`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 6,622,018
`
`
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. MANDATORY NOTICES ............................................................................... 2
`
`A. Real Party-in-Interest................................................................................ 2
`
`B. Related Matters ......................................................................................... 2
`
`C. Lead and Back-up Counsel and Service Information .............................. 3
`
`III. GROUNDS FOR STANDING .......................................................................... 3
`
`IV. THE ’018 PATENT ........................................................................................... 4
`
`A. Overview of the ’018 Patent ..................................................................... 4
`
`B. Prosecution History .................................................................................. 9
`
`C. Claim Construction ................................................................................. 10
`
`V. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF ....................................................................................................................11
`
`VI. IDENTIFICATION OF CHALLENGES ........................................................12
`
`A. Challenged Claims .................................................................................. 12
`
`B. Statutory Grounds for Challenges .......................................................... 12
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ......13
`
`A. Challenge #1: Claims 1-7 and 9-10 are obvious under 35 U.S.C §
`103 over Ben-Ze’ev in view of the Idiot’s Guide .................................. 13
`
`1.
`
`2.
`
`Summary of Ben-Ze’ev .................................................................. 13
`
`Summary of the Idiot’s Guide ........................................................ 18
`
`3. Reasons to Combine Ben-Ze’ev and the Idiot’s Guide ................. 21
`
`
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`

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`
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`4. Detailed Analysis ........................................................................... 25
`
`B. Challenge #2: Claim 8 is obvious under 35 U.S.C § 103 over Ben-
`Ze’ev in view of the Idiot’s Guide and Dara-Abrams ............................ 55
`
`1.
`
`Summary of Dara-Abrams ............................................................. 55
`
`2. Reasons to Combine Ben-Ze’ev, the Idiot’s Guide, and
`Dara-Abrams .................................................................................. 56
`
`a. Reasons for utilizing Dara-Abrams’ animated control
`elements in conjunction with Ben-Ze’ev’s adaptive remote
`controller ................................................................................. 56
`
`b. Reasons for utilizing the PalmPilot’s Graffiti Writing Area in
`conjunction with Dara-Abram’s animated control elements . 59
`
`3. Detailed Analysis ........................................................................... 61
`
`C. Challenge #3: Claims 11-17, 19-25, and 27 are obvious over 35
`U.S.C § 103 over Ben-Ze’ev in view of the Idiot’s Guide and
`Osterhout ................................................................................................ 65
`
`1.
`
`Summary of Osterhout ................................................................... 65
`
`2. Reasons to Combine Ben-Ze’ev and Osterhout ............................. 66
`
`3. Detailed Analysis ........................................................................... 68
`
`D. Challenge #4: Claims 18 and 26 are obvious under 35 U.S.C § 103
`over Ben-Ze’ev in view of the Idiot’s Guide, Osterhout, and Dara-
`Abrams .................................................................................................... 88
`
`1. Detailed Analysis ........................................................................... 88
`
`VIII. CONCLUSION ................................................................................................89
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 6,622,018 (“the ’018 Patent”) is generally directed to
`
`controlling a plurality of different consumer devices with a palmtop computer over
`
`a wireless connection. In particular, the ’018 Patent seeks to cover the idea of
`
`discovering controllable devices with a broadcast message. The subject matter
`
`deemed novel by the Examiner during prosecution—“controlling remote device
`
`over wireless communication link by transmitting a command to the remote
`
`device”—however, was well known to persons of ordinary skill in the art before
`
`the earliest alleged priority date of the ’018 Patent.
`
`For example, U.S. Patent No. 6,791,467 to Ben-Ze’ev achieves the same
`
`goal as the ’018 Patent—wirelessly controlling a variety of different consumer
`
`devices—in the same way—with a PalmPilot-based remote controller that
`
`broadcasts messages to discover nearby devices, displays icons corresponding to
`
`discovered devices, and transmits commands to the devices in response to user
`
`interactions with a touch-screen. In conjunction with Ben-Ze’ev, “The Complete
`
`Idiot’s Guide to PalmPilot” illustrates that the claimed manner of interacting with
`
`the palmtop computer—e.g., via a stylus and input device—was standard
`
`functionality of the PalmPilot at the time. The dependent claims of the ’018 Patent
`
`merely recite additional well-known aspects of remotely controlling consumer
`
`devices, as illustrated by Ben-Ze’ev, Idiot’s Guide, and other references.
`
`
`
`1
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`The evidence in this Petition demonstrates that claims 1-27 of the ’018
`
`Patent are unpatentable under pre-AIA 35 U.S.C. § 103. Accordingly, Apple Inc.
`
`(“Petitioner”) respectfully requests that claims 1-27 of the ’018 Patent be held
`
`unpatentable and cancelled.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`The real party-in-interest is Apple Inc.
`
`B. Related Matters
`As of the filing date of this Petition, the ’018 Patent has been asserted in:
`
` Uniloc USA, Inc. et al. v. Logitech, Inc. et al., 3:17-cv-06733-JSC (N.D. Cal.
`
`2017), ongoing;
`
` Uniloc USA, Inc. et al. v. Wink Labs Inc., 1:17-cv-01656-GMS (D. Del.
`
`2017), ongoing;
`
` Uniloc USA, Inc. et al. v. Motorola Mobility, LLC, 1:17-cv-01657-GMS (D.
`
`Del. 2017), ongoing;
`
` Uniloc USA, et al. v. Peel Technologies, Inc., 1:17-cv-01552-UNA (D. Del.
`
`2017), ongoing;
`
` Uniloc USA, et al. v. Huawei Device USA, Inc., consolidated case no. 2:17-
`
`cv-00707-JRG (E.D. Tex. 2017), ongoing;
`
` Uniloc USA, et al. v. HTC America, Inc., 2:17-cv-01558-JLR (W.D. Wash.
`
`2017), ongoing;
`
`
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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` Uniloc USA, et al. v. LG Electronics U.S.A., Inc. et al., 4:17-cv-00825-O
`
`(N.D. Tex. 2017), ongoing; and
`
` Uniloc USA, Inc. et al v. Apple., et al., consolidated case no. 2:17-cv-00470-
`
`JRG (E.D. Tex. 2017), ongoing.
`
`Additionally, the ’018 Patent has been challenged in a second inter partes
`
`review petition filed by Petitioner concurrently with this petition.
`
`C. Lead and Back-up Counsel and Service Information
`Lead Counsel
`
`Andrew S. Ehmke
`Phone: (214) 651-5116
`HAYNES AND BOONE, LLP
`Fax: (214) 200-0853
`2323 Victory Ave. Suite 700
`andy.ehmke.ipr@haynesboone.com
`Dallas, TX 75219
`USPTO Reg. No. 50,271
`
`
`Back-up Counsel
`
`Phone: (972) 739-8663
`Scott T. Jarratt
`Fax: (214) 200-0853
`HAYNES AND BOONE, LLP
`scott.jarratt.ipr@haynesboone.com
`2505 North Plano Road, Suite 4000
`USPTO Reg. No. 70,297
`Richardson, TX 75219
`
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ’018 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition. Petitioner
`
`was served with a complaint asserting infringement of the ’018 Patent not more
`
`
`
`3
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`than one year before the filing of this Petition. Petitioner has not filed a civil action
`
`challenging the validity of any claim of the ’018 Patent.
`
`IV. THE ’018 PATENT
`A. Overview of the ’018 Patent
`The ’018 Patent is directed to a portable computer system for controlling
`
`remote devices over a wireless connection. APPL-1001, 2:9-24. The ’018 Patent
`
`explains that the “embodiments of the present invention can be implemented” on a
`
`“PDA, a hand-held computer system, or palmtop computer system,” as illustrated
`
`in Figure 3 (APPL-1001, 5:37-40):
`
`APPL-1001, Fig. 3
`
`
`
`The ’018 Patent teaches that its portable computer system includes a processor, a
`
`transceiver, an input device, and a display device connected to a bus—i.e.,
`
`conventional components typically found in PDAs and palmtop computers in the
`
`late 1990s and early 2000s. APPL-1001, 5:38-66, Fig. 2; APPL-1003, ¶42.
`
`
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`One of the purported advantages of the portable computer system of the ’018
`
`Patent is that it can control a “variety of remote devices…including new devices
`
`introduced into the home or business.” APPL-1001, 3:2-4. In order to discover new
`
`devices, for example, when a user walks into a new room, the portable computer
`
`system “transmits [a] broadcast message 640 for the purpose of discovering
`
`compliant devices in the room.” APPL-1001, 8:33-54, Fig. 6. Compliant devices
`
`receiving the broadcast message reply to the portable computer system with a
`
`response. APPL-1001, 8:33-54. The ’018 Patent explains that in one embodiment
`
`this discovery process can be implemented using “Bluetooth…[where] the
`
`broadcast message and the responses are transmitted using radio signals.” APPL-
`
`1001, 10:45-47. After one or more devices are discovered, the “[p]ortable
`
`computer system [] can then transmit a command [] to a selected remote device”
`
`via user interactions with the display or input device. APPL-1001, 8:56-58.
`
`Each remote device that responds during the discovery process is
`
`represented (manifested) on the display of the portable computer system, for
`
`example, by an icon, as illustrated in Fig. 7 (APPL-1001, 9:8-16):
`
`
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Icons
`Representing
`Remote
`Devices
`
`APPL-1001, Fig. 7 (annotated); APPL-1003, ¶44
`
`
`
`The “user can then select one of the remote devices by touching the stylus
`
`element” to the display of the portable computer system. APPL-1001, 9:18-24. In
`
`response to the selection, the portable computer system “displays a rendering of a
`
`mechanism that can be used to control the remote device, such as an on/off
`
`switch,” as illustrated in Fig. 8 (APPL-1001, 9:25-40):
`
`
`
`6
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Rendering on
`the display
`device
`
`APPL-1001, Fig. 8 (annotated); APPL-1003, ¶45
`
`
`
`The ’018 Patent explains that a user can control the remote device by either
`
`touching the renderings on the display device (a “touchscreen”) or by “using input
`
`device” which is, for example, a “stroke or character recognition pad” that can
`
`“register movements of the stylus element.” APPL-1001, 6:20-22, 6:67-7:9, 9:25-
`
`50.
`
`
`
`
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`Display Device
`
`Input Device
`
`APPL-1001, Fig. 3 (annotated); APPL-1003, ¶46
`
`
`
`The portable computing device translates the stylus touches on the display device
`
`and “particular movements” on the input device into “particular commands” for
`
`controlling the remote devices. APPL-1001, 6:67-7:3, 9:25-50. For example,
`
`“stroke information entered onto input device 106 can correspond to a command
`
`that can be used to control a remote device.” APPL-1001, 6:22-40.
`
`This Petition establishes that it was well-known before the filing date of the
`
`’018 Patent to use a palmtop computer to control remote devices in the manner
`
`
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`described above, for example, by discovering new devices via broadcast messages,
`
`displaying icons representing the devices, and translating user inputs into control
`
`commands. See, e.g., APPL-1007; APPL-1008.
`
`Prosecution History
`
`B.
`The ’018 Patent issued on September 16, 2003 from U.S. Patent Application
`
`No. 09/558,413 (“the ’413 application”), which was filed on April 24, 2000. See
`
`APPL-1001. The ’018 Patent does not claim priority to any other earlier filed
`
`application. See APPL-1001.
`
`The ’018 Patent issued after a brief examination consisting of a single Office
`
`Action. APPL-1002, pp. 101-111. In the Office Action, the Examiner indicated
`
`that the following subject matter in three dependent claims was allowable:
`
`broadcasting a message, said message for locating remote
`devices within range of said transceiver; and
`receiving a response from said remote device.
`
`APPL-1002, pp. 107-08. After the Applicant rewrote the dependent claims into
`
`independent form the Examiner issued a Notice of Allowance without any further
`
`examination. APPL-1002, pp. 131-135. In the Allowance, the Examiner indicated
`
`that the “record of prior art fails to teach a method of controlling remote device
`
`over wireless communication link by transmitting a command to the remote
`
`device,” as recited in the independent claims. APPL-1002, p. 132. The Patent
`
`Office never considered any of the prior art references cited in this Petition when
`
`
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`examining the claims of the ’018 Patent.
`
`As shown in this Petition, however, not only was it well-known before the
`
`filing date of the ’018 Patent to control remote devices over a wireless link by
`
`transmitting commands to the devices, but it was also well-known to broadcast
`
`messages and receive responses to locate new devices. See, e.g., APPL-1007,
`
`Abstract, 3:18-20, 10:49-65. For example, the ’018 Patent itself explains that
`
`Bluetooth—a well-known wireless protocol in 2000—could be utilized to
`
`implement the discovery process described (and subsequently claimed) in the
`
`specification. APPL-1001, 8:4-55, 10:44-46 (“[i]n the Bluetooth embodiment, the
`
`broadcast message and the responses are transmitted using radio signals”); see also
`
`APPL-1003, ¶52 (explaining that the disclosure in the ’018 specification regarding
`
`the Bluetooth discovery process (Fig. 6) parallels the content of well-known
`
`Bluetooth publications). In other words, the subject matter the Examiner found
`
`allowable was already well known in the art, as even admitted by the ’018 Patent
`
`itself.
`
`C. Claim Construction
`In an inter partes review, claim terms are given their broadest reasonable
`
`construction in light of the specification. 37 C.F.R. § 42.100(b). Under this
`
`standard, claim terms are given their ordinary and accustomed meaning as would
`
`be understood by a POSITA in the context of the entire disclosure. In re Translogic
`
`
`
`10
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Further, the Board only
`
`construes the claims when necessary to resolve the underlying controversy. Toyota
`
`Motor Corp. v. Cellport Systems, Inc., IPR2015-00633, Paper No. 11, 16 (August
`
`14, 2015) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir.1999)). Petitioner submits that for the purposes of this proceeding, the
`
`terms of the challenged claims should be given their plain and ordinary meaning
`
`under the BRI standard, and no terms require specific construction.[1]
`
`V. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Patent Trial and Appeal Board (“the Board”) review
`
`the accompanying prior art and analysis, institute a trial for inter partes review of
`
`claims 1-27 of the ’018 Patent, and cancel those claims as unpatentable.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Henry
`
`Houh, the concepts described and claimed in the ’018 Patent were not novel. This
`
`Petition explains where each element of claims 1-27 is found in the prior art and
`
`why the claims would have been obvious to a POSITA before the earliest claimed
`
`priority date of the ’018 Patent. See APPL-1003, ¶32 (noting the level of ordinary
`
`
`[1] Petitioner does not concede that any term in the challenged claims meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
`
`patentable subject matter under 35 U.S.C. § 101.
`
`
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`skill in the art).
`
`VI.
`
`IDENTIFICATION OF CHALLENGES
`A. Challenged Claims
`Claims 1-27 of the ’018 Patent are challenged in this Petition.
`
`B.
`This Petition challenges the validity of claims 1-27 of the ’018 Patent on
`
`Statutory Grounds for Challenges
`
`four grounds:
`
`Claims
`Challenge
`Challenge #1 1-7 and
`9-10
`
`Challenge #2 8
`
`Challenge #3 11-17,
`19-25, and
`27
`Challenge #4 18 and 26
`
`Ground
`35 U.S.C. § 103 over Ben-Ze’ev in view of “The
`Complete Idiot’s Guide to PalmPilot and Palm III”
`(the “Idiot’s Guide”)
`35 U.S.C. § 103 over Ben-Ze’ev in view of the
`Idiot’s Guide, and Dara-Abrams
`35 U.S.C. § 103 over Ben-Ze’ev in view of the
`Idiot’s Guide, and Osterhout
`
`35 U.S.C. § 103 over Ben-Ze’ev in view of the
`Idiot’s Guide, Osterhout, and Dara-Abrams
`
`
`Ben-Ze’ev (APPL-1007)
`U.S. Patent No 6,791,467 to Ben-Ze’ev was filed March 23, 2000 and issued
`
`September 14, 2004, and is thus prior art at least under 35 U.S.C. § 102(e).
`
`The Idiot’s Guide (APPL-1008)
`The Idiot’s Guide was published and publicly available at the Library of
`
`Congress at least as of August 1999 and is thus prior art at least under 35 U.S.C. §
`
`102(a). See APPL-1005, ¶24.
`
`
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Dara-Abrams (APPL-1010)
`U.S. Patent No. 6,456,892 to Dara-Abrams et al. was filed October 20, 1998
`
`and issued September 24, 2002, and is thus prior art at least under 35 U.S.C. §
`
`102(e).
`
`Osterhout (APPL-1011)
`U.S. Patent No. 7,149,506 to Osterhout et al. is a divisional of U.S. non-
`
`provisional Application No. 09/419,175 (“’175 application”) filed October 15,
`
`1999. The ’175 application never published, but when the subsequent application
`
`that matured into the Osterhout patent was filed, the Applicants re-submitted the
`
`same specification and figures (compare APPL-1024, pp. 375-407 with APPL-
`
`1025, pp. 209-241) and properly claimed priority back to the ’175 application
`
`(APPL-1024, p. 373). During prosecution of the Osterhout patent, the Examiner
`
`verified its divisional status. APPL-1024, p. 370, see also APPL-1024, p.
`
`189. Accordingly, (i) the subject matter in the Osterhout patent relied upon in this
`
`Petition and (ii) the issued claims of the Osterhout patent both find written
`
`description support in the ’175 application. Osterhout is therefore prior art at least
`
`under 35 U.S.C. § 102(e).
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenge #1: Claims 1-7 and 9-10 are obvious under 35 U.S.C § 103
`over Ben-Ze’ev in view of the Idiot’s Guide
`
`1.
`
`Summary of Ben-Ze’ev
`
`
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`Just like the ‘018 Patent, Ben-Ze’ev is directed to an adaptive remote control
`
`“that adapts itself automatically to its environment so as to remotely control a
`
`plurality of appliances.” APPL-1007, Abstract, 3:18-20, 2:44-46, 2:58-3:3, 6:44-
`
`48, 7:13-16.
`
`And, also like the ’018 Patent, Ben-Ze’ev explains that its “remote controller
`
`may be, for example, part of a PDA (Personal Digital Assistance) device, such as
`
`3Com’s PalmPilotTM , or comprise some of the components of such a PDA product
`
`or similar product.” APPL-1007, 10:45-48. Fig. 6 illustrates Ben-Ze’ev’s adaptive
`
`remote controller:
`
`APPL-1007, Fig. 6
`
`
`
`Ben-Ze’ev teaches that its adaptive remote controller includes a “processing
`
`
`
`14
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`unit,” such as a “microprocessor,” and a transceiver comprising a “RF
`
`transmitter/receiver,” as illustrated in Fig. 3 below. APPL-1007, 8:10-40, 15:21-23.
`
`Transceiver
`
`
`
`APPL-1007, Fig. 3 (annotated); APPL-1003, ¶59
`
`
`
`
`The transceiver utilizes “a wireless communication protocol…such as
`
`Bluetooth…that manages communication between all components in the network,
`
`including at least the appliances, and the one or more remote controllers in its
`
`vicinity.” APPL-1007, 9:2-9, 6:49-52, 8:41-48. Additionally, Ben-Ze’ev teaches
`
`that its adaptive remote controller includes “an interactive-type display, which can
`
`display virtual keys that can be activated by pressing on their display location.”
`
`APPL-1007, 8:10-40.
`
`
`
`
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`15
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
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`Display Screen
`
`APPL-1007, Fig. 6 (annotated); APPL-1003, ¶60
`
`
`
`Ben-Ze’ev explains that one of the advantages of its adaptive remote
`
`controller is that it can control a “plurality of appliances” and “adapt itself
`
`immediately and automatically to…a new environment that includes appliances
`
`different from the previous environment.” APPL-1007, Abstract, 2:57-64. Like the
`
`controller in the ’018 Patent, Ben-Ze’ev’s controller utilizes a broadcast message
`
`in order to locate new devices. APPL-1007, 10:49-65. Specifically, the adaptive
`
`remote controller “periodically interrogates the existence of all appliances in its
`
`vicinity” via an “interrogation signal [that] is generally sent periodically to all
`
`appliances.” APPL-1007, 10:49-65. Appliances reply with an “identification
`
`signal.” Id. Each appliance that responds during the interrogation process is
`
`represented (manifested) on the display of the adaptive remote controller, for
`
`
`
`16
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`example, by an icon, as illustrated in Fig. 6 (APPL-1007, 11:15-24):
`
`Icons
`Representing
`Appliances
`
`APPL-1007, Fig. 6 (annotated); APPL-1003, ¶62
`
`
`
`The “user has to simply select [the appliance’s] icon from the icons on the display
`
`by pressing on its location on the screen.” APPL-1007, 12:25-31. In response to
`
`the selection, the adaptive remote controller displays a “dedicated keyboard” with
`
`“virtual keys,” where each virtual key is “associated with a specific signal format
`
`required to activate a corresponding feature of the appliance.” APPL-1007, 12:25-
`
`40.
`
`
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`17
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`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`
`
`Dedicated
`keyboard that
`includes
`virtual keys
`
`APPL-1007, Fig. 7 (annotated); APPL-1003, ¶63
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`
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`When a virtual key is selected, the adaptive remote controller translates the user’s
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`input “into a signal that will be sent to the appliance for carrying out the
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`corresponding application.” APPL-1007, 10:36-41.
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`2.
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`Summary of the Idiot’s Guide
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`The Idiot’s Guide describes the features and functionality of a personal
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`digital assistant, called the PalmPilot that was popular at the time of filing the ’018
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`Patent. APPL-1008, p. 25; APPL-1003, ¶65. In fact, based upon a comparison of
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`the figures in the ’018 Patent and the illustrations of the PalmPilot in the Idiot’s
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`Guide, it appears that the PalmPilot is an example of the “palmtop computer
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`system” upon which the ’018 Patent contemplates implementing the alleged
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`invention (APPL-1001, 5:38-41):
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`APPL-1001, Fig. 3
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`APPL-1008, p. 26
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`
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`The Idiot’s Guide describes the PalmPilot as a “little computer that’s been
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`designed from the ground up to help you organize your life, and the built-in
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`software helps you do just that.” APPL-1008, p. 25. In particular, the Idiot’s Guide
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`teaches that the PalmPilot can be used as a “universal remote-control device” with
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`which “you can control your TV, your CD player, and other items in your
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`home….” APPL-1008, p. 81.
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`A user interacts with the PalmPilot through a touch-sensitive display and an
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`input device called the “Graffiti Writing Area,” as shown below. APPL-1008, pp.
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`27, 32.
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`Graffiti Writing Area
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`APPL-1008, p. 26 (annotated); APPL-1003, ¶67
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`
`
` A stylus is used in conjunction with the Graffiti writing area, where the
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`PalmPilot registers the “starting point” and movement of the stylus over the
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`surface of the Graffiti writing area and translates the stylus touches and movements
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`into particular commands. APPL-1008, pp. 64, 68. For example, the Idiot’s Guide
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`teaches that a “Command stroke” and a subsequent letter is translated into a
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`particular command, as shown below. APPL-1008, p. 68.
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`APPL-1008, p. 68
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`APPL-1008, p. 66
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`
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`3.
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`Reasons to Combine Ben-Ze’ev and the Idiot’s Guide
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`For the reasons set forth below, a POSITA would have been motivated to
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`combine the teachings of Ben-Ze’ev and the Idiot’s Guide in order to produce the
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`obvious, beneficial, and predictable result of Ben-Ze’ev’s adaptive remote
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`controller having an input device, such as the PalmPilot’s Graffiti writing area,
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`through which a user could remotely control appliances with stylus movements.
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`APPL-1003, ¶69.
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`First, a POSITA when considering the teachings of Ben-Ze’ev is expressly
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`instructed to consider “the components” and features of personal digital assistants
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`(PDAs), such as 3Com’s PalmPilot devices. APPL-1007, 10:45-48 (explaining that
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`adaptive remote controller can be “part of a PDA (Personal Digital Assistance)
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`device, such as 3Com’s PalmPilot™, or comprise some of the components of such
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`a PDA product….”). The Idiot’s Guide describes the features and functionality of a
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`well-known PDA, the PalmPilot.
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`Second, when considering which PDA components to utilize in conjunction
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`with Ben-Ze’ev’s adaptive remote controller, 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. APPL-1003, ¶71. Not only
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`were PalmPilots already being utilized as universal remote controllers before the
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`filing of the ’018 Patent (see APPL-1008, p. 81; APPL-1022, p. 1), but the Graffiti
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`writing area specifically was being used to issue control commands. APPL-1003,
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`¶¶72-73 (citing APPL-1020, p. 1).
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`As evidence of this specific combination pre-dating the ’018 Patent,
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`software called “PalmRemote” provided PalmPilot users with the option of
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`utilizing “Graffiti commands” to control various functions of a consumer
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`electronic device. APPL-1003, ¶73 (citing APPL-1020, p. 1.). As Dr. Houh
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`explains in his declaration, with the PalmRemote software a user could enter
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`Graffiti commands, for example, to turn the volume up and down on a Sony TV:
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`APPL-1020, p. 1; APPL-1003, ¶73
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`
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`Accordingly, using the PalmPilot’s Graffiti writing area to control consumer
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`appliances, such as those described in Ben-Ze’ev, would have been predictable to a
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`POSITA because that specific combination was already being performed before
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`the filing of the ’018 Patent. APPL-1003, ¶74.
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`Third, a POSITA have also found it beneficial to use the PalmPilot’s Graffiti
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`writing area in conjunction with Ben-Ze’ev’s adaptive remote controller
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`predictable. APPL-1003, ¶75. Specifically, by giving the user the choice of
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`inputting commands into Ben-Ze’ev’s adaptive remote controller via the Graffiti
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`writing area or the touchscreen, the user can select the more efficient option in
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`order to “save time.” APPL-1008, p. 78 (“If you want to save time, use the Graffiti
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`Command stroke instead of menus.”). For example, executing a command with the
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`Command stroke in the Graffiti writing area can be “much faster” than tapping on
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`the touch screen. APPL-1008, pp. 68, 78 (“The Command stroke lets you perform
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`menu commands without having to tap, tap, tap.”); see also APPL-1003, ¶75
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`(citing APPL-1019, p. 14 (explaining that using Graffiti is much faster than
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`tapping the tiny keys on the small display screen)).
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`To the extent any modifications would have been needed to the teachings of
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`Ben-Ze’ev in order to accommodate the teachings of the Idiot’s Guide regarding
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`the PalmPilot’s Graffiti writing area, such modifications would have been within
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`the level of a POSITA. APPL-1003, ¶76. For example, the Idiot’s Guide teaches
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`that “that customizing your PalmPilot . . . is easy” and that a user can “customize
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`the PalmPilot in about a zillion different ways” including “how you use Graffiti.”
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`APPL-1008, pp. 89, 96; see also APPL-1003, ¶76 (citing APPL-1009, pp. 19-20
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`(explaining that a PalmPilot could be customized, for example, to “add features or
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`to make your PalmPilot behave differently than a normal PalmPilot”)). As such,
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`adding and modifying components to Ben-Ze’ev’s PalmPilot-based remote control
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`was well within the skill of a POSITA in 2000. APPL-1003, ¶76.
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`Accordingly, a POSITA would have found it obvious to apply the Idiot’s
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`Guide teaching regarding the PalmPilot’s Graffiti writing area to Ben-Ze’ev’s
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`adaptive remote controller because the combination amounts to combining prior art
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`elements according to known methods to yield the predictable and beneficial result
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`of Ben-Ze’ev’s adaptive remote controller having an input device, such as the
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`Graffiti writing area, through which a user could remotely control appliances with
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`stylus command strokes. APPL-1003, ¶77.
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`4.
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`Detailed Analysis
`
`The following analysis describes how Ben-Ze’ev in view of the Idiot’s
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`Guide renders obvious each and every element of at least claims 1-7 and 9-10 of
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`the ’018 Patent. A corresponding claim chart is contained in Dr. Houh’s expert
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`declaration. APPL-1003, pp. 46-98.
`
`Claim 1
`[1.0] “A method for controlling a remote devices over a wireless connection, said
`method comprising:”
`Ben-Ze’ev discloses this limitation because it teaches a “method and system
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`for the remote controlling of appliances” with an “adaptive remote controller [that]
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`is RF based and has the capability of two way communication with appliances.”
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`APPL-1007, Abstract, 1:5-11; 5:10-20; 7:62-65. “Each appliance in the system, as
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`well as the remote controller, is provided with a wireless communication
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`protocol…such as Bluetooth…that manages the communication between all
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`components in the network.” APPL-1007, Abstract, 9:2-12; 6:34-48; see APPL-
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`1003, pp. 46-49.
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` [1.1] “a) establishing said wireless connection between a transceiver and said
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`remote device by:”
`Ben-Ze’ev discloses this limitation because it teaches that its adaptive
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`remote controller includes a transceiver comprising a “RF transmitter/receiver”
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`(APPL-1007, 15:21-23, 8:12-15, 12:37-40, Abstract, 8:52-58, 7:8-17, 2:34-47), as
`
`illustrated in Figure 3:
`
`Transceiver
`
`
`
`APPL-1007, Fig. 3 (annotated); APPL-1003, ¶49
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`
`
`
`
`Second, Ben-Ze’ev teaches that the transceiver utilizes “Radio Frequency
`
`(RF) communication protocols,” such as “Bluetooth,” to create “two way
`
`communication” between the adaptive remote controller and the appliances.
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`APPL-1007, Abstract, 8:41-58. The “wireless communication protocol…manages
`
`the communication between all components in the network, including at least the
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`appliances, and the one or more remote controllers in its vicinity.” APPL-100