`
`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. Statutory Grounds for Challenges .......................................................... 12
`
`B. The Challenges Presented in This Petition are Neither Cumulative
`Nor Redundant ........................................................................................ 14
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ......15
`
`A. Challenge #1: Claims 1-7 and 9 are obvious under 35 U.S.C § 103
`over Leichiner in view of the Idiot’s Guide ........................................... 15
`
`1.
`
`2.
`
`Summary of Leichiner .................................................................... 15
`
`Summary of the Idiot’s Guide ........................................................ 17
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`3. Reasons to Combine Leichiner and the Idiot’s Guide ................... 20
`
`4. Detailed Analysis ........................................................................... 24
`
`B. Challenge #2: Claim 8 is obvious under 35 U.S.C § 103 over
`Leichiner in view of the Idiot’s Guide and Dara-Abrams ...................... 53
`
`1.
`
`Summary of Dara-Abrams ............................................................. 53
`
`2. Reasons to Combine Leichiner, the Idiot’s Guide, and Dara-
`Abrams ........................................................................................... 54
`
`a. Reasons for utilizing Dara-Abrams’ animated control
`elements in conjunction with Leichiner’s adaptive remote
`controller ................................................................................. 54
`
`b. Reasons for utilizing the PalmPilot’s Graffiti Writing Area in
`conjunction with Dara-Abram’s animated control elements . 57
`
`3. Detailed Analysis ........................................................................... 59
`
`C. Challenge #3: Claim 10 is obvious under 35 U.S.C § 103 over
`Leichiner in view of the Idiot’s Guide and Bell ..................................... 61
`
`1.
`
`Summary of Bell ............................................................................ 61
`
`2. Reasons to Combine Leichiner and Bell ........................................ 62
`
`3. Detailed Analysis ........................................................................... 64
`
`D. Challenge #4: Claims 11-17, 19, 21-22, 24-25, and 27 are obvious
`under 35 U.S.C § 103 over Leichiner in view of the Idiot’s Guide
`and Osterhout .......................................................................................... 66
`
`1.
`
`Summary of Osterhout ................................................................... 66
`
`
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`2. Reasons to Combine Leichiner, Idiot’s Guide, and
`Osterhout ........................................................................................ 67
`
`3. Detailed Analysis ........................................................................... 69
`
`E. Challenge #5: Claims 18 and 26 are obvious under 35 U.S.C § 103
`over Leichiner in view of the Idiot’s Guide, Osterhout, and Dara-
`Abrams .................................................................................................... 88
`
`1. Detailed Analysis ........................................................................... 88
`
`F. Challenge #6: Claims 20 and 23 are obvious under 35 U.S.C § 103
`under Leichiner in view of the Idiot’s Guide, Osterhout, and Bell ........ 89
`
`1. Detailed Analysis ........................................................................... 89
`
`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
`
`(“POSITA”) before the earliest alleged priority date of the ’018 Patent.
`
`For example, Japanese Pub. No. JPH06319177 to Leichiner achieves the
`
`same goal as the ’018 Patent—wirelessly controlling a variety of different
`
`consumer devices—in the same way—with a palmtop computer-based remote
`
`controller that broadcasts polling 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 Leichiner,
`
`“The Complete Idiot’s Guide to PalmPilot and Palm III” 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
`
`
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`controlling consumer devices, as illustrated by Leichiner, Idiot’s Guide, and other
`
`references.
`
`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;
`2
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
` Uniloc USA, et al. v. HTC America, Inc., 2:17-cv-01558-JLR (W.D. Wash.
`
`2017), ongoing;
`
` 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 75082
`
`
`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
`
`
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`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
`
`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
`
`4
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`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-1030, ¶41.
`
`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
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Icons
`Representing
`Remote
`Devices
`
`APPL-1001, Fig. 7 (annotated); APPL-1030, ¶43
`
`
`
`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
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Rendering on
`the display
`device
`
`APPL-1001, Fig. 8 (annotated); APPL-1030, ¶44
`
`
`
`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
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Display Device
`
`Input Device
`
`APPL-1001, Fig. 3 (annotated); APPL-1030, ¶45
`
`
`
`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
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`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-1027; 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.
`
`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
`
`
`
`9
`
`

`

`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 to locate and receive responses to locate new devices. See, e.g., APPL-
`
`1027, 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; see also APPL-1030, ¶51 (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
`
`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
`
`
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`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-1030, ¶32 (noting the level of ordinary
`
`skill in the art).
`
`
`
`
`[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.
`
`
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`VI.
`
`IDENTIFICATION OF CHALLENGES
`A.
`This Petition challenges the validity of claims 1-27 of the ’018 Patent on six
`
`Statutory Grounds for Challenges
`
`grounds:
`
`Claims
`Challenge
`Challenge #1 1-7 and 9
`
`Challenge #2 8
`
`Challenge #3 10
`
`Challenge #4 11-17, 19,
`21-22,
`24-25, and
`27
`Challenge #5 18 and 26
`
`Challenge #6 20 and 23
`
`Ground
`35 U.S.C. § 103 over Leichiner in view of “The
`Complete Idiot’s Guide to PalmPilot and Palm III”
`(the “Idiot’s Guide”)
`35 U.S.C. § 103 over Leichiner in view of the
`Idiot’s Guide and Dara-Abrams
`35 U.S.C. § 103 over Leichiner in view of the
`Idiot’s Guide and Bell
`35 U.S.C. § 103 over Leichiner in view of the
`Idiot’s Guide and Osterhout
`
`35 U.S.C. § 103 over Leichiner in view of the
`Idiot’s Guide, Osterhout, and Dara-Abrams
`35 U.S.C. § 103 over Leichiner in view of the
`Idiot’s Guide, Osterhout, and Bell
`
`
`Leichiner (APPL-1027)
`
`Japanese Pub. No. JPH06319177 to Leichiner was filed February 24, 1994
`
`and published November 15, 1994, and is thus prior art at least under 35 U.S.C. §
`
`102(b). APPL-1027 contains a certified English translation of Leichiner, and
`
`APPL-1028 contains the original Japanese publication. The citations to Leichiner
`
`in this Petition refer to the English translation in APPL-1027.
`
`The Idiot’s Guide (APPL-1008)
`
`12
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`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.
`
`Bell (APPL-1029)
`
`U.S. Patent No. 7,894,474 to Bell was filed September 10, 1999 and
`
`published February 22, 2011, and is thus prior art at least under 35 U.S.C. § 102(e).
`
`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
`
`
`
`13
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Petition and (ii) the issued claims of the Osterhout patent each find written
`
`description support in the ’175 application. Osterhout is therefore prior art at least
`
`under 35 U.S.C. § 102(e).
`
`The Challenges Presented in This Petition are Neither Cumulative
`B.
`Nor Redundant
`
`This petition is being filed contemporaneously with another petition that also
`
`challenges claims 1-27 of the ’018 Patent. If not for the word count limit, all
`
`challenges in these two petitions would have been filed within the same petition.
`
`The challenges raised in this petition (based on the Leichiner reference) are
`
`not redundant to the challenges raised in the first petition (based on the Ben-Ze’ev
`
`reference). Although the Ben-Ze’ev reference arguably includes better disclosure
`
`of several claim elements (for example, with respect to Bluetooth), Ben-Ze’ev was
`
`filed only a month before the priority date of ’018 Patent. Leichiner, on the other
`
`hand, was published more than five years before the priority date of ’018 Patent.
`
`The Board has previously found a second challenge non-redundant when a first
`
`challenge may be potentially sworn behind. See Sure-Fire Elec. Corp. v. Yongjiang
`
`Yin, et. al. IPR2014-01448, Paper 25 at 4-6 (P.T.A.B. June 1, 2015) (granting
`
`rehearing as to a second challenge due to Patent Owner’s potential swear-behind
`
`defense as to the first challenge). Further, like the challenges in Sure-Fire, the
`
`challenges in the present petitions rely on the same secondary references (the
`
`
`
`14
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Idiot’s Guide and Osterhout), and thus “any additional burden on Patent Owner in
`
`responding further to [the second challenge] is outweighed by the goal of
`
`providing an efficient and cost-effective resolution.” Id. at 5.
`
`Accordingly, Petitioner respectfully requests that the Board institute on all
`
`challenges in this petition and the contemporaneously-filed petition.
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenge #1: Claims 1-7 and 9 are obvious under 35 U.S.C § 103 over
`Leichiner in view of the Idiot’s Guide
`
`1.
`
`Summary of Leichiner
`
`Just like the ’018 Patent, Leichiner is directed to an “adaptive intelligent
`
`remote controller” that “adapts in real time relative to a set of the controlled
`
`devices.” APPL-1027, [0001], [0009], [0065]. And, also like the ’018 Patent,
`
`Leichiner explains that the adaptive remote control can be implemented with an
`
`“existing computer device [], such as a palmtop computer.” APPL-1027, [0061],
`
`[0038], [0041]. Fig. 2 illustrates one embodiment of Leichiner’s adaptive remote
`
`controller:
`
`
`
`15
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`APPL-1027, Fig. 2
`
`
`
`Leichiner teaches that its adaptive remote controller includes a transceiver
`
`comprising a “receiver” and a “transmitter,” illustrated in Fig. 10 below. APPL-
`
`1027, [0061]-[0062].
`
`Transceiver
`
`
`
`APPL-1027, Fig. 10 (annotated); APPL-1030, ¶58
`
`
`
`Leichiner also teaches that its adaptive remote controller controls devices
`
`over a wireless link, such as a “two-way infrared-ray link” or via “radio
`
`transmission.” APPL-1027, [0010], [0018]-[0019].
`
`
`
`16
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Like the ’018 Patent, Leichiner’s adaptive remote controller “detects the
`
`presence” of “devices located in the immediate vicinity” by using a broadcast
`
`message. APPL-1027, [0065], [0010]. Specifically, the “controller 10 generates
`
`polling messages to all of the controlled devices in the immediate vicinity,” where
`
`the controller conducts the polling “at the same time.” APPL-1027, [0022], [0012].
`
`“If the controlled device is available, the controlled device responds to polling,”
`
`and is represented on the display screen of the adaptive remote controller, for
`
`example, by an icon, as illustrated in Fig. 2 (APPL-1027, [0011], [0033]):
`
`Display Screen
`
`Icons Representing
`Devices Responding to
`Polling
`
`APPL-1027, Fig. 2 (annotated); APPL-1030, ¶61
`
`
`
`The “user can control the available controlled devices in the immediate vicinity,
`
`according to some sort of command or setting inputted by the user by utilizing the
`
`user interface.” APPL-1027, [0010].
`
`2.
`
`Summary of the Idiot’s Guide
`
`The Idiot’s Guide describes the features and functionality of a personal
`
`
`
`17
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`digital assistant, called the PalmPilot, that was popular at the time of filing the ’018
`
`Patent. APPL-1008, p. 25; APPL-1030, ¶63. Based upon a comparison of the ’018
`
`Patent figures and the illustrations of the PalmPilot in the Idiot’s Guide, it appears
`
`that the PalmPilot is an example of the “palmtop computer system” upon which the
`
`’018 Patent contemplates implementing the alleged invention (APPL-1001, 5:38-
`
`41):
`
`APPL-1001, Fig. 3
`
`APPL-1008, p. 26
`
`
`
`The Idiot’s Guide specifically teaches that the PalmPilot can be used as a
`
`“universal remote-control device” with which “you can control your TV, your CD
`
`player, and other items in your home….” APPL-1008, p. 81.
`
`The Idiot’s Guide also teaches that its PalmPilot includes components such
`
`as a touch screen, a “microprocessor, and an input device called the “Graffiti
`
`
`
`18
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Writing Area” (shown below). APPL-1008, pp. 25, 27, 32.
`
`Graffiti Writing Area
`
`APPL-1008, p. 26 (annotated); APPL-1030, ¶65
`
`
`
` A stylus is used in conjunction with the Graffiti writing area, where the
`
`PalmPilot registers and translates the “starting point” and movement of the stylus
`
`into particular commands. APPL-1008, pp. 64, 68. For example, the PalmPilot can
`
`translate a “Command stroke” (shown below) and a subsequent command letter
`
`into a particular command, as shown below. APPL-1008, p. 68.
`
`APPL-1008, p. 68
`
`
`
`
`
`19
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`3.
`
`Reasons to Combine Leichiner and the Idiot’s Guide
`
`For the reasons set forth below, a POSITA would have been motivated to
`
`combine the teachings of Leichiner and the Idiot’s Guide in order to produce the
`
`obvious, beneficial, and predictable result of Leichiner’s adaptive remote controller
`
`having an input device, such as the PalmPilot’s Graffiti writing area, through
`
`which a user could remotely control appliances with stylus command strokes.
`
`APPL-1030, ¶¶67-76.
`
`First, a POSITA when considering the teachings of Leichiner is expressly
`
`instructed to consider “existing computer device[s]” such as a “palmtop computer”
`
`with an “accessory slot.” APPL-1027, [0061], [0038], [0041]. Leichiner explains
`
`that the existing palmtop computer with a “plug-in card” can be “programmed so
`
`as to operate as an intelligent adaptive remote control unit” (APPL-1027, [0061]),
`
`as illustrated in Fig. 10:
`
`
`
`20
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Existing Palmtop
`Computer
`
`Plug-In Card
`
`APPL-1008, Fig. 10 (annotated); APPL-1030, ¶68
`
`
`
`The Idiot’s Guide describes the features and functionality of a well-known palmtop
`
`computer, the PalmPilot, that includes a serial port accessory slot. APPL-1008, pp.
`
`25, 38.
`
`Second, 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. APPL-1030, ¶70. Not only were PalmPilots already being utilized as
`
`universal remote controllers before the filing of the ’018 Patent (see APPL-1008,
`
`p. 81; APPL-1022, p. 1), but the Graffiti writing area specifically was being used
`
`to issue control commands. APPL-1030, ¶¶71-72. As evidence of this specific pre-
`
`dating combination, software called “PalmRemote” provided PalmPilot users with
`
`the option of utilizing “Graffiti commands” to control various functions of a
`
`consumer electronic device. APPL-1030, ¶72 (citing APPL-1020, p. 1). As Dr.
`
`
`
`21
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`Houh explains, a user could enter Graffiti commands, for example, to turn the
`
`volume up and down on a Sony TV:
`
`APPL-1020, p. 1; APPL-1030, ¶73
`
`
`
`Accordingly, using the PalmPilot’s Graffiti writing area to control devices would
`
`have been predictable to a POSITA because that specific combination was already
`
`being performed before the filing of the ’018 Patent. APPL-1030, ¶73.
`
`Third, POSITAs would have also found it beneficial to use the PalmPilot’s
`
`Graffiti writing area in conjunction the touchscreen already contemplated as part of
`
`Leichiner’s adaptive remote controller. APPL-1030, ¶74. Specifically, 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
`
`
`
`22
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`efficient option in order to “save time.” APPL-1008, p. 78 (“If you want to save
`
`time, use the Graffiti Command stroke instead of menus.”). For example, executing
`
`a command with the Command stroke in the Graffiti writing area can be “much
`
`faster” than tapping on the touch screen in some instances. APPL-1008, pp. 68, 78
`
`(“The Command stroke lets you perform menu commands without having to tap,
`
`tap, tap.”); see also APPL-1030, ¶74 (citing APPL-1019, p. 14).
`
`To the extent any modifications would have been needed to the teachings of
`
`Leichiner to accommodate the teachings of the Idiot’s Guide regarding the
`
`PalmPilot’s Graffiti writing area, such modifications would have been within the
`
`level of a POSITA in 2000. APPL-1030, ¶75. For example, the Idiot’s Guide
`
`teaches “that customizing your PalmPilot . . . is easy” and that a user can
`
`“customize the PalmPilot in about a zillion different ways” including “how you use
`
`Graffiti.” APPL-1008, pp. 89, 96; see also APPL-1030, ¶75 (citing APPL-1009,
`
`pp. 19-20).
`
`Accordingly, a POSITA would have found it obvious to apply the
`
`PalmPilot’s Graffiti writing area to Leichiner’s adaptive remote controller because
`
`the 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. APPL-1030, ¶76.
`
`
`
`23
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,622,018
`
`4.
`
`Detailed Analysis
`
`The following analysis describes how Leichiner in view of the Idiot’s Guide
`
`renders obvious each and every element of at least claims 1-7 and 9 of the ’018
`
`Patent. A corresponding claim chart is contained in Dr. Houh’s declaration. APPL-
`
`1030, pp. 42-102.
`
`Claim 1
`[1.0] “A method for controlling a remote devices over a wireless connection, said
`method comprising:”
`Leichiner discloses this limitation because it teaches a method in which an
`
`“adaptive universal remote controller” “control[s] a number of devices located in
`
`the vicinity” over a “two-way infrared-ray link” or via “radio transmission.”
`
`APPL-1027, [0009], [0017]- [0019], [0010], [0061]. Leichiner further explains that
`
`the adaptive remote controller can be implemented with an “existing computer
`
`device [], such as a palmtop computer” that has been “appropriately programmed.”
`
`APPL-1027, [0061], [0038], [0041], [0012], Fig. 10; see APPL-1030, pp. 42-46.
`
`[1.1] “a) establishing said wireless connection between a transceiver and said
`remote device by:”
`First, Leichiner teaches that its adaptive remote controller includes a
`
`transceiver com