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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`________________
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`Case IPR2018-00394
`Patent 6,622,018 B1
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`________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Petitioner’s Reply
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`IPR2018-00394
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................ 1
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`I.
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`II. BEN-ZE’EV TEACHES THE “BROADCASTING” LIMITATION OF THE
`’018 PATENT ............................................................................................................. 2
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`A. There is no dispute about the plain and ordinary meaning of
`“broadcasting” .............................................................................................. 2
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`B. Ben-Ze’ev teaches transmitting a singular interrogation signal to
`multiple appliances ....................................................................................... 4
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`C. Patent Owner narrowly focuses on the word “interrogation” while
`ignoring the actual teachings of Ben-Ze’ev that describe broadcasting ...... 5
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`1. It was well known that an “interrogation” signal could be
`broadcast ........................................................................................................ 6
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`2. Ben-Ze’ev’s disclosure confirms that its interrogation signal is
`broadcast to all devices in the vicinity .......................................................... 9
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`III. THE UNCHANGED EVIDENTIARY RECORD SUPPORTS THE
`COMBINATION OF BEN-ZE’EV AND THE IDIOT’S GUIDE .........................12
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`A. PalmRemote illustrates the knowledge a POSITA would bring to bear
`in reading Ben-Ze’ev and the Idiot’s Guide ............................................... 13
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`B. The advantages of using Graffiti commands would motivate a skilled
`artisan to pursue the proposed combination ............................................... 16
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`C. Any modifications to the teachings of Ben-Ze’ev to accommodate the
`Idiot’s Guide would have been within the skill of a POSITA ................... 17
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`IV. CONCLUSION ..................................................................................................21
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`TABLE OF AUTHORITIES
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`Cases
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`Aevoe Corp. v. Racing Optics, Inc., IPR2016-01164, Paper 8 (P.T.A.B. Nov. 7,
`2016) ...................................................................................................................... 8
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`Agilysys, Inc. v. Ameranth, Inc., CBM2014-00016, Paper 35 (P.T.A.B. Mar. 20,
`2015) ...................................................................................................................... 7
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`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015). .......14
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`Belden Inc. v. Berk-Tek LLC, 805 F. 3d 1064 (Fed. Cir. 2015) ..............................17
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`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) ........................................................19
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`In re Sneed, 710 F.2d 1544 (Fed. Cir. 1983) ...........................................................19
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................17
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006) ............................20
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`Mobile Tech., Inc. v. InVue Security Prod’s, Inc., IPR2017-00344, Paper 41
`(P.T.A.B. May 24, 2018) .....................................................................................19
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`Nat'l Steel Car, Ltd. v. Can. Pac. Ry., Ltd., 357 F.3d 1319 (Fed. Cir. 2004) ..........15
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`Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., IPR2013-00132, Paper 9
`(P.T.A.B. Jul. 25, 2013) .......................................................................................19
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`Travelers Indemnity Co. v. Integrated Claims Sys., LLC., IPR2016-00660, Paper
`21 (P.T.A.B. Aug. 29, 2017) .................................................................................. 7
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`Veeam Software Corp. v. Veritas Techs. LLC, IPR2014-00090, Paper 48 (P.T.A.B
`Jul. 17, 2017) .......................................................................................................... 7
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`Statutes
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`37 C.F.R. § 42.63(a) ................................................................................................... 7
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`37 C.F.R. § 42.65(a) ................................................................................................... 8
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`I. INTRODUCTION
`Patent Owner’s Response demonstrates that there are only two issues in
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`dispute: (i) whether the Ben-Ze’ev reference teaches the “broadcasting” limitation
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`recited in the independent claims of the ’018 Patent, and (ii) whether the Petition
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`provides sufficient motivation to combine the Ben-Ze’ev and the Idiot’s Guide
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`references.
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`With respect to the first issue, there is no dispute over the plain and ordinary
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`meaning of “broadcasting”—sending a singular message receivable by multiple
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`devices. In that regard, Ben-Ze’ev explicitly teaches that its remote controller
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`sends a singular interrogation signal to all appliances in the vicinity. APPL-1007,
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`10:57-58 (“The interrogation signal is generally sent periodically to all
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`appliances…”). Ben-Ze’ev further teaches that the purpose of the signal is to
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`discover the existence of nearby appliances—not communicate with individual,
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`already-known recipients. Patent Owner attempts to avoid this explicit disclosure
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`by instead focusing solely on the word “interrogation.” This strategy fails because
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`it was well known in the art that an “interrogation” signal could be broadcast, and
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`Patent Owner’s citations to evidence not in the record do not outweigh the explicit
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`teachings of Ben-Ze’ev.
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`With respect to the combination of Ben-Ze’ev and the Idiot’s Guide, Patent
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`Owner’s Response merely repeats the same arguments already rejected in the
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`Institution Decision. The Board should confirm its previous finding of
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`obviousness because the evidentiary record on this issue is unchanged and the
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`combination set forth in the Petition is supported by legal precedent.
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`II. BEN-ZE’EV TEACHES THE “BROADCASTING” LIMITATION OF
`THE ’018 PATENT
`A. There is no dispute about the plain and ordinary meaning of
`“broadcasting”
`Petitioner and Patent Owner agree that the term “broadcasting” in the
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`limitation “broadcasting a message” (claim 1) does not require construction, and
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`that the plain and ordinary meaning as understood by a person of ordinary skill in
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`the art should be applied. Based on the papers and evidence in the record, it
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`appears the parties have the same general understanding of the plain and ordinary
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`meaning of “broadcasting.”
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`For example, in the explanation of how the prior art maps to this claim
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`element, the Petition (Paper 1) cites to Dr. Houh’s declaration for an explanation of
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`how a person of ordinary skill in the art would understand the term “broadcasting”.
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`Petition at 27. Dr. Houh, citing to the Microsoft Computer Dictionary (APPL-
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`1012, p. 5), notes that “[t]he plain and ordinary meaning of ‘broadcasting a
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`message’ in light of the specification is transmitting the message to all recipients in
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`range.” APPL-1003, pp. 54-55. Patent Owner, also citing to the Microsoft
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`Computer Dictionary, sets forth a similar understanding in its Response (Paper 10).
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`Response at 6-7. It points to the ’018 specification explaining that:
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`This [broadcasting] claim language reflects example embodiments
`in the specification including, for example, the disclosure that the
`“portable computer system transmits a broadcast message 640
`(e.g., an inquiry 504) that is received by compliant remote devices
`610-630.” EX1001, 8:33−36. It is significant that the broadcast
`message 640 is referenced here (and elsewhere in the
`specification) in the singular, yet it is receivable by multiple
`devices.
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`Id. at 6 (italic emphasis in original). Additionally, Patent Owner’s expert, Mr.
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`Easttom, states in his declaration that: “For the purposes of this proceeding I will
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`utilize the petitioners [sic] definitions and use plain and ordinary meaning.” Ex.
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`2001, ¶ 20.
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`Based on the above, there appears to be no dispute that the plain and
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`ordinary meaning of “broadcasting a message” in the context of the ’018 Patent is
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`generally understood as transmitting a singular message to multiple devices.
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`Ben-Ze’ev teaches transmitting a singular interrogation signal to
`B.
`multiple appliances
`As explained in the Petition and Dr. Houh’s supporting declaration (APPL-
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`1003), Ben-Ze’ev teaches “broadcasting a message” under the plain and ordinary
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`meaning. Petition at 27-28 (citing APPL-1003, pp. 53-55). Specifically, Ben-Ze’ev
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`describes an adaptive remote controller that periodically interrogates the existence
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`of nearby appliances by transmitting an “interrogation signal” (singular) to all
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`appliances in its vicinity:
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`According to one embodiment of the invention, the remote
`controller periodically
`interrogates
`the existence of all
`appliances in its vicinity. More particularly, the remote controller
`initiates a signal containing the remote controller device code, and
`an interrogation code asking the device to identify itself. Upon
`receipt and identification of the signal, the appliance sends to the
`remote controller an identification signal including the device
`code of the remote controller and the appliance identification
`section 41. The interrogation signal is generally sent periodically
`to all appliances, and the appliances respond with their
`identification, in the fashion dictated by the networking protocol
`in use.
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`APPL-1007, 10:49-60 (emphasis added). As explained by Dr. Houh and in the
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`Petition, a person of ordinary skill in the art (POSITA) would understand that the
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`interrogation signal is broadcast under the plain and ordinary meaning because “the
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`signal is not transmitted to any one particular recipient—it is transmitted to all
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`appliances in the vicinity.” APPL-1003, pp. 54-55 (citing APPL-1012, p. 5). This
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`is logical because the purpose of the interrogation signal is to determine the
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`“existence” of all nearby devices—not communicate with specific devices whose
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`existence is already known. APPL-1007, 10:49-51. Notably, the claimed
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`“broadcasting a message” has the same purpose: “broadcasting a message, said
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`message for locating remote devices within range of said transceiver.”
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`Accordingly, and as explained in more detail below, Ben-Ze’ev’s disclosure makes
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`clear that the interrogation signal is broadcast, and is not a one-to-one
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`communication directed to a specific device, as alleged by Patent Owner.
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`Patent Owner narrowly focuses on the word “interrogation” while
`C.
`ignoring the actual teachings of Ben-Ze’ev that describe broadcasting
`In its Response, Patent Owner attempts to circumvent the teachings of Ben-
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`Ze’ev by isolating the word “interrogation” from the rest of the disclosure and
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`alleging that a POSITA would understand it only to mean “communicate with
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`individual machines one at a time.” Response at 9. Patent Owner’s position is
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`deficient in both form and substance because (i) the Response credits testimony
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`based on unfiled evidence over the actual words of Ben-Ze’ev (which describe
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`broadcasting), and (ii) a POSITA would not understand “interrogation” to be
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`limited to one-to-one communication.
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`It was well known that an “interrogation” signal could be
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`broadcast
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`Patent Owner’s Response is predicated on the notion that the word
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`“interrogation” was understood at the time of the ’018 Patent to be different than
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`the claimed “broadcasting” because it requires one-to-one communication.
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`Specifically, Patent Owner alleges that:
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`The interrogation in Ben-Ze’ev is distinct from “broadcasting a
`message” because “interrogation” in computer science is to
`communicate with individual machines one at a time, and to
`“interrogate” multiple machines, that would have to be done
`sequentially, one at a time. Id. ¶ 48−52.
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`Response at 9 (emphasis added). To support its position, Patent Owner relies on
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`the same expert declaration filed with its Preliminary Response (Ex. 2001).1
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`Patent Owner’s position is not credible in the face of ample evidence showing that
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`an “interrogation” signal could, in fact, be broadcast.
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`1 The quotation “interrogat[ing] its connected terminals in a round robin sequence”
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`attributed to Mr. Eastton on page 7 of the Response does not actually appear
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`anywhere in Ex. 2001.
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`As an initial matter, Petitioner notes that none of the evidence cited in Mr.
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`Easttom’s declaration is part of the record. He relies upon various dictionaries and
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`documents in his analysis of the term “interrogation,” but none of them have been
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`filed as exhibits in this proceeding. See Ex. 2001, ¶¶ 42-50. This unfiled evidence
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`is not part of the record and cannot be considered by the Board. See 37 C.F.R. §
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`42.63(a) (“All evidence must be filed in the form of an exhibit.”); see also, e.g.,
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`Veeam Software Corp. v. Veritas Techs. LLC, IPR2014-00090, Paper 48 at 24, fn.
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`8 (P.T.A.B Jul. 17, 2017) (explaining that documents cited by the expert “were not
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`submitted as exhibits, and are not considered”); Travelers Indemnity Co. v.
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`Integrated Claims Sys., LLC., IPR2016-00660, Paper 21 at 15 (P.T.A.B. Aug. 29,
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`2017) (explaining that a dictionary definition was not part of the evidentiary record
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`because it was not filed as an exhibit).
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`To the extent Patent Owner and Mr. Easttom point to URLs in association
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`with some of its unfiled evidence, the Board has found such an approach
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`insufficient. See Agilysys, Inc. v. Ameranth, Inc., CBM2014-00016, Paper 35 at 18
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`(P.T.A.B. Mar. 20, 2015) (explaining that the Board “cannot consider” articles
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`referenced by URLs because Patent Owner “failed to file a copy of these articles”).
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`Accordingly, before even reaching the substance, Mr. Easttom’s opinions should
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`be afforded little to no weight because they are not supported by evidence in the
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`record. See 37 C.F.R. § 42.65(a); see also Aevoe Corp. v. Racing Optics, Inc.,
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`IPR2016-01164, Paper 8 at 21, fn. 9 (P.T.A.B. Nov. 7, 2016) (declining to consider
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`arguments supported by out-of-context passages from unfiled references).
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`Even ignoring these evidentiary shortcomings, Patent Owner’s position that
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`“‘interrogation’ in computer science is to communicate with individual machines
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`one at a time” is simply not true. See Houh Supp. Dec. (APPL-1031), ¶¶ 4-7. For
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`example, in his declaration, Dr. Houh points to many examples in computer
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`science of a singular “interrogation” message being “broadcast” to multiple
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`recipients. Id. ¶¶ 7-11. Two such examples are reproduced below:
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` In a luggage tracking context: “An RFID interrogator transceiver, preferably
`mounted on the operator, periodically broadcasts interrogation messages.
`Any tag transceiver which is within 2-way communication range of the
`interrogator receives the broadcasted message and responds…” APPL-
`1032, 1:59-2:2 (emphasis added).
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` In a vehicle location context: “At a selected time, the central station
`broadcasts an interrogation signal in a time slot of length Tc (≈1 sec),
`requesting that vehicles number n=n1, n2, . . . in a selected group of k(q)
`vehicles respond with the present location and status of each vehicle.”
`APPL-1034, 4:29-36 (emphasis added).
`See also Houh Supp. Dec., ¶¶ 9, 11 (citing APPL-1033, 2:59-3:1 (“The
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`interrogation signals may be transmitted … in a sequential or broadcast manner”);
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`APPL-1035, 3:35-44 (“broadcasts an ATCRBS/Mode-S ‘All-Call’ interrogation
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`signal”)). Dr. Houh explains that an “interrogation” message is merely one that
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`initiates a response and is not defined by a particular transmission method. Id. ¶ 4
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`(citing the definitions in Ex. 2001, ¶¶ 46-48).
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`Accordingly, at the time of the ’018 Patent, a POSITA would understand the
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`term “interrogation” could encompass broadcast signaling to multiple recipients.
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`Houh Supp. Dec., ¶ 7. As described below, Ben-Ze’ev makes clear that its
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`interrogation signal is broadcast.
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`Ben-Ze’ev’s disclosure confirms that its interrogation signal
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`is broadcast to all devices in the vicinity
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`In addition to plainly stating that the “interrogation signal is generally sent
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`periodically to all appliances”—which alone meets the plain and ordinary meaning
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`of broadcasting—Ben-Ze’ev provides ample disclosure indicating that the
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`interrogation signal is broadcast to nearby devices. Such disclosure is found with
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`reference to the purpose of the interrogation signal and the contents of the
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`interrogation signal.
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`Purpose. Ben-Ze’ev explains that its interrogation process is utilized to
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`discover “the existence of all appliances in its vicinity.” APPL-1007, 10:49-51.
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`Appliances are discovered when the interrogation signal is transmitted and “the
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`appliances respond with their identification.” Id. at 10:49-60. Ben-Ze’ev explains
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`that this discovery process is helpful when the operator moves “with the remote
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`controller into a new environment that includes appliances different from the
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`previous environment.” Id. at 2:58-63. Simple logic dictates that if the remote
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`controller does not yet know of the existence of nearby appliances before sending
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`the interrogation signal, the interrogation signal cannot be communicated to a
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`specific appliance. In other words, Patent Owner’s contention that the
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`interrogation signal is meant to “communicate with individual machines” rings
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`hollow when Ben-Ze’ev’s remote controller, prior to sending the signal, does not
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`yet know of the existence of such machines. By indiscriminately broadcasting the
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`interrogation signal, the remote controller is able to determine “the existence of all
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`appliances in its vicinity.” APPL-1007, 10:49-51.
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`Petitioner notes that Ben-Ze’ev’s interrogation signal fulfills the same
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`purpose as the claimed “broadcasting a message”—“locating remote devices
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`within range.” APPL-1001, Claims 1, 11, and 21. Moreover, the ’018 Patent
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`provides the exact same example of locating devices in a new room as Ben-Ze’ev:
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`“a user with portable computer system 100 enters a room containing remote
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`devices” and “transmits broadcast message 640 for the purpose of discovering
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`compliant devices in the room.” Id. at 8:33-54, Fig. 6, Claim 1, 11, and 21. That
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`the purpose of Ben-Ze’ev’s interrogation signal is to discover the existence of
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`nearby appliances—just like the claimed broadcast message—further confirms that
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`the interrogation signal is broadcast, rather than sent to specific devices.
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`Content. The lack of an identifier in Ben-Ze’ev’s interrogation signal
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`directing it to a specific appliance likewise demonstrates that the signal is
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`broadcast to “all appliances in its vicinity.” Specifically, in describing the
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`interrogation signal, Ben-Ze’ev explains that it contains two things, “the remote
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`controller device code” and “an interrogation code asking the device to identify
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`itself.” APPL-1007, 10:51-54 (“the remote controller initiates a signal containing
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`the remote controller device code, and an interrogation code asking the device to
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`identify itself”). There is no description of the interrogation signal containing any
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`sort of identifier that would allow it to be communicated to a specific appliance.
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`See Houh Supp. Dec. ¶¶ 12-13 (explaining that a wireless message must include an
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`address or other identifier of an individual recipient in order for it to be directed to
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`that recipient). The absence of an appliance identifier in the interrogation signal
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`follows from Ben-Ze’ev’s teaching that the signal explicitly asks a receiving
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`device “to identify itself.” APPL-1007, 10:51-54. In that regard, when the
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`interrogation signal is sent to all appliances, “the appliances respond with their
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`identification.” Id. at 10:57-59 (emphasis added). This is the same process as
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`described in the ’018 Patent—sending an inquiry message and receiving back
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`responses from devices with their respective addresses. APPL-1001, 8:42-46 (“As
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`compliant devices, remote devices 610-630 respond to broadcast message 640 via
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`responses 650a, 650b and 650c, respectively. In the present embodiment, responses
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`650a-c include the Medium Access Control (MAC) address for remote devices
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`610-630.”).
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`Accordingly, both the purpose and the content of Ben-Ze’ev’s interrogation
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`signal confirm that the signal is broadcast to all appliances in the vicinity of the
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`remote controller. Ben-Ze’ev therefore teaches, under the plain and ordinary
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`meaning, the claimed “broadcasting a message” in claims 1 and 11 and “broadcast
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`a message” in claim 21.
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`III. THE UNCHANGED EVIDENTIARY RECORD SUPPORTS THE
`COMBINATION OF BEN-ZE’EV AND THE IDIOT’S GUIDE
`In its Response, Patent Owner maintains that the Petition fails to “to prove
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`sufficient motivation to combine the cited portions of Ben-Ze’ev and Idiot’s Guide
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`as proposed.” Response at 12-22. Notably, in its eleven pages of argument, all but
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`three paragraphs are verbatim from Patent Owner’s Preliminary Response (Paper
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`6). Compare Response at 12-22 with Preliminary Response at 7-16. Moreover,
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`Patent Owner has filed no additional evidence since its Preliminary Response, and
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`the three new paragraphs are purely attorney argument—they do not cite to any
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`evidence, old or new2. Patent Owner merely disagrees with the Board’s findings
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`but does so without evidence or even citations to legal precedent. Even ignoring
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`this evidentiary shortcoming, the law of obviousness does not support Patent
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`Owner’s positions. Accordingly, the Board should confirm its finding in the
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`Institution Decision that the Petition and unchanged evidentiary record support a
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`legal conclusion of obviousness based on the combination of Ben-Ze’ev and the
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`Idiot’s Guide.
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`PalmRemote illustrates the knowledge a POSITA would bring to
`A.
`bear in reading Ben-Ze’ev and the Idiot’s Guide
`The Petition sets forth several reasons, supported by evidence, as to why a
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`person of ordinary skill in the art before the ’018 Patent would have found it
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`obvious to modify Ben-Ze’ev’s adaptive remote controller to include the
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`PalmPilot’s Graffiti writing area described in the Idiot’s Guide. Petition at 21-25.
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`Such a combination would have advantageously allowed a user to remotely control
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`appliances through “Graffiti commands.” Id. (citing APPL-1003, ¶¶ 71-75). As
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`2 The evidentiary record with respect to the combination has not changed since the
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`Institution Decision. Neither expert has been deposed and Patent Owner has not
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`filed any evidence beyond the declaration attached to its Preliminary Response.
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`described by Dr. Houh, one of the reasons a skilled artisan in the relevant field
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`would have been motivated to try such a combination was the existence of the
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`PalmPilot software called “PalmRemote”—as illustrated by the archived
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`PalmRemote webpage (exhibit APPL-10203). APPL-1003, ¶¶ 73-74 (citing APPL-
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`1020). Dr. Houh’s uncontested testimony establishes that the proposed
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`combination “would have been predictable to a person of ordinary skill in the art”
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`because the PalmRemote illustrated that those in the field were already performing
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`such a combination.4 APPL-1003, ¶ 74. In other words, PalmRemote serves to
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`document the knowledge that skilled artisans would bring to bear when
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`considering a potential combination of Ben-Ze’ev and the Idiot’s Guide. See
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`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).
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`3 Exhibit APPL-1036 contains the Affidavit of Christopher Butler explaining that
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`the webpage contained in Exhibit APPL-1020 was captured on the date in its URL:
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`https://web.archive.org/web/19991007013442/http://hp.vector.co.jp/authors/VA00
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`5810/remocon/premocce.htm
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`4 Patent Owner’s expert is silent about PalmRemote. See Ex. 2001.
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`14
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`Petitioner’s Reply
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`In its Response, Patent Owner reprises its argument that the PalmRemote
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`software illustrated in APPL-1020 “does not in any way support” the notion that a
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`POSITA would have been motivated to modify Ben-Ze’ev’s adaptive remote
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`controller to include the graffiti writing area. Response at 13-17. Patent Owner
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`attempts to rebut the evidence in the record with references to fictional devices,
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`arguing that a “mere illustration” does not establish that the PalmRemote actually
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`existed or that a POSITA possessed the “technical ability and know-how” to make
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`the proposed combination. Id. at 14-15. This unsupported attorney argument is
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`unconvincing. Even if the PalmRemote never actually existed (although the
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`evidence in the record strongly suggests that it did: “This software was awarded
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`the ingenious idea prize…” APPL-1020, p. 1), Petitioner is not relying on
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`PalmRemote to establish the “technical ability or know-how” of a POSITA. That
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`is established by other evidence expressly teaching that customizing the PalmPilot
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`was a common practice at the time. See APPL-1008, pp. 89, 96; APPL-1009, pp.
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`19-20. The screenshot of the PalmRemote software in APPL-1020 instead
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`establishes that artisans in the field had already contemplated (and most likely
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`implemented) the very combination proposed in the Petition. See Nat'l Steel Car,
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`Ltd. v. Can. Pac. Ry., Ltd., 357 F.3d 1319, 1338-39 (Fed. Cir. 2004) (holding that
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`an engineer’s drawing of a rail car, even if it was never built, can “be used to
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`15
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`Petitioner’s Reply
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`demonstrate a motivation to combine implicit in the knowledge of one of skill in
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`the art”).
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`The advantages of using Graffiti commands would motivate a
`B.
`skilled artisan to pursue the proposed combination
`As noted in the Petition, the Idiot’s Guide and other references describing
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`the PalmPilot identify several advantages of using the Graffiti writing area to
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`perform commands. See Petition at 23-24 (citing APPL-1008, pp. 68, 78 (“If you
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`want to save time, use the Graffiti Command stroke instead of menus.”), (“The
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`Command stroke lets you perform menu commands without having to tap, tap,
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`tap.”)). Dr. Houh explained that these benefits would motivate a POSITA to use
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`the PalmPilot’s Graffiti writing area in conjunction with Ben-Ze’ev’s adaptive
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`remote controller because such a combination would be advantageous. APPL-
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`1003, ¶¶ 75, 77.
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`In its Response, Patent Owner criticizes the Board’s citation to these
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`identified benefits because they are allegedly speculative and hypothetical,
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`focusing on the phrase “can be ‘much faster’.” Response at 16-17 (“…Petitioner
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`can’t even definitively come to that conclusion. The Petition can only speculate
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`that there would be some kind of alleged benefit to the hypothetical
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`combination.”). This argument falls flat because it misses the point of these
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`identified benefits. The question is not whether these benefits are scientifically
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`proven, but merely whether “the hypothetical skilled artisan would recognize the
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`potential benefits and pursue the variation.” Belden Inc. v. Berk-Tek LLC, 805 F.
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`3d 1064, 1075 (Fed. Cir. 2015) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`417 (2007)). That is, these advantages—even if potential—serve as motivation for
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`a POSITA to try the proposed combination, rendering it obvious under the law.
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`C. Any modifications to the teachings of Ben-Ze’ev to accommodate
`the Idiot’s Guide would have been within the skill of a POSITA
`As explained in the Petition and in Dr. Houh’s supporting declaration, a
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`skilled artisan before the ’018 Patent would have possessed the technical skills
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`needed to perform the proposed combination—specifically, modifying Ben-
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`Ze’ev’s adaptive remote controller to include the PalmPilot’s Graffiti writing area,
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`through which a user could remotely control appliances. Petition at 24-25 (citing
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`APPL-1003, ¶¶ 76-77). The Idiot’s Guide and PalmPilot for Dummies (APPL-
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`1009) provide ample evidence that POSITAs (and even those with lower skill
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`levels, i.e., “idiots” and “dummies”) could “customize the PalmPilot in about a
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`zillion different ways,” for example, to “add features or to make your PalmPilot
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`behave differently than a normal PalmPilot.” APPL-1008, pp. 89, 96; APPL-1009,
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`pp. 19-20. In particular, the Idiot’s Guide teaches that one element a user can
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`customize is “how you use Graffiti.” APPL-1008, p. 96. In that regard,
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`customizing the use of Graffiti is the specific modification contemplated by the
`17
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`proposed combination. See Petition at 22 (“a POSITA would have found it
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`predictable and advantageous to utilize the PalmPilot’s Graffiti writing area to
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`control the remote appliances described in Ben-Ze’ev”). Moreover, in the same
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`section describing the customization of “how you use Graffiti,” the Idiot’s Guide
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`teaches exactly how such a customization is performed—by installing third-party
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`software with “HackMaster”:
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`APPL-1008, p. 96 (highlighting added). The PalmRemote software discussed by
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`Dr. Houh is one example of the software contemplated by this section—it allows a
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`user to customize “how you use Graffiti.” See APPL-1003, pp. 43-44 (citing
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`APPL-1020, p. 1 (illustrating “PalmPilot software” that allowed users to use
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`“Graffiti commands” to control consumer electronic devices)).
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`18
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`Despite this evidence establishing the ability of skilled artisans to perform
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`the proposed combination, Patent Owner maintains that the Petition is deficient
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`because it “fails to disclose the [sic] any of the ‘needed’ modifications…” to arrive
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`at the combination. Response at 18. This argument, however, ignores that “[i]t is
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`well-established that a determination of obviousness based on teachings from
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`multiple references does not require an actual, physical substitution of elements.”
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`In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Similarly, the Board has
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`observed that “we discern no requiremen
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