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 IPR2018-00395
`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 IPR2018-00395
`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
`
`
`
`IPR2018-00395
`Patent 6,622,018 B1
`
`
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “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
`
`a Preliminary Response (Paper 6, “PO Prelim. Resp.”).
`
`
`
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`
`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
`
`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
`
`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
`
`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-
`
`JRG (E.D. Tex. 2017); and concurrently filed IPR2018-00394. Pet. 2–3;
`
`Paper 4, 2.
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`2
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`IPR2018-00395
`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
`
`’018 patent explains that a user can control a remote device by either
`
`touching a rendering on the computer system’s display or by using an input
`
`device such as a stroke or character recognition pad that can register stylus
`
`movements on the portable computer system. Id. at 6:20–22, 6:67–7:9,
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`9:25–50.
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`3
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`IPR2018-00395
`Patent 6,622,018 B1
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`
`C. ILLUSTRATIVE CLAIM
`
`
`
`Of the challenged claims, claims 1, 11, and 21 are independent.
`
`Independent claim 1 (reproduced below) is representative.
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`1. A method for controlling a remote devices over a wireless
`connection, said method comprising:
`
`a) establishing said wireless connection between a transceiver
`and said remote device by:
`
`broadcasting a message, said message for locating remote
`devices within range of said transceiver; and
`
`receiving a response from said remote device;
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`b) manifesting said remote device on a display device;
`
`c) registering a position where contact is made with a surface of
`an input device, wherein a particular position on said input
`device is translated into a particular command for controlling
`said remote device; and
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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
`
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Leichiner 1 and Idiot’s Guide2
`Leichiner, Idiot’s Guide, and
`Dara-Abrams3
`Leichiner, Idiot’s Guide, and
`Bell4
`
`Challenged Claim(s)
`Basis
`§ 103(a) 1–7 and 9
`§ 103(a) 8
`
`§ 103(a) 10
`
`
`1 Japanese Pub. No. JPH06319177 (Nov. 15, 1994) (certified English
`translation) (Ex. 1027, “Leichiner”).
`2 Preston Gralla, “The Complete Idiot’s Guide to PalmPilot and Palm III”
`(1999) (Ex. 1008, “Idiot’s Guide”).
`3 U.S. Patent No. 6,456,892 B1 (Sep. 24, 2002) (Ex. 1010, “Dara-Abrams”).
`4 U.S. Patent No. 7,894, 474 B1 (Feb. 22, 2011) (Ex. 1029, “Bell”).
`
`4
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`IPR2018-00395
`Patent 6,622,018 B1
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`
`References
`Leichiner, Idiot’s Guide, and
`Osterhout5
`
`Challenged Claim(s)
`Basis
`§ 103(a) 11–17, 19, 21, 22, 24, 25, and
`27
`
`Leichiner, Idiot’s Guide,
`Osterhout, and Dara-Abrams
`Leichiner, Idiot’s Guide,
`Osterhout, and Bell
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`§ 103(a) 18 and 26
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`§ 103(a) 20 and 23
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`Pet. 12.
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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 id. at 11;
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`PO Prelim. Resp. 7. We conclude no additional express claim construction
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`is necessary for our determination of whether to institute inter partes review
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`of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
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`that are in controversy, and only to the extent necessary to resolve the
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`controversy.”).
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`1. Leichiner (Ex. 1027)
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`B. ASSERTED PRIOR ART
`
`Leichiner is a Japanese patent publication titled “Adaptive Remote
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`Control System.” It teaches “an adaptive intelligent controller similar to a
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`handheld remote controller for interacting with a responding controlled
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`device.” See Ex. 1027, Abstract. Leichiner teaches “[t]he controlled device,
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`which is positioned close to the controller, is polled by the controller with
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`regards to availability.” Id. Then, “[t]he controlled device responds to the
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`5 U.S. Patent No. 7,149,506 B2 (Dec. 12, 2006) (Ex. 1011, “Osterhout”).
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`5
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`Patent 6,622,018 B1
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`controller” and “the controller provides appropriate user interface . . . based
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`on information received from the controlled device.” Id.
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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.
`
`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
`
`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.”
`
`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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`6
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`IPR2018-00395
`Patent 6,622,018 B1
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`5. Bell (Ex. 1029)
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`Bell is a U.S. patent titled “Remote Control of an Electronic Device
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`Through Downloading of a Control Interface of the Electronic Device in a
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`Mobile Station.” Bell teaches a mobile device using Bluetooth to control
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`remote devices. Ex. 1029, 5:5–60.
`
`C. ANALYSIS
`
`1. Ground 1: Obviousness of Claims 1–7 and 9 Based on Leichiner and
`Idiot’s Guide
`
`Petitioner asserts claims 1–7 and 9would have been obvious over
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`Leichiner and Idiot’s Guide. Pet. 15–53. 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 Leichiner teaches the broadcasting limitation because it “teaches
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`that the controller ‘generates polling messages to all of the controlled
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`devices in the immediate vicinity,’ making it ‘possible to conduct polling to
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`a number of the controlled devices at the same time.’” Id. at 26 (quoting
`
`Ex. 1027 ¶¶ 12, 22, 65). Petitioner explains, with support from its Expert,
`
`Dr. Houh, that “[a] POSITA would understand that Leichiner’s adaptive
`
`remote controller broadcasts the polling message because the message is not
`
`transmitted to any one particular recipient—it is transmitted to all devices in
`
`the vicinity for the purpose of detecting their presence.” Id. (citing Ex.
`
`1030, 51).
`
`7
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`IPR2018-00395
`Patent 6,622,018 B1
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`Patent Owner, citing support from its expert, Mr. Easttom, argues that
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`Leichiner’s polling message 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 ‘poll’ multiple machines would mean doing so sequentially, one at a
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`time.” PO Prelim. Resp. 17 (citing Ex. 2001 ¶¶ 48–51).
`
`We find that Dr. Houh’s and Mr. Easttom’s competing testimony
`
`creates a genuine issue of material fact as to whether Leichiner’s polling
`
`signal teaches the claimed broadcasting feature. At this stage of the
`
`proceeding, however, we view such evidence in the light most favorable to
`
`the Petitioner. See 37 C.F.R. § 42.108(c). Accordingly, on this record,
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`Petitioner provides adequate evidence that Leichiner discloses broadcasting
`
`a message for locating remote devices within range of the transceiver as the
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`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 Leichiner and Idiot’s Guide teaches or
`
`suggests the remaining limitations of claims 1–7 and 9, as outlined below.
`
`i. Claim 1
`
`Petitioner made an adequate showing that Leichiner teaches “[a]
`
`method for controlling a remote devices over a wireless connection,” as
`
`claim 1 requires. See Pet. 24 (citing Ex. 1027 ¶¶ 9, 10, 12, 17–19, 38, 41,
`
`61, Fig. 10; Ex. 1030, 42–46). Petitioner made an adequate showing that
`
`Leichiner teaches “establishing said wireless connection between a
`
`transceiver and said remote device,” as claim 1 requires. See id. at 24–25
`
`(citing Ex. 1027 ¶¶ 10, 12, 18, 19, 61–62, Fig. 10; Ex. 1030, 46–49).
`
`8
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`IPR2018-00395
`Patent 6,622,018 B1
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`Petitioner made an adequate showing that Leichiner teaches “broadcasting a
`
`message, said message for locating remote devices within range of said
`
`transceiver,” as claim 1 requires. See id. at 25 (citing Ex. 1027 ¶¶ 10, 12,
`
`22, 17–18, 65; Ex. 1030, 49–52). Petitioner made an adequate showing that
`
`Leichiner teaches “receiving a response from said remote device,” as claim 1
`
`requires. See id. at 27 (citing Ex. 1027 ¶¶ 11, 20–21; Ex. 1030, 52–53).
`
`Petitioner made an adequate showing that Leichiner teaches “manifesting
`
`said remote device on a display device,” as claim 1 requires. See id. at 27
`
`(citing Ex. 1027 ¶¶ 11, 20–21, 23, 32–33, Fig. 2; Ex. 1030, 53–56).
`
`Petitioner made an adequate showing that the combination of Leichiner 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 28–31 (citing
`
`Ex. 1027 ¶¶ 12, 45, 61, 65, Fig. 3; Ex. 1008, 32, 33, 64–65, 66; Ex. 1030
`
`¶¶ 56–61, 67–76). Petitioner made an adequate showing that the
`
`combination of Leichiner and Idiot’s Guide teaches “wherein a particular
`
`position on said input device is translated into a particular command for
`
`controlling said remote device,” as claim 1 requires. See id. at 31–37 (citing
`
`Ex. 1027 ¶¶ 10, 23, 34, 45, 65, Fig. 3; Ex. 1008, 4, 32–33, 64, 68, 69, 78;
`
`Ex. 1030, 61–67). Petitioner made an adequate showing that Leichiner
`
`teaches “transmitting a command to said remote device over said wireless
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`connection,” as claim 1 requires. See id. at 37–39 (citing Ex. 1027 ¶¶ 9, 10,
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`19, 34, 36, 63, Fig. 11; Ex. 1030, 67–71).
`
`ii. Claim 2
`
`Petitioner made an adequate showing that the combination Leichiner
`
`and Idiot’s Guide teaches the additional limitation in dependent claim 2:
`
`“wherein said step c) comprises the step of: registering a position where a
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`9
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`IPR2018-00395
`Patent 6,622,018 B1
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`stylus element makes contact with said surface of said input device.” See id.
`
`at 39 (citing Ex. 1008, 64–65; Ex. 1030, 71–72).
`
`iii. Claim 3
`
`Petitioner made an adequate showing that Idiot’s Guide teaches
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`“wherein said step c) further comprises the step of: recognizing a movement
`
`of said stylus element over said surface of said input device,” as dependent
`
`claim 3 requires. See id. at 39 (citing Ex. 1008, 25, 32, 64–65; Ex. 1030,
`
`72–73). Petitioner made an adequate showing that the combination of
`
`Leichiner 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 40–41 (citing Ex. 1027
`
`¶¶ 12, 34, 65; Ex. 1008, 25, 64, 68; Ex. 1030, 73–75).
`
`iv. Claim 4
`
`Petitioner made an adequate showing that the combination of
`
`Leichiner and Idiot’s Guide teaches “registering a position where said stylus
`
`element makes contact with a screen of said display device,” as dependent
`
`claim 4 requires. See id. at 41–42 (citing Ex. 1027 ¶¶ 12, 21, 38, 45;
`
`Ex. 1008, 16, 27, 42–43, Ex. 1030, 75–78). Petitioner made an adequate
`
`showing that the combination of Leichiner 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 42–44 (citing Ex. 1027 ¶¶ 10, 12, 34, 45, 65, Abstract, Fig. 3; Ex. 1008,
`
`42, 51, 74–75, 77; Ex. 1030, 78–82).
`
`v. Claim 5
`
`Petitioner made an adequate showing that Leichiner teaches
`
`“receiving responses from a plurality of remote devices,” as dependent
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`10
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`IPR2018-00395
`Patent 6,622,018 B1
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`claim 5 requires. See id. at 44 (citing Ex. 1027 ¶¶ 10–12, 17, 65; Ex. 1030,
`
`82–86). Petitioner made an adequate showing that Leichiner also teaches
`
`“manifesting each of said plurality of remote devices on said display device”
`
`and “selecting one of said plurality of remote devices” as claim 5 requires.
`
`See id. at 45–46 (citing Ex. 1027 ¶¶ 33, 41–42, Fig. 2; Ex. 1030, 86–89).
`
`vi. Claim 6
`
`Petitioner made an adequate showing that Leichiner 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 46–47 (citing Ex. 1027 ¶¶ 21, 34, 65, Fig. 3; Ex. 1030, 89–91).
`
`vii. Claim 7
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`Petitioner made an adequate showing that the combination of
`
`Leichiner and Idiot’s Guide 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 47–50 (citing Ex. 1027 ¶¶ 12, 21, 27, 34, 65,
`
`Abstract, Fig. 3; Ex. 1008, 74, 75, 76–77; Ex. 1030, 91–96).
`
`viii. Claim 9
`
`Petitioner made an adequate showing that the combination of
`
`Leichiner 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 50–53 (citing Ex. 1027
`
`¶¶ 25–28, 34, 42–43; Ex. 1008, 42, 68, 76–77; Ex. 1030, 96–102).
`
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`11
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`c. Rationale for Combining Leichiner and Idiot’s Guide
`
`Based on the current record and for purposes of this Decision,
`
`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
`
`asserts that it would have been obvious to one skilled in the art to modify
`
`Leichiner’s adaptive remote controller to include the graffiti writing area
`
`input device, as disclosed in the Idiot’s Guide, so that “a user could remotely
`
`control appliances with stylus command strokes.” Pet. 20 (citing Ex. 1030
`
`¶¶ 67–76. Petitioner goes on to explain that “by giving the user the choice
`
`of inputting commands into Leichiner’s adaptive remote controller via the
`
`touchscreen or Graffiti writing area, the user can select the more efficient
`
`option in order to ‘save time.’” Id. at 22–23 (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 Leichiner’s adaptive remote
`
`controller having an input device through which a user could remotely
`
`control appliances with stylus command strokes.” Pet. 23; see KSR, 550
`
`U.S. at 416 (“The combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable
`
`results.”). Thus, on this record, Petitioner has shown adequately that one
`
`skilled in the art would have had reason to combine the teachings of
`
`Leichiner and Idiot’s Guide.
`
`Patent Owner argues that Petitioner’s rationale is insufficient. First,
`
`Patent Owner contends, Petitioner relies on a screenshot of PalmRemote
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`12
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`software without providing any evidence that the software actually existed.
`
`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 Leichiner’s and Idiot’s Guide’s teachings in the
`
`manner Petitioner suggests with predictable results, and therefore had reason
`
`to do so. See Pet. 21–22. “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
`
`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.
`
`Even if we agreed with Patent Owner, however, that would not undermine
`
`the proposed combination because Petitioner provides sufficient rationale for
`
`the combination aside from the Idiot’s Guide, as outlined above.
`
`Last, Patent Owner argues that “Petitioner improperly speculates
`
`through its declarant,” and Petitioner’s expert testimony supporting
`
`Petitioner’s proffered combination improperly parrots the same speculative
`
`conclusory statements from the Petition. See PO Prelim. Resp. 10, 13, 16.
`
`We disagree. That the Petition repeats Dr. Houh’s testimony regarding
`
`reasons a person of ordinary skill in the art would have been motivated to
`
`combine Leichiner 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
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`addition, Petitioner does more than “provide[ ] only speculation and
`
`conjecture for its proposed combination,” as Patent Owner asserts. See PO
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`13
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`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 devices as described in Leichiner”) (citing Ex. 1030 ¶ 70); id.
`
`at 23 (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; 1030 ¶ 74). On this record, we see no reason to
`
`require more. See KSR, 550 U.S. at 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 and 9
`
`would have been obvious over Leichiner and Idiot’s Guide.
`
`2. Ground 2: Obviousness of Claim 8 Based on Leichiner, Idiot’s Guide,
`and Dara-Abrams
`
`Petitioner asserts claim 8 would have been obvious over Leichiner,
`
`Idiot’s Guide, and Dara-Abrams. Pet. 53–61. On the current record, we
`
`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 Leichiner 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
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`additional limitation in claim 8, which depends from claim 6 and further
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`requires “imparting motion to said rendering in response to movement of a
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`stylus element over said surface of said input device.” See id. at 59–61
`
`(citing Ex. 1010, Abstract, 5:2–19, 9:30–36, 10:3–14, 19:5–6, 19:53–67,
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`20:1–12, 20:23–43; Ex. 1030, 111–115).
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`b. Rationale for Combining Dara-Abrams with Leichiner/Idiot’s Guide
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`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
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`interface (GUI) elements (e.g., pressing a button, moving a dial, switching a
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`toggle, etc.) with the relevant adaptive remote controller from Leichiner and
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`Idiot’s Guide. See Pet. 54–59. Petitioner explains, with support from the
`
`prior art references, that “like Leichiner, 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. 55 (quoting Ex. 1010, 4:8–11 and citing Ex. 1027
`
`¶¶ 65). On this record, we agree with Petitioner that including Dara-
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`Abrams’ animated GUI control elements in Leichiner’s GUI “would
`
`advance Leichiner stated goal of ‘provid[ing] to the user a single hand-held
`
`remote controller which constitutes a suitable user interface relative to each
`
`of the available devices’ in order to ‘control a number of devices located in
`
`the vicinity thereof, which are possibly very different from each other, at the
`
`same time.’” Pet. 55 (quoting Ex. 1027 ¶¶ 9–10; Ex. 1030 ¶ 85).
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`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 Leichiner, Idiot’s Guide, and Dara-Abrams.
`
`3. Ground 3: Obviousness of Claim 10 Based on Leichiner, Idiot’s Guide,
`and Bell
`
`Petitioner asserts claim 10 would have been obvious over Leichiner,
`
`Idiot’s Guide, and Bell. Pet. 61–66. On the current record, we 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 Leichiner and Idiot’s Guide teaches each limitation in claim
`
`1. Petitioner also made an adequate showing (unchallenged by Patent
`
`Owner in its Preliminary Response) that Bell accounts for the additional
`
`limitation in dependent claim 10, which depends from claim 1 and further
`
`requires “wherein said transceiver and said remote device are Bluetooth-
`
`enabled devices.” See id. at 64–66 (citing Ex. 1027 ¶¶ 18–19, Ex. 1029,
`
`5:1–32, 5:50–60, 6:12–30, Fig. 2, Fig. 5; Ex. 1030, 120–125).
`
`b. Rationale for Combining Bell with Leichiner/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 Bell’s teaching of using a Bluetooth radio transceiver to
`
`communicate with Bluetooth-based controllable electronic devices with the
`
`relevant adaptive remote controller from Leichiner and Idiot’s Guide. See
`
`Pet. 62–64. Petitioner explains, with support from its expert and the prior art
`
`references, that “a POSITA would have found it advantageous for
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`Leichiner’s controller to utilize Bluetooth radio transmissions to control the
`
`devices in its vicinity because doing so would advance Leichiner’s stated
`
`goal of controlling ‘a number of devices . . . which are possibly very
`
`different from each other.’” Id. at 63 (citing Ex. 1027 ¶ 9; Ex. 1030 ¶ 100).
`
`Petitioner goes on to explain “a POSITA would be motivated to select
`
`Bluetooth over other RF protocols because Bluetooth ‘features low energy
`
`consumption for use in battery operated devices,’ and it was well known that
`
`the ‘batteries don’t last very long on a PalmPilot.’” Id. (citing Ex. 1013, 3;
`
`Ex. 1008, 41; Ex. 1030 ¶ 100).
`
`c. Conclusion
`
`On this record and for purposes of this Decision, Petitioner has shown
`
`a reasonable likelihood that it would prevail in establishing claim 10 would
`
`have been obvious over Leichiner, Idiot’s Guide, and Bell.
`
`4. Ground 4: Obviousness of Claims 11–17, 19, 21, 22, 24, 25, and 27
`Based on Leichiner, Idiot’s Guide, and Osterhout
`
`Petitioner asserts claims 11–17, 19, 21, 22, 24, 25, and 27 would have
`
`been obvious over Leichiner, Idiot’s Guide, and Osterhout. Id. at 66–88.
`
`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 id.
`
`at 79–80, 81–82; PO Prelim. Resp. 19. For the reasons explained above, we
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`find that Petitioner’s and Patent Owner’s competing expert testimony creates
`
`a genuine issue of material fact as to whether Leichiner’s polling 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 Leichiner discloses broadcasting a message for 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 Leichiner, Idiot’s Guide, and Osterhout
`
`teaches or suggests the remaining limitations of claims 11–17, 19, 21, 22,
`
`24, 25, and 27, as outlined below.
`
`i. Claim 11
`
`Petitioner made an adequate showing that the combination of
`
`Leichiner, Idiot’s Guide, 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. 69–76 (citing Ex. 1027 ¶¶ 9–10, 41, 61, Fig. 10; Ex. 1008,
`
`25–27, 38, Fig. 10; Ex. 1011, 8:3–25, Fig. 3; Ex. 1030, 129–142). Petitioner
`
`made an adequate showing that the combination of Leichiner, Idiot’s Guide,
`
`and Osterhout teaches “an input device coupled to said bus” as claim 11
`
`requires. See id. at 76–78 (citing Ex. 1008, 25, 26, 32, 64); Ex. 1011, 8:3–
`
`25, Fig. 3; Ex. 1030, 142–145). Petitioner made an adequate showing that
`
`the combination of Leichiner and Idiot’s Guide teaches “said processor for
`
`performing a method for controlling a remote device over a wireless
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`connection, said method comprising the computer-implemented steps of:” as
`
`claim 11 requires. See id. at 78–79 (citing Ex. 1027 ¶¶ 9–10, 12, 18–19;
`
`Ex. 1008, 25; Ex. 1030, 145–145). Petitioner made an adequate showing
`
`that the combination of Leichiner, Idiot’s Guide, and Osterhout teaches “a)
`
`establishing said wireless connection between said transceiver and said
`
`remote device by: broadcasting a message, said message for locating remote
`
`devices within range of said transceiver; and receiving a response from said
`
`remote device; b) manifesting said remote device on a display device; c)
`
`registering a position where contact is made with a surface of an input
`
`device, wherein a particular position on said input device is translated into a
`
`particular command for controlling said remote device; and d) transmitting a
`
`command to said remote device over said wireless connection,” as claim 11
`
`requires. See id. at 79–80 (referring to parallel limitations in claim 1 and
`
`citing Ex. 1030, 148–149).
`
`ii. Claims 12–17 and 19
`
`As Petitioner notes, dependent claims 12–17 and 19 parallel claims 2–
`
`7 and 9. Id. at 80. Thus, based on the analysis noted above for claims 2–7
`
`and 9, Petitioner has made an adequate showing that the combination of
`
`Leichiner, Idiot’s Guide, and Osterhout teaches the additional limitations in
`
`dependent claims 12–17 and 19. See id. at 80 (citing Ex. 1003, 149–153).
`
`iii. Claim 21
`
`Petitioner made an adequate showing that Leichiner teaches “[a]
`
`hand-held computer system for controlling a remote device over a radio
`
`connection,” as claim 21 requires. See id. 80 (citing Ex. 1027 ¶¶ 9, 10, 18–
`
`19, 61; Ex. 1030, 154–155). Petitioner made an adequate showing that the
`
`combination of Leichiner, Idiot’s Guide, and Osterhout teaches “a bus,” “a
`
`19
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`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. 1030, 155). Petitioner made an adequate showing
`
`that the combination of Leichiner, Idiot’s Guide, and Osterhout 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. 1027 ¶¶ 10, 19, 61–62;
`
`Ex. 1030, 155–159). Petitioner made an adequate showing that the
`
`combination of Leichiner, Idiot’s Guide, and Osterhout teaches “wherein
`
`said transceiver is adapted to broadcast a mes
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