” as claim 1 requires. See id. at 29–
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`33 (citing Ex. 1007, Fig. 7, 4:42–46, 8:15–17, 10:45–48, 12:25–31; Ex.
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`1008, 26, 32, 33, 35, 64–66; Ex. 1003, 58–62). Petitioner made an adequate
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`showing that the combination of Ben-Ze’ev and Idiot’s Guide teaches
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`“wherein a particular position on said input device is translated into a
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`particular command for controlling said remote device,” as claim 1 requires.
`
`See id. at 33–39 (citing Ex. 1007, 4:42–46, 8:15–17, 9:46–51, 9:60–10:25,
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`10:36–41, 12:25–40, 14:7–14; Ex. 1008, 4, 32–33, 64, 66–69, 78; Ex. 1003,
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`61–70). Petitioner made an adequate showing that Ben-Ze’ev teaches
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`“transmitting a command to said remote device over said wireless
`
`connection,” as claim 1 requires. See id. at 39–40 (citing Ex. 1007, Abstract,
`
`5:21–37, 8:41–58, 9:2–12, 10:36–41, 12:35–40; Ex. 1003, 70–72).
`
`ii. Claim 2
`
`Petitioner made an adequate showing that the combination of Ben-
`
`Ze’ev and Idiot’s Guide teaches the additional limitation in dependent claim
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`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 (citing Ex. 1007, 10:45–48; Ex. 1008, 64–65; Ex. 1003, 72–73).
`
`iii. Claim 3
`
`Petitioner made an adequate showing that Idiot’s Guide teaches
`
`“wherein said step c) further comprises the step of: recognizing a movement
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`of said stylus element over said surface of said input device,” as dependent
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`claim 3 requires. See id. at 41–42 (citing Ex. 1008, 25, 32, 64–65, 68; Ex.
`
`1003, 73–75). Petitioner made an adequate showing that the combination of
`
`Ben-Ze’ev and Idiot’s Guide also teaches “wherein a particular movement of
`
`said stylus element is translated into a particular command for controlling
`
`said remote device,” as claim 3 requires. See id. at 42–44 (citing Ex. 1007,
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`12:25–40; Ex. 1008, 25, 64, 66, 68; Ex. 1003, 75–77).
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`iv. Claim 4
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`Petitioner made an adequate showing that the combination of Ben-
`
`Ze’ev and Idiot’s Guide teaches “registering a position where said stylus
`
`element makes contact with a screen of said display device,” as dependent
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`claim 4 requires. See id. at 44–45 (citing Ex. 1007, 4:42–46, 8:15–20,
`
`12:31–35; Ex. 1008, 27, 42–43, Ex. 1003, 78–80). Petitioner made an
`
`adequate showing 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 device,” as claim 4 requires.
`
`See id. at 45–46 (citing Ex. 1007, Fig. 7, 4:42–48, 8:15–20, 10:36–41,
`
`12:25–51, 14:6–14; Ex. 1003, 80–83).
`
`v. Claim 5
`
`Petitioner made an adequate showing that Ben-Ze’ev teaches
`
`“receiving responses from a plurality of remote devices,” as dependent claim
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`5 requires. See id. at 46 (citing Ex. 1007, 7:8–17, 10:54–60, 11:21–24;
`
`Ex. 1003, 83–84). Petitioner made an adequate showing 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
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`one of said plurality of remote devices” as claim 5 requires. See id. at 47–48
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`(citing Ex. 1007, Fig. 6, 10:66–11:7, 11:21–34, 12:25–31; Ex. 1003, 85–87).
`
`vi. Claim 6
`
`Petitioner made an adequate showing 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).
`
`vii. Claim 7
`
`Petitioner made an adequate showing 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).
`
`viii. Claim 9
`
`Petitioner made an adequate showing 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,
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`4:42–48, 10:26–41; Ex. 1008, 42, 43, 68, 77; Ex. 1003, 93–96).
`
`ix. Claim 10
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`Petitioner made an adequate showing that Ben-Ze’ev teaches the
`
`additional limitations in dependent claim 10: “wherein said transceiver and
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`said remote device are Bluetooth-enabled devices.” See id. at 54–55 (citing
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`Ex. 1007, 9:2–9, 6:49–52, 8:41–58, 10:57–65; Ex. 1003, 96–98).
`
`c. Rationale for Combining Ben-Ze’ev and Idiot’s Guide
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`Based on the current record and for purposes of this Decision,
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`Petitioner has articulated sufficient reasoning with some rational
`
`underpinning to support the legal conclusion that its proffered combination
`
`of prior art teachings 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). Petitioner
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`asserts that it would have been obvious to one skilled in the art to modify
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`Ben-Ze’ev’s adaptive remote controller to include the graffiti writing area
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`input device, as disclosed in the Idiot’s Guide, because Ben-Ze’ev
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`“expressly instruct[s] to consider ‘the components’ and features of personal
`
`digital assistants (PDAs), such as 3Com’s PalmPilot devices,” Pet. 21 (citing
`
`Ex. 1007, 10:45–48), and “[t]he Idiot’s Guide describes the features and
`
`functionality of a well-known PDA, the PalmPilot,” id. at 22. Petitioner
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`goes on to explain that “by giving the user the choice of inputting commands
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`into Ben-Ze’ev’s adaptive remote controller via the Graffiti writing area or
`
`the touchscreen, the user can select the more efficient option in order to
`
`‘save time.’” Id. at 23 (quoting Ex. 1008, 78). In sum, at this juncture, 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
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`device, such as the Graffiti writing area, through which a user could
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`remotely control appliances with stylus command strokes.” Pet. 24–25; see
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`KSR, 550 U.S. 398, 416 (“The combination of familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield
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`predictable results.”). Thus, on this record, Petitioner has shown adequately
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`that one skilled in the art would have had reason to combine the teachings of
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`Ben-Ze’ev and Idiot’s Guide.
`
`Patent Owner argues that Petitioner’s rationale is insufficient. First,
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`Patent Owner contends, Petitioner relies on a screenshot of PalmRemote
`
`software without providing any evidence that the software actually existed.
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`PO Prelim. Resp. 9–10. Petitioner, however, does not rely on the screenshot
`
`to show an actual product predating the ’018 patent. Rather, Petitioner
`
`merely references PalmRemote software as support for its assertion that
`
`skilled artisans did combine Ben-Ze’ev’s and Idiot’s Guide’s teachings in
`
`the manner Petitioner suggests with predictable results, and therefore had
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`reason to do so. See Pet. 22–23. “Art can legitimately serve to document
`
`the knowledge that skilled artisans would bring to bear in reading the prior
`
`art identified as producing obviousness.” Ariosa Diagnostics v. Verinata
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`Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).
`
`Next, Patent Owner argues that Idiot’s Guide does not support making
`
`the proposed combination, as Petitioner suggest. PO Prelim. Resp. 11–15.
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`Even if we agreed with Patent Owner, however, that would not undermine
`
`the proposed combination because Petitioner provided sufficient rationale
`
`aside from the Idiot’s Guide disclosures, as outlined above.
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`Last, Patent Owner criticizes Petitioner’s rationale, arguing that
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`“Petitioner improperly speculates through its declarant,” and Petitioner’s
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`expert testimony supporting Petitioner’s proffered combination improperly
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`parrots the same speculative conclusory statements from the Petition. See
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`PO Prelim. Resp. 10, 13, 16. We disagree. That the Petition repeats Dr.
`
`Houh’s testimony regarding reasons a skilled artisan would have been
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`motivated to combine Ben-Ze’ev and Idiot’s Guide does not undermine that
`
`testimony’s persuasiveness or its status as evidence, nor does it mean
`
`Petitioner’s argument is mere speculation or conjecture, as Patent Owner
`
`suggests. In addition, Petitioner does more than “provide[ ] only speculation
`
`and conjecture for its proposed combination,” as Patent Owner asserts. See
`
`PO Prelim. Resp. 16. 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.
`
`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. 1008, 68, 78; 1003 ¶ 75). On this
`
`record, we see no reason to require more. See KSR, 550 U.S. 398, 418
`
`(distinguishing between “mere conclusory statements” and “some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”).
`
`d. Conclusion
`
`On this record and for purposes of this Decision, Petitioner has shown
`
`a reasonable likelihood that it would prevail in establishing claims 1–7, 9,
`
`and 10 would have been obvious over Ben-Ze’ev and Idiot’s Guide.
`
`2. Ground 2: Obviousness of Claim 8 Based on Ben-Ze’ev, Idiot’s Guide,
`and Dara-Abrams
`
`Petitioner asserts claim 8 would have been obvious over Ben-Ze’ev,
`
`Idiot’s Guide, and Dara-Abrams. Pet. 55–65. On the current record, we
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`determine that Petitioner has set forth a reasonable likelihood of succeeding
`
`on this challenge, as outlined below.
`
`a. Claim Elements
`
`As noted above, Petitioner made an adequate showing that the
`
`combination of Ben-Ze’ev and Idiot’s Guide teaches each limitation in claim
`
`6. Petitioner also made an adequate showing (unchallenged by Patent
`
`Owner in its Preliminary Response) that Dara-Abrams accounts for the
`
`additional limitation in claim 8, which depends from claim 6 and further
`
`requires “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).
`
`b. Rationale for Combining Dara-Abrams with Ben-Ze’ev/Idiot’s Guide
`
`In addition, Petitioner provides a sufficient reason (unchallenged by
`
`Patent Owner in its Preliminary Response) why a skilled artisan would have
`
`combined Dara-Abrams’ teaching of user interaction with graphical user
`
`interface (GUI) elements (e.g., pressing a button, moving a dial, switching a
`
`toggle, etc.) with the relevant adaptive remote controller from Ben-Ze’ev
`
`and Idiot’s Guide. See Pet. 56–61. Petitioner explains, with support 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). We agree with Petitioner 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
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`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).
`
`c. Conclusion
`
`On this record and for purposes of this Decision, Petitioner has shown
`
`a reasonable likelihood that it would prevail in establishing claim 8 would
`
`have been obvious over Ben-Ze’ev, Idiot’s Guide, and Dara-Abrams.
`
`3. Ground 3: Obviousness of Claims 11–17, 19–25, and 27 Based on Ben-
`Ze’ev, Idiot’s Guide, and Osterhout
`
`Petitioner asserts claims 11–17, 19–25, and 27 would have been
`
`obvious over Ben-Ze’ev, Idiot’s Guide, and Osterhout. Pet. 65–88. On the
`
`current record, we determine that Petitioner has set forth a reasonable
`
`likelihood of succeeding on this challenge, as outlined below.
`
`a. “broadcasting a message”
`
`Independent claim 11 requires “broadcasting a message, said message
`
`for locating remote devices within range of said transceiver.” Independent
`
`claim 21 has a similar limitation reciting “said transceiver is adapted to
`
`broadcast a message for locating remote devices within range of said
`
`transceiver.” In addressing this limitation, Petitioner and Patent Owner raise
`
`the same arguments as those for the parallel limitation in claim 1. See Pet.
`
`79, 81–82; PO Prelim. Resp. 19–20. For the reasons explained above, we
`
`find that Petitioner’s and Patent Owner’s competing expert testimony creates
`
`a genuine issue of material fact as to whether Ben-Ze’ev’s interrogation
`
`technique teaches the claimed broadcasting feature. Because we view
`
`evidence in the light most favorable to the Petitioner at this stage of the
`
`proceeding, see 37 C.F.R. § 42.108(c), on this record Petitioner has provided
`
`adequate evidence that Ben-Ze’ev discloses broadcasting a message for
`
`17
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`locating remote devices within range of the transceiver as the challenged
`
`claims require.
`
`b. Undisputed Elements
`
`On this record and for purposes of this Decision, Petitioner has made
`
`an adequate showing (unchallenged by Patent Owner in its Preliminary
`
`Response) that the combination of Ben-Ze’ev, Idiot’s Guide, and Osterhout
`
`teaches or suggests the remaining limitations of claims 11–17, 19–25, and
`
`27, as outlined below.
`
`i. Claim 11
`
`Petitioner made an adequate showing 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 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 made an adequate showing
`
`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 made an adequate showing 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 made an adequate showing that the
`
`combination of Ben-Ze’ev and Idiot’s Guide teaches “a) establishing said
`
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`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).
`
`ii. 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
`
`claims 2–7, 9, and 10, Petitioner has made an adequate showing 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).
`
`iii. Claim 21
`
`Petitioner made an adequate showing 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 Ex. 1007, Abstract,
`
`1:5–11, 5:10–20, 6:34–48, 7:62–65, 8:15–20, 9:2–12, 10:45–48; Ex. 1003,
`
`145–148). Petitioner made an adequate showing that the combination of
`
`Ben-Ze’ev and Osterhout teaches “a bus,” “a processor coupled to said bus,”
`
`and “a transceiver coupled to said bus,” as claim 21 requires. See id. at 80–
`
`81 (referring to parallel limitations in claim 11 and citing Ex. 1003, 148).
`
`19
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`IPR2018-00394
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`Petitioner made an adequate showing that the combination of Ben-Ze’ev and
`
`Idiot’s Guide teaches “said transceiver for transmitting commands for
`
`controlling said remote device over said radio connection,” as claim 21
`
`requires. See id. at 81 (referring to parallel limitations in claim 1 and citing
`
`Ex. 1007, 5:21–37, 8:12–15, 15:21–23; Ex. 1003, 148–151). Petitioner
`
`made an adequate showing that the combination of Ben-Ze’ev and Idiot’s
`
`Guide teaches “wherein said transceiver is adapted to broadcast a message
`
`for locating remote devices within range of said transceiver,” as claim 21
`
`requires. See id. at 81–82 (referring to parallel limitations in claim 1 and
`
`citing Ex. 1007, Abstract, 8:12–15, 8:41–58, 15:21–23; Ex. 1003, 151–154).
`
`Petitioner made an adequate showing that Ben-Ze’ev teaches “wherein each
`
`remote device responding to said message is indicated on said display
`
`device,” as claim 21 requires. See id. at 82–83 (citing Ex. 1007, Fig. 6,
`
`10:57–60, 10:66–11:14, 11:21–24; Ex. 1003, 154–155). Petitioner made an
`
`adequate showing that the combination of Ben-Ze’ev and Osterhout teaches
`
`“a display device coupled to said bus,” as claim 21 requires. See id. at 83
`
`(referring to parallel limitations in claim 11 and citing Ex. 1003, 155).
`
`Petitioner made an adequate showing that the combination of Ben-Ze’ev and
`
`Idiot’s Guide teaches “said display device adapted to register a position
`
`where a stylus element makes contact with a screen of said display device,”
`
`as claim 21 requires. See id. at 83 (referring to parallel limitations in claim 4
`
`and citing Ex. 1008, 27, 42–49; Ex. 1003, 155–157). Petitioner made an
`
`adequate showing that the combination of Ben-Ze’ev and Idiot’s Guide
`
`teaches “wherein a particular position on said screen is translated into a
`
`particular command for controlling said remote device” and “an input device
`
`coupled to said bus,” as claim 21 requires. See id. at 83–84 (referring to
`
`20
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`parallel limitations in claims 4 and 11 and citing Ex. 1003, 157). Petitioner
`
`made an adequate showing that the combination of Ben-Ze’ev and Idiot’s
`
`Guide teaches
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