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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 IPR2018-00395
`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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`IPR2018-00395
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................ 1
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`I.
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`II. LEICHINER 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. Leichiner teaches transmitting a polling message to multiple devices at
`the same time ................................................................................................ 4
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`C. Patent Owner narrowly focuses on the word “polling” while ignoring
`the actual teachings of Leichiner that describe broadcasting ....................... 9
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`III. THE UNCHANGED EVIDENTIARY RECORD SUPPORTS THE
`COMBINATION OF LEICHINER AND THE IDIOT’S GUIDE .........................13
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`A. PalmRemote illustrates the knowledge a POSITA would bring to bear
`in reading Leichiner and the Idiot’s Guide ................................................. 14
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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 Leichner 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) ....................................................................................................................10
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`Agilysys, Inc. v. Ameranth, Inc., CBM2014-00016, Paper 35 (P.T.A.B. Mar. 20,
`2015) ....................................................................................................................10
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`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) ........15
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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) ...........................................................20
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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) ............................21
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`Mobile Tech., Inc. v. InVue Security Prod’s, Inc., IPR2017-00344, Paper 41
`(P.T.A.B. May 24, 2018) .....................................................................................20
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`Nat'l Steel Car, Ltd. v. Can. Pac. Ry., Ltd., 357 F.3d 1319 (Fed. Cir. 2004) ..........16
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`Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., IPR2013-00132, Paper 9
`(P.T.A.B. Jul. 25, 2013) .......................................................................................20
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`Travelers Indemnity Co. v. Integrated Claims Sys., LLC., IPR2016-00660, Paper
`21 (P.T.A.B. Aug. 29, 2017) ................................................................................10
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`Veeam Software Corp. v. Veritas Techs. LLC, IPR2014-00090, Paper 48 (P.T.A.B
`Jul. 17, 2017) ........................................................................................................10
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`Statutes
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`37 C.F.R. § 42.63(a) ................................................................................................... 9
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`37 C.F.R. § 42.65(a) .................................................................................................10
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`I.
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`INTRODUCTION
`Patent Owner’s Response demonstrates that there are only two issues in
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`dispute: (i) whether the Leichiner 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 Leichiner 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, Leichiner explicitly teaches that its remote controller sends
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`a singular polling message to multiple devices at the same time. See APPL-1027,
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`¶¶ [0022], [0012] (explaining that a “polling message” is utilized to “conduct
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`polling to a number of the controlled devices at the same time.”). Leichiner further
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`teaches that the purpose of the polling is to detect the presence of new devices
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`when entering a room—precisely the same purpose as the claimed broadcast
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`message. Patent Owner attempts to avoid this explicit disclosure by relying on an
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`out-of-context definition of “polling” that requires sequential “round robin”
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`interrogation. This definition, however, contradicts Leichiner’s explicit statement
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`that its devices are polled “at the same time,” and ignores evidence that a “polling
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`message” could, in fact, be broadcast.
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`With respect to the combination of Leichiner 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. LEICHINER 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 2) 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 26. 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-1030, p. 51. Patent Owner, also citing to the Microsoft Computer
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`Dictionary, sets forth a similar understanding in its Response (Paper 10). Response
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`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). Patent Owner also states that a “‘broadcast
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`message’ as required by the claims is a singular message sent to every device at
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`once.” Response at 9. Additionally, Patent Owner’s expert, Mr. Easttom, states in
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`his declaration that: “For the purposes of this proceeding I will utilize the
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`petitioners [sic] definitions and use plain and ordinary meaning.” Ex. 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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`Leichiner teaches transmitting a polling message to multiple
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`devices at the same time
`As explained in the Petition and Dr. Houh’s supporting declaration (APPL-
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`1030), Leichiner teaches “broadcasting a message” under the plain and ordinary
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`meaning. Petition at 25-26 (citing APPL-1003, pp. 49-52). Specifically, Leichiner
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`describes an adaptive remote controller that utilizes a polling function to “detect[]
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`the presence” of “devices located in the immediate vicinity.” APPL-1027, ¶¶
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`[0010], [0065]. The remote controller includes a “POLL button 16, which serves
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`to turn on the control unit to initiate the polling function. The polling function is
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`generated when a variety of the controlled devices in the control unit area are
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`queried by the control unit….” Id. ¶ [0017]. Through this POLL button, a “polling
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`message [singular] is generated periodically upon request of the user.” Id. ¶ [0022].
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`After the polling message is generated, a “controlled device available in the
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`vicinity of the controller is capable of recognizing the polling message, and is
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`capable of responding with the information regarding the identification thereof.”
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`Id. Leichiner explains that “[b]y utilizing the remote control unit, it becomes
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`possible to conduct polling to a number of the controlled devices at the same time
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`for the management thereof.” Id. ¶ [0012] (emphasis added).
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`Leichiner’s description of the polling message being sent to a number of
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`devices at the same time in consistent with Patent Owner’s understanding of the
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`claimed broadcasting. See Response at 9 (“A ‘broadcast message’ as required by
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`the claims is a singular message sent to every device at once.”). That Leichiner
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`describes broadcasting its polling message is not surprising, as its purpose is the
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`same as the claimed broadcast message—discovering the presence of devices in a
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`room. Specifically, the ’018 Patent recites that its broadcast message is “for
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`locating remote devices within range,” and the specification describes “a user with
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`portable computer system 100 enter[ing] a room containing remote devices” and
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`“transmit[ing] broadcast message 640 for the purpose of discovering compliant
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`devices in the room.” APPL-1001, 8:33-54, claims 1, 11, and 21. Leichiner
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`similarly describes a user with the remote controller entering a room and detecting
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`the “presence of a new device” with the polling signal:
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`For example, when the user has carried adaptive remote
`controller 282 from one room to another, the controller detects
`the presence of a new device, such as lamp 252 which is located
`in another room stated above. The reason for the above is that the
`controller which is programmed for the lamp responds to the
`polling signal of the adaptive remote controller.
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`APPL-1027, ¶ [0065] (emphasis added). Accordingly, Leichiner’s description of
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`detecting new devices by transmitting a polling message to multiple devices at the
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`same time teaches the claimed “broadcasting a message” under the plain and
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`ordinary meaning.
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`In its Response, Patent Owner alleges that Leichiner fails to teach the plain
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`and ordinary meaning of “broadcasting” because “Leichiner only discloses that it
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`‘generates polling messages [in the plural] to all of the controlled devices in the
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`immediate vicinity.’” Response at 8 (brackets in original). Patent Owner similarly
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`argues that “Leichiner further confirms the distinction by disclosing that ‘[w]hat is
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`provided is an adaptive standalone remote control system which conducts polling
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`to each of the controlled devices located in the immediate vicinity.’” Id. at 9
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`(emphasis in original). This alleged distinction is a distinction in form only, and, if
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`adopted, would exclude the understanding of broadcasting set forth in the ’018
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`Patent.
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`For example, a person of ordinary skill in the art would understand that
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`Leichiner’s description transmitting multiple “polling messages” is consistent with
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`(and confirms) its teaching of polling multiple devices at the same time. Houh
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`Supp. Dec. (APPL-1042) ¶ 5. For example, Dr. Houh explains in his declaration
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`that when a singular message is broadcast, each receiving device gets a copy—i.e.,
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`multiple messages are received as a result of the broadcast. Id. This concept is
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`illustrated in Fig. 6 of the ’018 Patent itself:
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`APPL-1001, Fig. 6 (highlighting added). Although a single “broadcast message
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`640” is transmitted by the system 100, each remote device 630 receives a copy of
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`the message. Houh Supp. Dec. ¶ 5. In other words, the system 100 generates
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`broadcasting messages 640 to all three of the devices 630. Id. Leichiner describes
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`its polling function in the same way:
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`In operation, controller 10 generates polling messages to all of
`the controlled devices in the immediate vicinity thereof. The
`polling message is generated periodically upon request of the
`user, or in response to an external signal received from the
`controller environment. The controlled device available in the
`vicinity of the controller is capable of recognizing the polling
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`message, and is capable of responding with the information
`regarding the identification thereof.
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`APPL-1027, ¶ [0022] (emphasis added). A person of ordinary skill in the art
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`would understand that Leichiner is describing broadcasting in the same way as the
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`’018 Patent: by transmitting a single message that is received by multiple devices.
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`Id.; Houh Supp. Dec. ¶ 5.
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`Further, even if Leichiner’s reference to “polling messages” is read to teach
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`multiple separate transmissions, as Patent Owner urges, Patent Owner draws the
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`wrong conclusion from this teaching. Leichiner teaches providing “polling
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`messages to all of the controlled devices” using a singular “polling message [that]
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`is generated periodically upon request of the user.” APPL-1027, ¶ [0022]
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`(emphasis added). This teaching, in conjunction with Leichiner’s disclosure that
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`multiple devices may be polled “at the same time,” confirms that Leichiner’s
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`“messages” refer to the same broadcast message being “generated periodically” at
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`different times, rather than the one-at-a-time messaging scheme that Patent Owner
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`advocates.
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`Accordingly, Patent Owner’s reliance on semantics to differentiate
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`Leichiner’s polling function from the claimed broadcasting fails in view of the
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`actual teachings of Leichiner that describe generating a polling message to multiple
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`devices at the same time.
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`Patent Owner narrowly focuses on the word “polling” while
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`ignoring the actual teachings of Leichiner that describe broadcasting
`In its Response, Patent Owner attempts to avoid the teachings of Leichiner
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`by focusing on the word “polling” and alleging that a POSITA would understand it
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`only to mean “interrogat[ing] its connected terminals in a round robin sequence.”
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`Response at 7. Patent Owner’s strategy fails because (i) the Response credits
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`testimony based on unfiled evidence over the actual words of Leichiner, and (ii) a
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`POSITA would not understand “polling” to be limited to sequential
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`communication.
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`In more detail, Patent Owner’s Response alleges there is a “real and
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`meaningful distinction between the technical terms ‘broadcasting’ and ‘polling,’”
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`because “‘polling’ was a term of art generally understood as ‘interrogat[ing] its
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`connected terminals in a round robin sequence.’” Response at 7-8 (citing EX2001 ¶
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`48). To support its position, Patent Owner relies on the same expert declaration
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`filed with its Preliminary Response (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 “polling,” but none of them have been filed
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`as exhibits in this proceeding. See Ex. 2001, ¶¶ 45-52. This unfiled evidence is not
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`part of the record and cannot be considered by the Board. See 37 C.F.R. § 42.63(a)
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`(“All evidence must be filed in the form of an exhibit.”); see also, e.g., Veeam
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`Software Corp. v. Veritas Techs. LLC, IPR2014-00090, Paper 48 at 24, fn. 8
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`(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 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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`a POSITA reading Leichiner would necessarily understand “polling” to mean
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`“interrogat[ing] its connected terminals in a round robin sequence” is not credible
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`for three reasons. First, such a definition contradicts the explicit teaching in
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`Leichiner of polling multiple devices “at the same time” instead of sequentially.
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`APPL-1027, ¶ [0012] (teaching that “[b]y utilizing the remote control unit, it
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`becomes possible to conduct polling to a number of the controlled devices at the
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`same time for the management thereof”).
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`Second, a person of ordinary skill in the art would understand that Patent
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`Owner’s unfiled (and undated) dictionary definition requiring sequential
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`interrogation of “connected” devices is not applicable in light of Leichiner’s
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`description of detecting new devices. For example, Leichiner describes a user with
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`a remote controller entering a room and detecting the “presence of a new device”
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`with the polling signal. APPL-1027, ¶ [0065]. As explained by Dr. Houh, when
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`the remote controller enters a room, it is not yet “connected” to any device. Houh
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`Supp. Dec. ¶¶ 6-7. Any connection between the remote controller and the devices
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`in the room occurs after the devices are discovered with the polling function. Id.
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`Accordingly, a POSITA would find Patent Owner’s definition of the term
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`“polling” that requires already-connected devices inapplicable in the context of
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`Leichiner. Id.
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`Third, a skilled artisan in computer science at the time of the ’018 Patent
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`generally understood that a “polling” message could be broadcast. Houh Supp.
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`Dec., ¶¶ 6-12. Dr. Houh points to several such examples in his declaration,
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`including:
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` Polling in a communication network: “Polling is the process in which an
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`issuing node of a communication network (polling station) broadcasts a
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`query to every other node in the network and waits to receive a unique
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`response from each of them.” APPL-1037, p. 1 (emphasis added).
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` Polling networked exercise bikes: “The polling cycle of FIG. 18 starts with
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`the broadcast poll 92 which is received by all of the bikes 31-35 that have
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`been activated with the login sequence (using the start and asterisk keys). …
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`The broadcast poll 92 signals the bikes 31-35 to lock down their data for
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`the subsequent poll of the data.” APPL-1039, 6:26-38 (emphasis added).
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`See Houh Supp. Dec., ¶¶ 9-12 (also citing APPL-1040, p. 5 (“Because a poll
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`broadcast to all the neighbors of a node can cause multiple nodes to attempt
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`sending data to the polling node…”); APPL-1041, 1:6-17 (“a central controller can
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`simultaneously poll a plurality of remote stations…”)).
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`Accordingly, a person of ordinary skill in the art reading the phrase “polling
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`message” in the context of Leichiner would not apply Patent Owner’s inapplicable
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`definition, but would instead understand that such a message could be—and in fact
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`is—broadcast. Leichiner makes clear that its remote controller transmits a “polling
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`message” to “conduct polling to a number of the controlled devices at the same
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`time”—thereby disclosing “broadcasting a message” under the plain and ordinary
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`meaning. See APPL-1027, ¶¶ [0022], [0012].
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`III. THE UNCHANGED EVIDENTIARY RECORD SUPPORTS THE
`COMBINATION OF LEICHINER 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 the Leichiner and Idiot’s
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`Guide references as proposed.” Response at 11-21. Notably, in its eleven pages of
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`argument, all but three paragraphs are verbatim from Patent Owner’s Preliminary
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`Response (Paper 6). Compare Response at 11-21 with Preliminary Response at 7-
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`16. Moreover, Patent Owner has filed no additional evidence since its Preliminary
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`Response, and the three new paragraphs are purely attorney argument—they do not
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`cite to any evidence, old or new1. Patent Owner merely disagrees with the Board’s
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`findings but does so without evidence or even citations to legal precedent. Even
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`ignoring this evidentiary shortcoming, the law of obviousness does not support
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`Patent Owner’s positions. Accordingly, the Board should confirm its finding in the
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`1 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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`Institution Decision that the Petition and unchanged evidentiary record support a
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`legal conclusion of obviousness based on the combination of Leichiner and the
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`Idiot’s Guide.
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`PalmRemote illustrates the knowledge a POSITA would bring to
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`bear in reading Leichiner 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 Leichiner’s adaptive remote controller to include the
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`PalmPilot’s Graffiti writing area described in the Idiot’s Guide. Petition at 20-23.
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`Such a combination would have advantageously allowed a user to remotely control
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`appliances through “Graffiti commands.” Petition at 20-23 (citing APPL-1030, ¶¶
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`71-76). As described by Dr. Houh, one of the reasons a skilled artisan in the
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`relevant field would have been motivated to try such a combination was the
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`existence of the PalmPilot software called “PalmRemote”—as illustrated by the
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`archived PalmRemote webpage (exhibit APPL-10202). APPL-1030, ¶¶ 72-73
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`2 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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`14
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`Petitioner’s Reply
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`(citing APPL-1020). Dr. Houh’s uncontested testimony establishes that the
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`proposed combination “would have been predictable to a person of ordinary skill
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`in the art” because the PalmRemote illustrated that those in the field were already
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`performing such a combination.3 Id. ¶ 73. 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 Leichiner and the Idiot’s Guide. See Ariosa
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`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).
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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 Leichiner’s adaptive remote
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`controller to include the graffiti writing area. Response at 13-16. 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 13-14. 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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`3 Patent Owner’s expert is silent about PalmRemote. See Ex. 2001.
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`15
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`Petitioner’s Reply
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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 instead establishes that
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`artisans in the field had already contemplated (and most likely implemented) the
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`very combination proposed in the Petition. See Nat'l Steel Car, Ltd. v. Can. Pac.
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`Ry., Ltd., 357 F.3d 1319, 1338-39 (Fed. Cir. 2004) (holding that an engineer’s
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`drawing of a rail car, even if it was never built, can “be used to demonstrate a
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`motivation to combine implicit in the knowledge of one of skill in 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 22-23 (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 Leichiner’s adaptive
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`16
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`Petitioner’s Reply
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`remote controller because such a combination would be advantageous. APPL-
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`1030, ¶¶ 74, 76.
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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 15-16 (“…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 Leichner 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 Leichiner’s
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`adaptive remote controller to include the PalmPilot’s Graffiti writing area, through
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`17
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`Petitioner’s Reply
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`which a user could remotely control appliances. Petition at 23 (citing APPL-1030,
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`¶¶ 75-76). The Idiot’s Guide and PalmPilot for Dummies (APPL-1009) provide
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`ample evidence that POSITAs (and even those with lower skill levels, i.e., “idiots”
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`and “dummies”) could “customize the PalmPilot in about a zillion different ways,”
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`for example, to “add features or to make your PalmPilot behave differently than a
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`normal PalmPilot.” APPL-1008, pp. 89, 96; APPL-1009, pp. 19-20. In particular,
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`the Idiot’s Guide teaches that one element a user can customize is “how you use
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`Graffiti.” APPL-1008, p. 96. Customizing the use of Graffiti is the specific
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`modification contemplated by the proposed combination. See Petition at 21 (“a
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`POSITA would have found it predictable and advantageous to utilize the
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`PalmPilot’s Graffiti writing area to control the devices as described in Leichiner”).
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`Moreover, in the same section describing the customization of “how you use
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`Graffiti,” the Idiot’s Guide teaches exactly how such a customization is
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`performed—by installing third-party software with “HackMaster”:
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`18
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`Petitioner’s Reply
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`APPL-1008, p. 96 (highlighting added). The third-party PalmRemote software
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`discussed by Dr. Houh is one example of the software contemplated by this
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`section—it allows a user to customize “how you use Graffiti.” See APPL-1030, pp.
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`39-40 (citing APPL-1020, p. 1 (illustrating “PalmPilot software” that allowed users
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`to use “Graffiti commands” to control consumer electronic devices)).
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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 17. 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 Mout
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