Paper No. __
`Filed: May 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`KEYNETIK, INC.
`Patent Owner
`
`_________________
`
`Case IPR2018-00985
`Patent No. 7,966,146
`_________________
`
`PETITIONER’S REPLY BRIEF
`
`
`Filed: May 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`KEYNETIK, INC.
`Patent Owner
`
`_________________
`
`Case IPR2018-00985
`Patent No. 7,966,146
`_________________
`
`PETITIONER’S REPLY BRIEF
`
`
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`Case IPR2018-00985
`U.S. Patent No. 7,966,146
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`B.
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`C.
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`B.
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`I.
`II.
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`TABLE OF CONTENTS
`Introduction ..................................................................................................... 1
`Claim Construction ......................................................................................... 1
`A.
`Claim 22 Does Not Define “Sleep Command” or Preclude
`Additional Instructions to “Re-Activate” the Motion Sensing
`Algorithm ............................................................................................. 2
`The Sleep Command Limitation (Claim 22) Does Not Preclude
`Translating Motion Data Collected During a Sleep State Into a
`Command at a Later Time .................................................................... 6
`The “Sleep Command” Need Only Be Sent “After the
`Command is Executed” ........................................................................ 8
`III. Claims 22 and 23 Are Anticipated by Liberty (ground 1) ............................ 10
`A.
`Liberty Discloses the “Sleep” and “Re-Activate” Limitations .......... 10
`1.
`Liberty Discloses these Limitations Under Their Proper
`Interpretations .......................................................................... 10
`Liberty Discloses these Limitations Under PO’s
`Interpretation ............................................................................ 12
`Liberty Discloses a “Sleep Command” Sent “After the
`Command Is Executed” ...................................................................... 12
`1.
`Liberty Discloses these Limitations Under Their Proper
`Interpretations .......................................................................... 13
`Liberty Discloses these Limitations Under PO’s
`Interpretation ............................................................................ 13
`IV. Claims 22 and 23 Are Obvious Based on Noguera and Liberty
`(Ground 2) .................................................................................................... 15
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`2.
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`2.
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`i
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`Case IPR2018-00985
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`A.
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`B.
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`C.
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`In the Combined Noguera-Liberty System, the Sleep Command
`is Sent “After the Command is Executed” ......................................... 15
`Patent Owner’s Argument Regarding a “Sleep” Period
`Premised on its Flawed Claim Construction Should Be Rejected ..... 18
`The Combined Noguera-Liberty system Discloses Two Types
`of Periods: A Sleep Period and a Non-Sleep Period .......................... 19
`Petitioner Has Provided Sufficient Obviousness Rationale
`Regarding the Combined Noguera-Liberty System ........................... 20
`Conclusion .................................................................................................... 25
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`D.
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`V.
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`-ii-
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Aria Diagnostics, Inc. v. Sequenom, Inc.,
`726 F.3d 1296 (Fed. Cir. 2013) ............................................................................ 6
`Boesen v. Garmin Int’l, Inc.,
`455 F. App’x 974 (Fed. Cir. 2011) ..................................................................... 12
`Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc.,
`246 F.3d 1336 (Fed. Cir. 2001) ............................................................................ 4
`E-Pass Techs., Inc. v. 3COM Corp.,
`343 F.3d 1364 (Fed. Cir. 2003) ............................................................................ 9
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009) .......................................................................... 11
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 20, 21
`McCarty v. Lehigh Valley R.R. Co.,
`160 U.S. 110 (1895) .............................................................................................. 4
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 23
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 4
`Raytheon Co. v. Sony Corp.,
`727 Fed. Appx. 662 (Fed. Cir. 2018) ............................................................ 12, 17
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ...................................................................... 4, 10
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 21
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`iii
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`U.S. Patent No. 8,370,146
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`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................. 23
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`iv
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`LIST OF EXHIBITS
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`Description
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`Exhibit
`No.
`1001 U.S. Patent No. 7,966,146
`1002 Declaration of Dr. Gregory D. Abowd
`1003
`Curriculum Vitae of Dr. Gregory D. Abowd
`1004
`Prosecution History of U.S. Patent No. 7,966,146
`1005 U.S. Patent No. 7,535,456 (“Liberty”)
`1006 U.S. Patent No. 6,847,351 (“Noguera”)
`1007 Deposition Transcript of Dr. Prasant Mohapatra
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`Previously
`Submitted
`X
`X
`X
`X
`X
`X
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`I.
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`Introduction
`Samsung Electronics Co., Ltd. (“Petitioner”) replies to Patent Owner’s (PO)
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`Response (Paper No. 13, “Response”) and the Board’s decision to institute IPR
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`(Paper No. 7, “Institution Decision” or “Decision”) of U.S. Patent No. 7,966,146
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`(“the ’146 patent”). PO’s arguments should be rejected and claims 22 and 23 of the
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`’146 patent should be found unpatentable for at least the reasons set forth in the
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`Petition (Paper No. 1) and accompanying exhibits, the Institution Decision, and the
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`additional reasons presented below.
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`II. Claim Construction
`PO explicitly identifies two claim construction disputes relating to the phrase
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`“instructions to send a sleep command to the motion input algorithm after the
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`command is executed,” as recited in claim 22, which PO refers to as “the Sleep
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`Command Limitation.”1 (Response at 16-19; see also id. at 19-38.) Petitioner
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`addresses these two claim construction disputes in Sections II.B and II.C below.
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`Additionally, Petitioner addresses in Section II.A another claim construction dispute
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`relating to the Sleep Command Limitation that PO raises in its discussion of Ground
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`1 For simplicity only, Petitioner will also refer to this limitation as “the Sleep
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`Command Limitation.” (Response at 16.)
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`1
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`1. As explained below, for all three disputes, PO improperly attempts to limit the
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`claim language beyond its plain and ordinary meaning.
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`A. Claim 22 Does Not Define “Sleep Command” or Preclude
`Additional Instructions to “Re-Activate” the Motion Sensing
`Algorithm
`In PO’s claim construction section addressing the Sleep Command
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`Limitation, PO argues that the “sleep command” “initiates a temporary sleep period
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`during which any sensed movement will not result in an executed command.”
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`(Response at 29 (emphasis added).) Similarly, in a portion of its Response
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`addressing Ground 1 (id. at 40-43), PO argues that, “[d]uring the ‘sleep’ period, the
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`’146 Patent ignores all movements for a defined period of time, including both
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`intentional and unintentional movements . . . .” (Response at 40; see also id. at 41
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`(“Put simply, the claimed ‘article’ of the ’146 Patent will not execute commands
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`based on any movement sensed during the ‘sleep’ period.”).) Based on this
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`interpretation, PO argues that “Liberty does not teach the ‘sleep’ period” (id. at 40)
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`because Liberty describes an alternative scenario where output pointer movement is
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`suppressed until a distance threshold is met. (Id. at 40-42.) Thus, PO’s interpretation
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`raises two questions with respect to the Sleep Command Limitation, which are (1)
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`what results from “send[ing] a sleep command to the motion input algorithm”; and
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`(2) must the “motion sensing algorithm” “re-active” only “after elapse of a defined
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`period of time.” The answers to both of these questions are evident from the plain
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`language of claim 22 and the specification of the ’146 patent, which demonstrate
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`why PO’s interpretation is wrong.
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`First, claim 22 does not define the term “sleep command.” Instead, the claim
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`merely recites that the “step motion algorithm” includes instructions to “send a sleep
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`command to the motion input algorithm,” which is “configured to translate the
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`sensed movement received from the at least one accelerometer into a command,”
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`and instructions to “re-activate the motion sensing [sic] algorithm from the sleep
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`command after elapse of a defined period of time.” (Ex. 1001 at 18:13-25.) Thus,
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`the only reasonable interpretation of the claim language is that the “sleep command”
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`temporarily deactivates the motion input algorithm from translating movement into
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`a command, and that one event that may cause the algorithm to reactivate is the
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`elapse of a defined period of time.
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`Second, claim 22 does not preclude the “step motion algorithm” from
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`comprising additional instructions, including instructions that would reactivate the
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`motion input algorithm from the sleep command based on an event other than the
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`elapse of a defined period of time. For example, claim 22 does not recite that the
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`motion input algorithm is “re-activate[d] . . . from the sleep command” only “after
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`elapse of a defined period of time.” And, by using the transitional term
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`“comprising,” the patent drafter signaled the intent to have an open-ended claim that
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`would allow for additional, unrecited instructions beyond the three listed in the
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`claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246
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`F.3d 1336, 1348 (Fed. Cir. 2001). Thus, the motion sensing algorithm may be
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`supplemented by additional instructions to reactivate the sleep command based on
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`an event other than the elapse of a defined period of time and still fall within the
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`scope of the claim.
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`There is no basis to depart from this plain and ordinary meaning of the claim
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`language. It would be “unjust to the public, as well as an evasion of the law, to
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`construe [claim 22] in a manner different from the plain import of its terms.” Phillips
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`v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); see also McCarty v.
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`Lehigh Valley R.R. Co., 160 U.S. 110, 116 (1895) (“if we once begin to include
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`elements not mentioned in the claim, in order to limit such claim . . . , we should
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`never know where to stop”). Therefore, departure from the plain and ordinary
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`meaning of a claim term is appropriate in only two instances: lexicography or
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`disavowal. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
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`(Fed. Cir. 2012).
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`Yet, that (departure from plain and ordinary meaning) is precisely what PO
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`asks the Board to do without demonstrating lexicography or disavowal. Relying
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`solely on two sentences in the specification of the ’146 patent, PO argues that “the
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`’146 Patent ignores all movements for a defined period of time, including both
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`intentional and unintentional movements, to allow the user to ‘bring the handheld
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`device back to restore the viewing angle or change the position to stay comfortable’
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`without affecting the displayed placement of the device cursor.” (Response at 40
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`(citing Ex. 1001 at 14:11-16, 15:48-52).) However, the specification does not define
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`“sleep command” (or “sleep”) in the way PO proposes or include any indication that
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`the inventor intended to act as his own lexicographer. The two cited sentences
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`merely explain that the “insensitivity timeout” is introduced to make the handheld
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`device “not sensitive to a change in its own position and the user’s position.” (Ex.
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`1001 at 15:48-52; see also id. at 14:11-16.) But this does not mean (and, indeed, the
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`specification does not state) that the device would not be sensitive to a more
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`significant movement than a simple change to the viewing angle or position of the
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`device.
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`Additionally, like claim 22, the specification does not state that the motion
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`input algorithm can reactivate only after elapse of a defined period of time. Indeed,
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`as illustrated in Figure 12, the specification broadly states that “[a]fter completion
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`of step (1206) the motion input algorithm receives a wake up command (1208) and
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`is accessible for the next motion input.” (Id., 14:27-29.) While the specification
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`later states that the wake up command may be sent “[a]fter the ‘sleep’ time elapses,”
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`this is only an example. (Id., 14:37-41.) The specification does not disavow or
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`disclaim reactivating the motion input algorithm based on some other event (e.g., a
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`more significant movement) or otherwise limit the claims to reactivating the
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`algorithm based only on the elapse of a defined period of time. Thus, it would be
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`improper to limit claim 22 in such a way. See Aria Diagnostics, Inc. v. Sequenom,
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`Inc., 726 F.3d 1296, 1301 (Fed. Cir. 2013) (“it is not enough that the only
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`embodiments, or all of the embodiments, contain a particular limitation to limit a
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`claim term beyond its ordinary meaning” (internal citation and quotation marks
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`omitted)).
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`B.
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`The Sleep Command Limitation (Claim 22) Does Not Preclude
`Translating Motion Data Collected During a Sleep State Into a
`Command at a Later Time
`Contrary to PO’s assertions (Response at 19-29), claim 22 does not preclude
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`translating motion data collected during a sleep state into a command at a later time.
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`As discussed above, the claim language merely recites that the “step motion
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`algorithm” includes instructions to “send a sleep command to the motion input
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`algorithm,” which is “configured to translate the sensed movement received from
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`the at least one accelerometer into a command,” and instructions to “re-activate the
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`motion sensing [sic] algorithm from the sleep command after elapse of a defined
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`period of time.” (Ex. 1001 at 18:13-25.) Thus, under the BRI standard, the claim
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`language merely recites that the sleep command temporarily deactivates the motion
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`input algorithm from translating sensed movement into a command for a defined
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`period of time. Nowhere does the claim language even suggest that the sensed
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`movement cannot be translated into a command after elapse of the defined period of
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`time.
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`PO ignores this plain reading of the claims. For example, PO argues that the
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`claims do not suggest that movement sensed after sending a sleep command can be
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`translated into a command after elapse of a defined period of time. But, as discussed
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`above in Section II.A, claim 22 uses the open-ended transitional term “comprising,”
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`which means claim 22 does not exclude additional, unrecited elements, such as
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`translating the sensed movement into a command after elapse of a defined period of
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`time.
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`PO also refers to the specification for support, but the specification explicitly
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`states that “the calculations of motion parameters may continue in the background”
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`after the sleep command is sent to the motion input algorithm. (Ex. 1001 at 14:24-
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`27.) Like the claims, nothing in the specification precludes translating the
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`parameters into a command after re-activation. If anything, the specification only
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`precludes new commands during the sleep state. (Id. at 14:22-25 (“Following
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`execution of the command at step (1204), a sleep command is sent to a motion input
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`algorithm (1206). The sleep command blocks any new commands from the motion
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`input algorithm.”).) Thus, PO is attempting to import into claim 22 a limitation that
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`is not even found in the specification, which should be rejected.
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`C. The “Sleep Command” Need Only Be Sent “After the Command is
`Executed”
`PO argues that the “sleep command” in claim 22 is a command within the step
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`motion algorithm that is not only sent after the execution of the motion input
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`algorithm command but is “logically associated with and conditioned upon the prior
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`execution of a motion input algorithm command.” (Response at 29; see also id. at
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`30-33.) PO’s attempt to rewrite the claim should be rejected for several reasons.
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`First, PO’s proposed construction is inconsistent with the plain and ordinary
`
`meaning of claim 22. Claim 22 merely recites “instructions to send a sleep command
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`to the motion input algorithm after the command is executed.” (Ex. 1001 at 18:21-
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`22.) In other words, all that is required by the claim is that the step motion algorithm
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`include instructions that send a sleep command “after” the command from the
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`motion input algorithm is executed. (Id.) Thus, the claim recites a temporal
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`relationship—not a causal relationship—between executing the command and
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`sending the sleep command.
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`PO’s construction is also inconsistent with the specification. (Response at 35-
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`38 (discussing figure 12 and associated description).) For example, like the claim
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`language, the specification states that the sleep command is sent after execution of a
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`commad: “Following execution of the command at step (1204), a sleep command
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`is sent to a motion input algorithm (1206).” (Ex. 1001 at 14:22-24 (emphasis
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`added).) The specification does not identify any logical association or conditioning
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`between the “sleep command” and the “command [that] is executed,” as confirmed
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`by Figure 12:
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`
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`(Id. at FIG. 12.)
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`PO additionally argues that “Petitioner’s construction cannot be correct
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`because sending the ‘sleep command’ in isolation from, or uncorrelated to, the
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`remaining algorithmic steps could not reliably accomplish the purpose of the
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`claimed ‘step motion algorithm’: ‘allowing forces caused by the returning motion to
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`be ignored.’” (Response at 38.) But the Board’s “task is not to limit claim language
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`to exclude particular devices because they do not serve a perceived ‘purpose’ of the
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`invention.” E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364, 1370 (Fed. Cir.
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`2003); see also id. (“An invention may possess a number of advantages or purposes,
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`and there is no requirement that every claim directed to that invention be limited to
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`encompass all of them.”). Nor has PO established that this portion of the
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`specification amounts to lexicography or disavowal. See Thorner, 669 F.3d at 1365.
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`If the applicant wished to capture such a purpose in the claims, it could have drafted
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`the claims in a manner to do so, rather than improperly attempt to capture the purpose
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`now through claim construction.
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`III. Claims 22 and 23 Are Anticipated by Liberty (Ground 1)
`The Petition demonstrates in Ground 1 that claims 22 and 23 are anticipated
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`by Liberty. (Petition at 19-48.) Each of PO’s arguments in response fails for the
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`reasons discussed below.
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`Liberty Discloses the “Sleep” and “Re-Activate” Limitations
`A.
`Based on a faulty interpretation (see supra Section II.A), PO argues that
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`Liberty does not disclose the “sleep” and “re-activate” limitations because “Liberty
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`suppresses only unintentional movements (e.g., tremors), while continuing to
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`execute intentional ‘pointing’ movement commands.” (Response at 41 (quoting
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`Ex. 1005 at Abstract, emphasis in original).) The Board appears to have adopted
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`similar reasoning in its Institution Decision. (Decision at 24-25.) As discussed
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`below, Liberty discloses these limitations under their proper interpretations and
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`under PO’s interpretations.
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`1.
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`Liberty Discloses these Limitations Under Their Proper
`Interpretations
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`As explained above in Section II.A, the “sleep command” in claim 22 does
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`not require all movements to be ignored, and the “step motion algorithm” may
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`include instructions that would reactivate the motion input algorithm from the sleep
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`command based on an event other than the elapse of a defined period of time. (See
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`supra Section II.A.) Based on this interpretation of the “sleep command,” Liberty
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`discloses the “sleep” and “re-activate” limitations. For example, as explained in the
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`Petition, Liberty’s “fine mode clicking” technique discloses a sleep state because
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`this technique suppresses the output of the pointer movement until either the distance
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`exceeds a distance threshold or the amount of elapsed time exceeds a time threshold.
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`(Petition at 38-40; Ex. 16:27-38; Ex. 1002 at ¶¶73-84.) Given that pointer movement
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`may be suppressed until the amount of elapsed time exceeds a time threshold, it is
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`of no consequence that pointer movement may also be suppressed until the distance
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`exceeds a distance threshold. As long as pointer movement may be suppressed until
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`the amount of elapsed time exceeds a time threshold, which it can, Liberty’s fine
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`mode clicking technique discloses the “sleep” and “re-activate” limitations. See
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`Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009)
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`(rejecting argument that a claim reciting “sensing radiation from multiple areas of
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`the biological tissue with the radiation detector” is not anticipated because the prior
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`art detects radiation from the heated probe in addition to detecting radiation from
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`biological tissue because the claim does not require detection “solely” from
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`biological tissue and the claim uses the term “comprising”).
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`2.
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`Liberty Discloses these Limitations Under PO’s
`Interpretation
`Liberty discloses the “sleep” and “re-activate” limitations even under PO’s
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`faulty interpretation of the “sleep command” limitation. As discussed above, in “fine
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`mode clicking,” output of the pointer movement is suppressed until either the
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`distance exceeds a distance threshold or the amount of elapsed time exceeds a time
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`threshold. (Petition at 38-40; Ex. 1005 at 16:27-38; Ex. 1002 at ¶¶73-84.) Thus,
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`Liberty discloses a scenario where the time threshold is exceeded before the distance
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`threshold is exceeded, which discloses these limitations. See Raytheon Co. v. Sony
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`Corp., 727 Fed. Appx. 662, 667 (Fed. Cir. 2018) (“A reference must be considered
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`for everything that it teaches, not simply the described invention or a preferred
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`embodiment.”) The fact that the distance threshold could be exceeded before the
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`time threshold is exceeded in other scenarios does not avoid anticipation of this
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`broad claim. See Boesen v. Garmin Int’l, Inc., 455 F. App’x 974, 977 (Fed. Cir.
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`2011).
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`B.
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`Liberty Discloses a “Sleep Command” Sent “After the Command Is
`Executed”
`PO argues that Liberty fails to disclose a “sleep command” that is sent “after
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`the command is executed,” as claimed, because Liberty’s “sleep command” is not
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`logically associated with and/or conditioned upon the prior execution of “the
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`command.” (Response at 44.) PO’s argument, however, is based on an overly
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`narrow claim construction. Properly construed, Liberty discloses this limitation.
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`Liberty also discloses this limitation under PO’s construction.
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`1.
`
`Liberty Discloses these Limitations Under Their Proper
`Interpretations
`As explained above in Section II.C, PO’s construction of this limitation is
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`inconsistent with the claim language and the specification, neither of which require
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`a causal relationship between the sleep command and the executed command. When
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`properly construed, this limitation requires only that the “sleep command” be sent
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`“after the command is executed.” (See Section II.C.) As explained in the Petition,
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`that is precisely what Liberty discloses. (Petition at 42-43 (“[T]he instruction to
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`switch to the first technique (‘sleep command’) is sent only after movement of the
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`3D pointing device is detected and translated into a command to position the cursor
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`over a small target (‘the command is executed’”) and then stopped.”); see also Ex.
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`1005 at 17:12-16, 18:25-34; Ex. 1002 at ¶¶81-83.) Indeed, PO does not dispute that
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`this limitation is met if this limitation is construed in such a way.
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`2.
`
`Liberty Discloses these Limitations Under PO’s
`Interpretation
`Even under PO’s construction—where the “sleep command” must be a
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`command within the step motion algorithm that is logically associated with and/or
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`conditioned upon the prior execution of “the command”—Liberty discloses the
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`limitation “send[ing] a sleep command to the motion input algorithm after the
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`command is executed,” as explained in the Petition. (Petition at 37-44.) As
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`explained in the Petition, “the instruction to switch to the first technique (‘sleep
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`command’) is sent by the disclosed ‘step motion algorithm,’ because, as discussed
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`above with respect to claim element 22(d), the step motion algorithm is nothing more
`
`than a process for performing the claimed function of the algorithm.” (Id. at 42,
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`emphasis removed.) Thus, the Petition explains that because the sleep command is
`
`sent by the step motion algorithm, the sleep command is a command within the step
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`motion algorithm.
`
`The Petition further explains that Liberty discloses the logical association
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`and/or conditioning that PO contends are limitations on the claim. For example, as
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`stated in the Petition, “Liberty explains that the instruction to switch to the first
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`technique (‘sleep command’) is sent when ‘the velocity of the handheld device is
`
`below a predetermined velocity threshold” and “[a]ccording to Liberty, this scenario
`
`may occur during ‘fine mode clicking,’ where the ‘user intends precise actuation
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`over a small target and carefully aligns the device, stops movement, and then presses
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`the button.’” (Id. (citing Ex. 1005 at 17:12-16, 18:25-34); see also Ex. 1002 at ¶¶81-
`
`83.) Additionally, “the instruction to switch to the first technique (‘sleep command’)
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`is sent only after movement of the 3D pointing device is detected and translated into
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`14
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`Case IPR2018-00985
`U.S. Patent No. 8,370,146
`a command to position the cursor over a small target (‘the command is executed’)
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`and then stopped.” (Petition at 42-43.) PO’s expert, Dr. Mohapatra, agreed, stating
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`that fine mode clicking is triggered based on “a change in velocity of the device”
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`(i.e., movement). (Ex. 1007 at 80:2-81:15.)
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`Thus, as explained in the Petition, Liberty discloses that the instruction to
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`switch to the first technique (“sleep command”) is logically associated with, and
`
`conditioned upon, the command to position the cursor over a small target (“the
`
`command [that] is executed”). Accordingly, even under PO’s construction Liberty
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`anticipates claims 22 and 23.
`
`IV. Claims 22 and 23 Are Obvious Based on Noguera and Liberty (Ground 2)
`PO argues regarding Ground 2 that Noguera and Liberty do not disclose
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`certain limitations and that Petitioner has not established that a person of ordinary
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`skill in the art (POSA) would have been motivated to combine Noguera and Liberty
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`in the manner set forth in the Petition. (Response at 47-66.). PO’s arguments
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`regarding Ground 2 are unavailing, as explained below.
`
`A.
`
`In the Combined Noguera-Liberty System, the Sleep Command is
`Sent “After the Command is Executed”
`PO asserts that “because neither Liberty nor Noguera teach a ‘sleep command’
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`that is sent after the execution of the motion input command, as required by the Sleep
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`Command Limitation, the asserted combination of references cannot disclose the
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`Challenged Claims.” (Response at 48.) PO analyzes each reference individually,
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`15
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`Case IPR2018-00985
`U.S. Patent No. 8,370,146
`basing its conclusion for each individual reference on PO’s claim construction of the
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`Sleep Command Limitation, which is a flawed construction as discussed above in
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`Section II.C. In particular, for its Ground 2 analysis PO cites as support Sections
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`V.B and VI of its Response, and Section VI of the Response includes arguments that
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`rely on PO’s claim construction (presented at Section V.B of the Response)
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`involving a logical association or conditioning between the sleep command and the
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`prior execution of a motion input algorithm command. (Response at 44-46, 48
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`(citing Sections V.B and VI of Response).)
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`PO’s construction of the Sleep Command Limitation is unduly narrow in
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`requiring the “sleep command” to be logically associated with and/or conditioned
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`upon the prior execution of “the command,” as discussed above. (Supra Section
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`II.C.) Therefore, PO’s analysis for Ground 2 is faulty for its reliance on an erroneous
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`construction. As discussed above in Section II.C, the “sleep command” need only
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`be sent “after the command is executed,” and under that correct interpretation (i.e.,
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`plain and ordinary meaning under the BRI standard) the Petition explains that
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`Liberty discloses sending the sleep command after the command is executed by
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`disclosing a switch to fine clicking mode due to the velocity of the handheld device
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`having slowed down sufficiently (Petition at 66), as recognized by the Board
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`(Decision at 15). The Petition includes sufficient obviousness analysis regarding
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`this aspect of the combined Noguera-Liberty system, explaining (with supporting
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`16
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`Case IPR2018-00985
`U.S. Patent No. 8,370,146
`expert testimony) that in the combined system, the sleep command is sent because
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`of execution of a prior command, e.g., relating to fine user interactions with
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`Noguera’s device 10. (Petition at 67-70; Ex. 1002 at ¶¶132-137.)
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`Even if PO’s construction discussed above at Section II.C is correct (i.e., even
`
`if the “sleep command” must be a command within the step motion algorithm that
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`is logically associated with and/or conditioned upon the prior execution of “the
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`command”), Petitioner has established that the combined Noguera-Liberty system
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`discloses the Sleep Command Limitation. As an initial matter, PO’s attack on the
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`references individually, without considering the combined system as described in
`
`the Petition, is improper. The Federal Circuit has instructed that “[o]n the issue of
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`obviousness, the combined teachings of the prior art as a whole must be considered.”
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`Raytheon, 727 Fed. Appx. at 667. As explained below, the Petition describes how
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`the combined Noguera-Liberty system discloses the Sleep Command Limitation.
`
`The Petition relates the previously-executed command to disclosures in the
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`prior art (e.g., Liberty). (Petition at 66 (“In other words, the instruction to switch to
`
`the first technique (‘sleep command’) is sent only after movement of the 3D pointing
`
`device is detected and translated into a command to position the cursor over a small
`
`target (‘the command is executed’) and then stopped.”); see also id. at 63-65, 67.)
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`As explained in the Petition, “[i]t would have been obvious to implement the
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`modification [discussed at pages 63 and 67] so that the algorithm to process / execute
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`17
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`Case IPR2018-00985
`U.S. Patent No. 8,370,146
`the computed current pointer screen location (‘step motion algorithm’) (as opposed
`
`to any other algorithm) also includes the instructions to ‘send a sleep command’ . . .
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`because such an implementation would have ensured that Noguera’s algorithm to
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`translate device orientation into the current pointer screen location (‘motion input
`
`algorithm’) is only deactivated . . . at the appropriate time.” (Petition at 69.)
`
`In the combined Noguera-Liberty system, the sleep command is thus within
`
`the algorithm to process / execute the computed current pointer screen location
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`(“step motion algorithm”) and is
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