Filed: March 12, 2019
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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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`GOOGLE LLC,
`Petitioner
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`v.
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`CYWEE GROUP LTD.
`Patent Owner
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`____________________
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`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
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`PATENT OWNER’S MOTION TO AMEND
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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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`GOOGLE LLC,
`Petitioner
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`v.
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`CYWEE GROUP LTD.
`Patent Owner
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`____________________
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`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
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`PATENT OWNER’S MOTION TO AMEND
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` Case IPR2018-01257
`Patent No. 8,552,978
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`TABLE OF CONTENTS
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`I. INTRODUCTION ..................................................................................... 1
`II. BACKGROUND ....................................................................................... 1
`III. ARGUMENT ........................................................................................... 2
`A. CyWee Has Proposed A Reasonable Number Of Substitute Claims 3
`B. The Proposed Amendments Do Not Enlarge The Scope Of The
`Claims Or Introduce New Subject Matter ................................................ 3
`C. The Proposed Amendments Are Responsive To At Least One
`Ground Of Unpatentability Involved In The Trial .................................. 4
`D. Proposed Contingent Claim Listing And Support In Earlier
`Disclosures .................................................................................................... 5
`E. The Proposed Contingent Claims Are Patentable Over The Prior
`Art ................................................................................................................. 8
`F. Patent Owner’s Duty of Candor ........................................................ 11
`IV. CONCLUSION ...................................................................................... 14
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`TABLE OF AUTHORITIES
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`Cases
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`Aqua Products, Inc. v. Matal,
` 872 F.3d 1290 ................................................................................................ 2
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`Ariad Pharms., Inc. v. Eli Lilly & Co.,
` 598 F.3d 1336 ................................................................................................ 5
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`Lectrosonics, Inc. v. Zaxcom, Inc.,
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`IPR2018-01129, Paper 15 (PTAB, February 25, 2019) ............................ 3, 5
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`Nichia Corp. v. Emcore Corp.,
` IPR2012-00005, Paper 27 ............................................................................. 5
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`Statutes
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`35 U.S.C. § 112 ................................................................................................. 1
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`35 U.S.C. § 316 ................................................................................................. 2
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`35 U.S.C. §103 .................................................................................................. 5
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`37 CFR § 42.121 ....................................................................................... 2, 3, 5
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`LIST OF EXHIBITS
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`Patent No. 8,552,978
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`Declaration of Dr. Gary L. Blank
`Curriculum Vitae of Dr. Gary L. Blank CV
`Claim Construction Opinion and Order (Doc. 117), Cywee
`Group Ltd. v. Samsung Elecs. Co., Ltd., C.A. No. 2:17-CV-
`00140-WCB-RSP (E.D. Tex., July 9, 2018)
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`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Patent Owner Response
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`Curriculum Vitae of Dr. Joseph LaViola, Ph.D.
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`Order (Doc. 153), Cywee Group Ltd. v. Samsung Elecs. Co.,
`Ltd., C.A. No. 2:17-CV-00140-WCB-RSP (E.D. Tex., Aug.
`14, 2018)
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`Memorandum Opinion (Doc. 55), CyWee Group Ltd. v.
`Motorola Mobility LLC, C.A. No. 17-780-RGA (D. Del.,
`Dec. 21, 2018)
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`File History of U.S. Application No. 10/396,439
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`File History of U.S. Application No. 12/413,722
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`File History of U.S. Application No. 13/367,058
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`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Motion to Amend
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`File History of U.S. Provisional Application 61/292558
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`2002
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`2003
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`2004
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`2005
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`2008
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`2009
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`2011
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`I.
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`INTRODUCTION
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`Patent Owner CyWee Group Ltd. (“CyWee” or “Patent Owner”) provides
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`these proposed claims contingent upon a finding of invalidity of the respective
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`challenged original claim(s). Proposed Contingent Claim 19 clarifies that the 3D
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`pointing device is handheld and limits the display device utilized by the method to
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`one that is built-in to and integrated with the 3D pointing device. Proposed
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`Contingent Claim 20 further limits the 3D pointing device to a smartphone.
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`Finally, some limited potential issues under 35 U.S.C. § 112 are addressed. The
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`amendments do not broaden the scope of the claims and are each responsive to at
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`least one of the alleged grounds of invalidity. Vilox respectfully submits that these
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`amendments are permissible and should be entered by the Panel in this IPR in the
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`event that the Board determines that the corresponding originally issued claim(s)
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`are not patentable.
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`II. BACKGROUND
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`The Panel’s consideration of this motion and the proposed amendments are
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`contingent upon a finding that the original challenged claims of U.S. Patent
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`8,552,978 (the “‘978 Patent”) are invalid. Accordingly, CyWee provides further
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`limitation and clarification of its claimed invention by and through the proposed
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`amendments below. Proposed Contingent Claim 19 includes proposed amendments
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`to clarify that the 3D pointing device is handheld (Appendix A, 19(a)) and to limit
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`the display device of the claimed method to a display device that is built-in to and
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`integrated with the 3D pointing device (id., 19(g)). Proposed Contingent Claim 20
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`includes proposed amendments to further limit the 3D pointing device to a
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`smartphone (id., 20).
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`III. ARGUMENT
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`In accordance with 35 U.S.C. § 316(d)(1)(B), CyWee may propose a
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`reasonable number of substitute claims for each claim challenged by petitioner
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`Google, LLC, (“Google” or “Petitioner”). These substitutions may not broaden the
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`scope of the claims or introduce new claimed matter. Id., § 316(d)(3); 37 CFR §
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`42.121(a)(2)(ii). Proposed amendments should
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`respond
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`to a ground of
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`unpatentability raised by the petitioner in the trial. 37 CFR § 42.121(a)(2)(i). The
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`claim listing, contained in Appendix A hereto, clearly indicates the changes and
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`sets forth: (1) the support in the original disclosure of the patent for each added or
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`amended claim; and (2) the support for each claim in an earlier-filed disclosure for
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`which benefit of the filing of the earlier filed disclosure is sought. As shown
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`below, the proposed amended claims do not broaden the scope of the claims at
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`issue, are responsive to a ground at issue in this IPR, and are supported by the ‘978
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`specification and the specification of an earlier-filed application. It is Petitioner’s
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`burden to show that the amended claims are unpatentable over the prior art. Aqua
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`Products, Inc. v. Matal, 872 F.3d 1290, 1324 (Fed. Cir. 2017).
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`A. CyWee Has Proposed A Reasonable Number Of Substitute Claims
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`According to 37 C.F.R § 42.121(a)(3), a motion to amend may propose a
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`reasonable number of substitute claims for each challenged claim. Generally, it is
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`presumed “that only one substitute claim would be needed to replace each
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`challenged claim,” but that challenge may be rebutted by a showing of need. 37
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`CFR § 42.121(a)(3); Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
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`at 4-5 (PTAB, February 25, 2019). CyWee proposes one substitute claim for each
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`of challenged Claims 10 and 12. Therefore, CyWee has proposed a reasonable
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`number of substitute claims for each challenged claim.
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`B. The Proposed Amendments Do Not Enlarge The Scope Of The Claims
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`The proposed amended claims do not exceed the scope of the original claims
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`of the ‘978 Patent. No limitations are removed thereby impermissibly expanding
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`the scope of the claims. Any added claim language is for the purposes of
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`clarification or for further limitation, thereby narrowing the scope. Substitute
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`claims meet the requirements of § 42.121(a)(2)(i) and (ii) where they narrow the
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`scope of the challenged claims they replace. Lectrosonics, IPR2018-01129, Paper
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`15 at 5-6. The addition in a proposed substitute claim of a novel and nonobvious
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`feature or combination to avoid prior art on which an instituted ground of
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`unpatentability is based does not enlarge the scope of the claims of a patent. Id.
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`These are precisely the kinds of amendments Patent Owner proposes here. Patent
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`Owner has also corrected minor typographical errors in steps 19(c) and 19(f) to
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`address an antecedent basis issue noted by the Board in its Institution Decision.
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`Paper 9 at 9.
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`Step (19(a)) of Proposed Contingent Claim 19 clarifies that the 3D pointing
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`device is a handheld device. As discussed in the accompanying Patent Owner’s
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`Response, Patent Owner considers that a 3D pointing device is necessarily a
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`handheld device. This addition clarifies that this must be true. Step 19(g) of
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`Proposed Contingent Claim 19 adds the limitation that the display device be “built-
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`in to and integrated with the 3D pointing device.” This limits the scope of the
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`claim by requiring that the claimed display device is one that is built-in to the
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`housing of the 3D pointing device. This step also clarifies that the “fixed reference
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`frame” is the “fixed display reference frame.”
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`Step 20 of Proposed Contingent Claim 20 adds the limitation “wherein the
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`3D pointing device is a smartphone.” This further limits the claim by restricting the
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`embodiments of the 3D pointing device of Claim 10/19 to a smartphone device.
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`C. The Proposed Amendments Are Responsive To At Least One Ground
`Of Unpatentability Involved In The Trial
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`A motion to amend is proper where the amendment “respond[s] to a ground
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`of unpatentability involved in the trial.” 37 CFR § 42.121(a)(2)(i). Where the
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`proposed amendment is intended to address the grounds for institution, additional
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`modifications may be permissible to address potential § 101 or § 112 issues.
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`Lectrosonics, IPR2018-01129, Paper 15, 5-6. Because the petition here necessarily
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`alleges that every element of each challenged claim in the patent is disclosed by a
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`combination of prior art references under 35 U.S.C. §103, any added substantive
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`limitations are responsive to a ground for institution. CyWee has added the
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`limitations discussed above. As will be discussed below in Section III.E, if the
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`original claims are found to be invalid based on Petitioner’s asserted grounds, the
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`proposed amended claims add limitations that clearly overcome the prior art
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`combinations asserted by Petitioner.
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`D. The Proposed Contingent Claims Introduce No New Matter And Have
`Support In Earlier Disclosures
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`The ‘978 Patent issued from U.S. Application No. 13/176,771, filed on July
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`6, 2011, and claims priority to a Provisional Application No. 61/292,558 (the “‘558
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`Provisional”) filed on January 6, 2010. The file history of the ‘558 Provisional is
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`provided as Exhibit 2012. Each Proposed Contingent Claim is supported by the
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`original disclosure of the ‘978 Patent and/or the related ‘558 Provisional, thereby
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`reasonably conveying to one of ordinary skill in the art that the inventor was in
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`possession of the claimed subject matter as of the filing dates of the ‘978 Patent
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`and/or the ‘558 Provisional. 37 CFR §§ 42.121(b)(1)-(2); see also Nichia Corp. v.
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`Emcore Corp., IPR2012-00005, Paper 27 at 3 (PTAB June 3, 2013) (citing Ariad
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`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
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`Appendix A hereto includes a Claim Listing that identifies the proposed changes
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`and sets forth the support in the original disclosure and the earlier-filed disclosure
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`for which the benefit of the earlier filing date is sought. Written support from each
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`disclosure is demonstrated for each element of each Proposed Contingent Claim.
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`i. Proposed Contingent Claim 19
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`Support for the amendment that the 3D pointing device be “handheld”
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`(19(a)) to Proposed Contingent Claim 19 is found in at least the following
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`disclosures.
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`The ‘558 Provisional discloses that the 3D pointing device may be “a remote
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`controller, a joystick or a cellular phone.” Ex. 2012, ¶ 0023. All of these disclosed
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`embodiments are handheld devices. Ex. 2011, ¶ 15. Figure 1 of the ‘558
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`Provisional depicts such a handheld embodiment of the device. Ex. 2012, Fig. 1.
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`The specification of the ‘978 Patent, as originally filed (Ex. 1009, 104-194),
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`discloses “a portable 3D pointing device” and discloses several embodiments of a
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`3D pointing device, all of which are handheld, including a “computer mouse,”
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`“smartphone, tablet PC or navigation equipment.” Ex. 1009 at 104, ¶ 0002; 129, ¶
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`0048. A PHOSITA would understand that a “portable” device is typically one that
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`is “handheld.” Ex. 2011, ¶ 16. Figures 1, 2, 3, 5, and 6 all depict handheld 3D
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`pointing devices. Id. at 183-186, Figs. 1, 2, 3, 5, and 6.
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`Support for the amendment “a display device built-in to and integrated with
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`the 3D pointing device” (19(g)) to Proposed Contingent Claim 19 is found in at
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`least the following disclosures.
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`The ‘558 Provisional discloses that the 3D pointing device may be “a
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`cellular phone.” Ex. 2012, ¶ 0023. A cellular phone has a built-in display device
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`that is integrated therein. Ex. 2011, ¶ 18.
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`The specification of the ‘978 Patent, as originally filed, discloses that the 3D
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`pointing device “may further comprises [sic] a built-in display” that may be
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`“integrated on the housing.” Ex. 1009 at 129, ¶ 0048; see also id. at 186, Fig. 6.
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`ii. Proposed Contingent Claim 20
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`Support for the amendment “wherein the 3D pointing device is a
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`smartphone” (20) to Proposed Contingent Claim 20 is found in at least the
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`following disclosures.
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`As discussed above, the ‘558 Provisional discloses that the 3D pointing
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`device may be “a cellular phone.” Ex. 2012, ¶ 0023. A PHOSITA understands that
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`a smartphone is a type of cellular phone. Ex. 2011, ¶ 21.
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`The specification of the ‘978 Patent, as originally filed, repeatedly discloses
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`that the 3D pointing device may be a portable electronic device “such as a
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`smartphone.” Ex. 1009 at 119, ¶ 0027; 129, ¶ 0048; 131, ¶ 0050; 138, ¶ 0058; 148,
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`¶ 0071; 149, ¶ 0072; 150, ¶ 0074; 156, ¶ 0081; 175, ¶ 00113; and 196, Fig. 6.
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`Figure 6 of the ‘978 Patent depicts such a smartphone. Id. at 186, Fig. 6.
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`E. The Proposed Contingent Claims Are Patentable Over The Prior Art
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`As mandated by Aqua Products, it is the burden of the Petitioner, Google, to
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`prove that the Proposed Contingent Claims in this Motion are unpatentable over
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`the prior art. Nonetheless, Patent Owner confirms that no combination of the prior
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`art of record teaches the subject matter of the proposed claims. This Motion
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`discusses the closest known art to the features discussed above, which Patent
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`Owner believes is the art raised by Google in its Petition.
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`As explained herein, the Proposed Contingent Claims are patentable over the
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`art at issue in this proceeding, Zhang in view of Bachmann, and Liberty in view of
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`Bachmann.
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`Proposed Contingent Claim 19 is amended from current Claim 10 to add the
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`limitation that the display device is “built-in to and integrated with the 3D pointing
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`device.” As discussed in the accompanying Patent Owner’s Response, Patent
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`Owner considers current Claim 10 to be valid in view of the challenges in this IPR.
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`However, to the extent that the Board finds that the original Claim 10 is obvious
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`over Zhang in view of Bachmann or Liberty in view of Bachmann, the added
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`limitations clearly overcome that combination of prior art. Ex. 2011, ¶ 24.
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`Neither Zhang, Liberty, nor Bachmann discloses “a display device built-in to
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`and integrated with the 3D pointing device.” Zhang discloses a display device, but
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`does not disclose that the display device is “built-in to and integrated” with the
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`pointing device. Ex. 2011, ¶ 26. Rather, the display screen in Zhang is taught to be
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`a separate, external device, such as a television screen or a computer. Ex. 1005, ¶¶
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`0021, 0030-31; Figs. 1, 2, 4a, and 4b. Zhang would be inoperable if a display
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`device were built-in to and physically integrated with its pointing device because
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`Zhang needs to point to a position on an external screen to display and control a
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`cursor on the external screen. Id., ¶ 0009; Ex. 2011, ¶ 26.
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`Liberty, like Zhang, discloses a display device, but does not disclose that the
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`display is “built-in to and integrated” with the pointing device. Ex. 2011, ¶ 27. Just
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`as in Zhang, the display screen in Liberty is taught to be a separate, external
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`device, such as a home media system with a television or monitor. Ex. 1006, 6:21-
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`25. The 3D pointing device of Liberty is designed to “be held by a user in front of a
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`display.” Ex. 1006, 7:31-36. Furthermore, Liberty would be inoperable for its
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`intended purpose if the display screen were integrated with its pointing device
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`because it would not be able to be “held... in front of [the] display.” Ex. 2011, ¶ 27.
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`Bachmann only cursorily mentions including an external display device for
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`the purposes of rendering the movements of its sensors that are attached to an
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`articulated rigid body in a synthetic or virtual environment. Ex. 1004, 14:20-30,
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`Fig. 4; Ex. 2011, ¶ 28. Bachmann does not disclose a pointing device, let alone a
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`display device built-in to and physically integrated with a pointing device. Id. Nor
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`would a PHOSITA be motivated to integrate a display device with any of
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`Bachmann’s sensor units because such an integrated display would serve no
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`purpose and needlessly add to the weight and size of the sensor units. Id.
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`Thus, neither Zhang, Liberty, nor Bachmann teaches limitation 19(g), and it
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`would not be obvious to a PHOSITA to include a built-in display device physically
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`integrated with the 3D pointing device in the combination of those references. Id.
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`at ¶ 29. Accordingly, Proposed Contingent Claim 19 is valid over the references
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`asserted in this IPR.
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`Proposed Contingent Claim 20 is amended from current Claim 12 to add the
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`limitation “wherein the 3D pointing device is a smartphone.” As discussed in the
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`accompanying Patent Owner’s Response, Patent Owner considers current Claim 12
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`to be valid in view of the challenges in this IPR. However, to the extent that the
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`Board finds that the original Claim 12 is obvious over Zhang in view of Bachmann
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`or Liberty in view of Bachmann, the added limitation clearly overcomes that
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`combination of prior art. Ex. 2011, ¶ 30. As discussed above, neither Zhang,
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`Liberty, nor Bachmann discloses a built-in display screen. A smartphone is a kind
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`of device with a display screen “built-in to and integrated with” the device. Id. at ¶
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`32. None of these prior art references mention or concern a smartphone. Id.
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`Accordingly, Proposed Contingent Claim 20 is valid over the references cited in
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`this IPR.
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`F. Patent Owner’s Duty of Candor
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`Patent Owner believes that its proposed contingent claims meet all statutory
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`requirements for patentability, including those of §§ 101-103 and § 112, and are
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`therefore valid. Multiple defendants in the various district court actions regarding
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`the ‘438 and ‘978 Patents, including Google, filed motions to dismiss based on
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`alleged § 101 deficiencies. All of these motions were denied by the respective
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`courts. Likewise, the challenged claims in the present IPR have been the subject of
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`several claim construction orders. In each case where an order was issued, any
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`challenges to claim terms as indefinite were rejected by the court. See Exs. 2003,
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`2006-2007. Only one defendant, Samsung, has raised the question of enablement
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`of the current claims of the ‘438 and ‘978 Patents, and that issue has been rebutted
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`by Dr. LaViola, Patent Owner’s expert in this IPR. Ex. 2011, ¶ 4. The limitations
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`Patent Owner proposes for the Proposed Contingent Claims do not raise any new
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`issues that would alter the results of the court decisions or Dr. LaViola’s
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`conclusions. Id.
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`Patent Owner is not aware of any noncumulative prior art not already of
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`record that Patent Owner believes presents a prima facie case of unpatentability or
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`that refutes or is inconsistent with a position taken by Patent Owner regarding the
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`patentability of the Proposed Contingent Claims. Defendants in the various district
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`court actions regarding the ‘438 and ’978 Patents have identified excessive
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`quantities of prior art. Patent Owner does not believe any of these prior art
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`references are more pertinent to the Proposed Amended Claims than those asserted
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`by Petitioner here. However, out of an abundance of caution, Patent Owner
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`identifies to the Board the prior art from those cases that, based on a good faith
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`review, is arguably most relevant to the Proposed Contingent Claims: (1)
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`“Wearable FPGA Based Wireless Sensor Platform” by Tom Aloha, et al. (IEEE
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`2007); (2) “Rock ’n’ Scroll is Here to Stay” by Joel F. Bartlett, Western Research
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`Laboratory, Research Report 2000/3 (May 2000); (3) “Virtual Reality for Palmtop
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`Computers” by George W. Fitzmaurice, et al., ACM Transactions on Information
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`Systems, Vol. 11, No. 3, July 1993, pp. 197-218; (4) “MESH: Supporting Mobile
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`Multi-modal Interfaces” by Stephen Hughes, et al., Palpable Machines Research
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`Group; (5) “Mobile Phones as 3-DOF Controllers: A Comparative Study” by
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`Nikolaos Katzakis, et al. (IEEE 2009); (6) Mobile Air Mouse, available at
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`<https://web.archive.org/web/20081023194901/http ://www.mobileairmouse.com:
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`80/>; and (7) “Tilting Operations for Small Screen Interfaces (Tech Note)” by Jun
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`Rekimoto (1996).
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`Furthermore, Patent Owner identifies to the Board the prior art asserted by
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`Samsung’s expert in the Samsung Suit, the only case where an expert report on
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`prior art has been submitted: (1) “An Attitude Compensation Technique for a
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`MEMS Motion Sensor Based Digital Writing Instrument” by Yilun Luo, et al.
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`(IEEE 2006); (2) “Development of a MEMS Based Wearable Motion Capture
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`System” by Nunzio Abbate (May 2009); (3) U.S. Patent Application Pub. No.
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`2005/0240347 entitled “Method and Apparatus for Adaptive Filter Based Attitude
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`Updating” to Yang; (4) various materials relating to CH Robotics CHR-6dm; and
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`(5) U.S. Patent No. 8,515,707 to Joseph.
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`Finally, Patent Owner identifies to the Board the art raised by another
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`petitioner, ZTE (USA), Inc., in IPR2019-00143 challenging the ‘438 Patent: (1)
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`U.S. Patent No. 8,267,785 to Yamashita; (2) U.S. Patent No. 8,462,109 to Nasiri;
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`(3) U.S. Patent Application Pub. No. 2009/0265671 to Sachs; and (4) U.S. Patent
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`Application Pub. No. 2007/0299626 to Song. Patent Owner has responded to these
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`references in its Patent Owner Preliminary Response in that IPR. See IPR2019-
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`00143, Paper 6.
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`Patent Owner believes that the foregoing references are no more pertinent
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`than those asserted by Petitioner in the present IPR and are at best cumulative of
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`the references already of record. Patent Owner therefore believes that its Proposed
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`Contingent Claims are patentable over the foregoing prior art references, taken
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`individually or in combination.
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`13
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` Case IPR2018-01257
`Patent No. 8,552,978
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`IV. CONCLUSION
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`In the event that the Board finds the original challenged claims of the ‘978
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`Patent invalid, Patent Owner respectfully requests that the Board allow Claim 10 to
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`be amended by Proposed Contingent Claim 19 and Claim 12 to be amended by
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`Respectfully submitted,
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`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`Proposed Contingent Claim 20.
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`Dated: March 12, 2019
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`14
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
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`indicated below, a complete and entire copy of this submission, including the
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`exhibits hereto, was provided by email to Petitioner’s counsel via email, as agreed
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`to by Petitioner’s Service Information in the Petition submission, by serving the
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`email address of record as follows:
`
`Matthew A. Smith
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(202) 669-6207
`smith@smithbaluch.com
`
`Andrew S. Baluch
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(847) 863-1645
`baluch@smithbaluch.com
`
`Christopher M. Colice
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(617) 947.7280
`colice@smithbaluch.com
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`Dated: March 12, 2019
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`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`
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`APPENDIX A: CLAIM LISTING
`
`I.
`
`Case IPR2018-01257
`Patent No. 8,552,978
`Proposed Contingent Claim 19 to Replace Claim 10 if Claim 10 is
`Found Unpatentable
`
`[19(a)] A method for compensating rotations of a 3D pointing device, which is
`handheld, comprising:
`
`[19(b)] generating an orientation output associated with an orientation of the 3D
`pointing device associated with three coordinate axes of a global reference frame
`associated with Earth;
`
`[19(c)] generating a first signal set comprising axial accelerations associated with
`movements and rotations of the 3D pointing device in [the] a spatial reference
`frame;
`
`[19(d)] generating a second signal set associated with Earth's magnetism;
`
`[19(e)] generating the orientation output based on the first signal set, the second
`signal set and the rotation output or based on the first signal set and the second
`signal set;
`
`[19(f)] generating a rotation output associated with a rotation of the 3D pointing
`device associated with three coordinate axes of [a] the spatial reference frame
`associated with the 3D pointing device;
`
`[19(g)] and using the orientation output and the rotation output to generate a
`transformed output associated with a fixed display reference frame associated with
`a display device built-in to and integrated with the 3D pointing device, wherein the
`orientation output and the rotation output is generated by a nine-axis motion sensor
`module;
`
`[19(h)] obtaining one or more resultant deviation including a plurality of deviation
`angles using a plurality of measured magnetisms Mx, My, Mz and a plurality of
`predicted magnetism Mx', My' and Mz' for the second signal set.
`
`II.
`
`Proposed Contingent Claim 20 to Replace Claim 12 if Claim 12 is
`Found Unpatentable
`
`[20] The method of claim 10, wherein the 3D pointing device is a smartphone, and
`wherein the orientation output is a rotation matrix, a quaternion, a rotation vector,
`or comprises three orientation angles.
`
`
`
`1
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`
`
`APPENDIX A: CLAIM LISTING
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`III. Unamended Claims 11 and 13-18 Depending from the Proposed
`Contingent Claims
`
`
`Original Claim 11
`
`[11(a)] The method of claim 10, wherein the orientation output comprises a yaw
`angle, a pitch angle, and a roll angle associated with the three coordinate axes of
`the global reference frame; the first signal set comprises a first axial acceleration a
`second axial acceleration, and a third axial acceleration; the step of generating the
`orientation output based on the first signal set and the second signal set comprises:
`
`[11(b)] calculating the pitch angle based on the first axial acceleration;
`
`[11(c)] calculating the roll angle based on the second axial acceleration and the
`pitch angle or based on the third axial acceleration and the pitch angle; and
`
`[11(d)] calculating the yaw angle based on the pitch angle, the roll angle, and the
`second signal set.
`
`Original Claim 13
`
`[13] The method of claim 10, wherein the transformed output represents a segment
`of a movement in a plane in the fixed reference frame parallel to a screen of the
`display device.
`
`Original Claim 14
`
`[14(a)] The method of claim 10, wherein the step of generating the transformed
`output comprises:
`
`[14(b)] obtaining an orientation of the display device associated with the global
`reference frame;
`
`[14(c)] obtaining an orientation of the 3D pointing device associated with the fixed
`reference frame based on the orientation output and the orientation of the display
`device associated with the global reference frame;
`
`[14(d)] generating a transformed rotation associated with the fixed reference frame
`based on the orientation of the 3D pointing device associated with the fixed
`
`
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`2
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`
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`APPENDIX A: CLAIM LISTING
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`reference frame and the rotation output; and
`
`[14(e)] generating the transformed output based on the transformed rotation.
`
`Original Claim 15
`
`[15(a)] The method of claim 14, wherein the step of generating the transformed
`rotation comprises:
`
`[15(b)] obtaining a rotation matrix from the orientation of the 3D pointing device
`associated with the fixed reference frame; and
`
`[15(c)] multiplying the rotation matrix and the rotation output together to generate
`the transformed rotation.
`
`Original Claim 16
`
`[16(a)] The method of claim 15, wherein the transformed rotation comprises a first
`angular velocity, a second angular velocity, and a third angular velocity associated
`with three coordinate axes of the fixed reference frame;
`
`[16(b)] the transformed output comprises a first movement component and a
`second movement component associated with two of the three coordinate axes of
`the fixed reference frame;
`
`[16(c)] the step of generating the transformed output based on the transformed
`rotation comprises:
`
`[16(d)] multiplying the second angular velocity by a scale factor to generate the
`second movement component; and
`
`[16(e)] multiplying the third angular velocity by the scale factor to generate the
`first movement component.
`
`Original Claim 17
`
`[17(a)] The method of claim 14, wherein the step of obtaining the orientation of
`the display device associated with the global reference frame comprises:
`
`[17(b)] recording a current orientation output as the orientation of the display
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`3
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`APPENDIX A: CLAIM LISTING
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`Case IPR2018-01257
`Patent No. 8,552,978
`device associated with the global reference frame in response to a reset signal.
`
`Original Claim 18
`
`[18(a)] The method of claim 17, wherein the current orientation output comprises a
`yaw angle associated with one of the three coordinate axes of the global reference
`frame,
`
`[18(b)] and the step of obtaining the orientation of the 3D pointing device
`associated with the fixed reference frame comprises: obtaining the orientation of
`the 3D pointing device associated with the fixed reference frame by subtracting the
`yaw angle from the orientation output.
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`4
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`CLAIM LISTING APPENDIX
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` Case IPR2018-01257
`Patent No. 8,552,978
`
`Support in ‘978 Patent as
`Originally Filed (Ex. 1009, 104-194)
`Abstract, Passim, ¶¶ 0002, 0007,
`0034, 0048, 0058, 0071-0072, 0074,
`0081, 0091, 00102, 00107, Figs. 1, 2,
`3, 5, 6, and 13
`Abstract, ¶¶ 0019-0020, 0092
`
`
`Support in ‘558 Provisional
`(Ex. 2012)
`¶¶ 0002-0005, 0023, passim,
`Figs. 1, 3, 4, and 7b
`
`¶¶ 0003-0006, 0027-0028
`
`¶¶ 0092, 00103, 00108
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`¶¶ 0003-0004, 0024, 0027,
`Fig. 4
`
`¶¶ 00103, 00108
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`¶¶ 00103, 00108
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`¶¶ 0004, 0026-0027
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`¶¶ 0027-0028, 0039, Fig. 4
`
`
`Proposed Contingent Claim 19
`
`[19(a)] A method for compensating
`rotations of a 3D pointing device, which
`is handheld, comprising:
`
`[19(b)] generating an orientation output
`associated with an orientation of the 3D
`pointing device associated with three
`coordinate axes of a global reference
`frame associated with Earth;
`[19(c)] generating a first signal set
`comprising axial accelerations associated
`with movements and rotations of the 3D
`pointing device in [the] a spatial reference
`frame;
`[19(d)] generating
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