Filed: September 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
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`

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`TABLE OF CONTENTS
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`
`
`I. SUMMARY ....................................................................................................... 1
`II. BACKGROUND .............................................................................................. 2
`III. REFERENCES RELIED ON BY PETITIONER ....................................... 9
`A. U.S. Patent No. 7,089,148 to Bachmann et al. (“Bachmann”) ........... 9
`B. U.S. Patent Application Pub. No 2004-0095317 to Zhang et al.
`(“Zhang”) .......................................................................................... 10
`C. U.S. Patent 7,158,118 to Liberty (“Liberty”) ..................................... 12
`IV. CHALLENGES ............................................................................................ 13
`V. CLAIM CONSTRUCTION .......................................................................... 17
`A. “Rotation Output” .............................................................................. 18
`B. “Spatial Reference Frame” ................................................................. 18
`C. “3D Pointing Device” .......................................................................... 19
`VI. BACHMANN IS NOT ANALOGOUS ART .............................................. 20
`VII. THE REFERENCES DO NOT DISCLOSE ALL LIMITATIONS OF
`INDEPENDENT CLAIM 10 ..................................................................... 21
`A. Challenge 1 – Zhang in View of Bachmann, Claims 10 and 12 ....... 22
`1. Zhang in view of Bachmann does not disclose all limitations of
`the challenged claims ............................................................. 22
`2. It Would Not be Obvious to One of Skill in the Art to
`Combine Zhang and Bachmann ........................................... 25
`B. Challenge 2 –Liberty in view of Bachmann, Claims 10 and 12 ........ 27
`1. It Would Not be Obvious to One of Skill in the Art to
`Combine Liberty and Bachmann .......................................... 27
`VIII. CONCLUSION ........................................................................................... 27
`
`
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Cywee Group Ltd. v. Samsung Electronics Co, Ltd.,
`
`C.A. No. 2-17-cv-00140-wcb-rsp (E.D. Tex., June 7, 2018) ..................... 17
`
`Graham v. John Deere Co.,
`
`383 U.S. 1 (1966). ........................................................................................ 13
`
`In re Clay,
`
`966 F.2d 656 (Fed. Cir. 1992) ............................................................... 19, 20
`
`In re Dembiczak,
`
`175 F.3d 994 (Fed. Cir. 1999). .................................................................... 14
`
`In re Gurley,
`
`27 F.3d 551 (Fed. Cir. 1994) ....................................................................... 14
`
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007) ............................................................................... 13, 14
`
`Richardson-Vicks Inc. v. Upjohn Co.,
`
`122 F.3d 1476 (Fed. Cir. 1997) ................................................................... 13
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`
`721 F.2d 1540 (Fed. Cir. 1983) ................................................................... 13
`
`
`Statutes
`
`35 U.S.C. § 103 ...................................................................................................... 12
`
`35 U.S.C. § 325(d) ............................................................................................. 2, 14
`
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`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`LIST OF EXHIBITS
`
`Declaration of Dr. Gary L. Blank
`
`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)
`
`2001
`
`2002
`
`2003
`
`
`iv
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`I.
`
`SUMMARY
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`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`Petitioner has challenged the patentability of Claims 10 and 12 of the ‘978
`
`Patent based solely on obviousness grounds. Petitioner cannot meet its burden of
`
`showing that any of the claims are unpatentable over the asserted combination for
`
`at least the following reasons:
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`• Petitioner’s challenges rely on references that in combination do not teach or
`
`suggest all claim limitations. Namely, Petitioner’s asserted combination of
`
`Bachmann (Ex. 1004) and Zhang (Ex. 1005) does not disclose a 3D Pointing
`
`Device. The Bachmann device is not a “pointing device;” it is not used to point
`
`to anything at all. Bachmann merely measures movements of an articulated
`
`rigid object such as the human body. As such, Bachmann is not analogous art to
`
`the ‘978 Patent. See infra Part VI. The Zhang device cannot measure movement
`
`in three dimensions; it is a 2D pointing device. The ‘978 Patent is
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`fundamentally directed towards a 3D Pointing Device, and the failure of
`
`Petitioner’s asserted prior art references to disclose this critical feature is fatal
`
`to its obviousness challenge. See infra Part VI-VII.
`
`• Petitioner’s challenge relies on references that could not be combined by one of
`
`ordinary skill in the art. Dr. Blank, a PHOSITA with extensive experience in
`
`the relevant art, has concluded that one of skill in the art would not be able to
`
`combine the references in a way that would achieve the necessary results of
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`Case IPR2018-01257
`Patent No. 8,552,978
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`tracking motion in three-dimensional space and mapping that motion onto a
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`two-dimensional display for the purposes of controlling a system connected to
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`the display. Id.
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`• Petitioner’s challenge relies on references that cannot establish a prima facie
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`case of obviousness because they teach away from combination with one
`
`another. As confirmed by Dr. Blank, one of skill in the art would not have been
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`motivated to combine Bachmann and Zhang because each reference teaches
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`away from combination with the other. Id.
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`• The Board should exercise its discretion under 35 U.S.C. § 325(d) to reject the
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`petition because Zhang and Liberty (Ex. 1006) were already considered in the
`
`prosecution of the ‘978 Patent. Liberty is expressly disparaged by the ‘978
`
`specification, and Zhang is cited in Liberty as prior art. Not surprisingly, the
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`USPTO has already found these references insufficient to defeat patentability of
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`the challenged claims. Further consideration by the Board would be needlessly
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`duplicative. There is no justification for such duplication.
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`For at least these reasons, the Board should deny the Petition.
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`II. BACKGROUND
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`U.S. Patent 8,552,978 (the “‘978 Patent”) (Ex. 1001) is a continuation-in-part of
`
`U.S. Patent Application 13/072,794, which is a continuation-in-part of U.S. Patent
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`Application 12/943,934 which issued as U.S. Patent 8,441,438. The ‘978 Patent
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`Case IPR2018-01257
`Patent No. 8,552,978
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`claims the benefit of U.S. Provisional Application 61/292,558 Filed on January 6,
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`2010.
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`The ‘978 Patent issued with 18 claims including independent claims 1 and 10.
`
`Of these claims, only independent claim 10 – from which claim 12 depends – are
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`subject to the Petition.
`
`The claims subject to the Petition are directed to a 3D pointing device and an
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`enhanced method for compensating the rotations and movements thereof. Ex.
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`1001, Abstract. As will be discussed infra in Part V(C), a 3D pointing device is “a
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`device capable of sensing movement and orientation in three dimensions to point
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`to or control actions on a display.” Declaration of Dr. Gary L. Blank, Ex. 2001,
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`¶63.
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`The pointing device utilizes a nine-axis sensor module that may consist of
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`sensors known in the art, including sensors for detecting axial acceleration (i.e.,
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`accelerometers) along three axes, sensors for detecting angular velocity of rotation
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`(i.e., gyroscopes) about the same three axes, and sensors for detecting magnetic
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`field (i.e., magnetometers) about the same three axes. Exhibit 1001, 4:15-32. The
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`invention then utilizes a novel enhanced comparison method to remove errors and
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`noise in the sensor readings that accumulate over time. Id. at 4:33-57.
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`The method of claim 10 of the ‘978 Patent takes readings of a first signal set
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`comprising the axial accelerations about the three axes from the accelerometer, a
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`second signal set comprising the magnetisms along the three axes, and the rotation
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`output from the gyroscope about the three axes, then compares the signal sets by
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`the claimed method to obtain the orientation and movements of the 3D pointing
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`device and map those movements onto the display frame of a screen. Id. at Claim
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`10, Fig. 11.
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`The ‘978 Patent describes the 3D pointing device to be a portable electronic
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`device such as a controller, presentation clicker, smartphone, or navigation
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`equipment. Id. at 22:34-40, Figs. 3 and 6. The display on which the pointing
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`device’s movements are mapped may be separate from the pointing device – such
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`Patent No. 8,552,978
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`as a television screen, monitor, or notebook computer – or may be attached to the
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`pointing device itself – such as a smartphone or mobile gaming system. Id. at
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`11:38-44, 13:2-4, Fig. 1, 2, 5, 6, and 9.
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`
`
`The ‘978 pointing device utilizes
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`three
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`types of motion sensors:
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`accelerometers, gyroscopes, and magnetometers. Accelerometers measure
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`accelerations. As an example, car airbags use accelerometers to trigger release
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`when a sudden deceleration is detected. Accelerometers can also measure forces
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`exerted by the acceleration due to gravity. Gyroscopes measure angular velocity or
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`rate of rotation about an axis. Magnetometers measure magnetism such as the
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`strength of a magnetic field along a particular direction. Each kind of sensor
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`suffers from inaccuracies. For example, gyroscopes are subject to a small, added
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`bias. Ex. 2001, ¶32. This bias is an offset from the true value that will accumulate
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`over time and eventually amass to a large drift error. Id. As another example,
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`magnetometers are subject to interference from magnetic fields generated from
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`natural and manmade sources (e.g., powered electronics). Id. Each sensor typically
`
`takes measurements along a single direction. In order to accurately measure motion
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`in a three dimensional reference frame, three sensors of a kind must be grouped
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`together and arranged orthogonally to one another. Id. A set of three sensors thus
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`aligned at right angles is typically referred to as a three-axis sensor. Id.
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`The ‘978 Patent discloses and claims technology for combining sensors in
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`order to compensate for the errors generated by the multiple sensors, as well as to
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`incorporate data from multiple sensors. Specifically, the ‘978 Patent discloses and
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`claims an improved nine-axis sensor module and application for measuring,
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`calculating, and mapping orientation (including tilting angles along the three
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`spatial axes) by using measurements from a three-axis accelerometer, a three-axis
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`gyroscope, and a three-axis magnetometer. Ex. 1001, at 4:15-32. The ‘978 Patent
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`further discloses and claims an enhanced comparison and compensation method
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`capable of eliminating the errors and noise that accumulate over time that are
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`associated with the signals generated by the combination of motion sensors. Id. at
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`4:33-57. This technology excels at accurately representing the orientation of a
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`portable pointing device in 3D space on a 2D display. It does this by mapping the
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`yaw, pitch, and roll angles relating to movement about the three spatial axes onto a
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`display reference frame, such as that of a 2D display screen. In sum, the ‘978
`
`Patent discloses and claims an improved system and method for capturing the
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`motion of a pointing device in 3D space while eliminating or correcting errors
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`based on movements and rotations of the device and mapping those movements
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`onto a display to provide more precise control of the display.
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`The orientation information returned by the claimed invention of the ‘978
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`Patent has many potential applications, particularly when applied to mobile cellular
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`devices. Ex. 2001, ¶34. These applications include such uses as navigation,
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`gaming, and augmented and virtual reality simulation. Navigation applications can
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`use orientation information from the mobile phone to determine the direction the
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`user is facing and then automatically re-orient the map to align with the cardinal
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`directions. Id. Many mobile games and other applications use the motion of the
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`phone to trigger input commands; for instance, rotating the mobile phone to
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`simulate turning a steering wheel. Id. Augmented and virtual reality simulation
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`applications rely on accurate determination of the device’s orientation to properly
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`render graphics and images at the correct location on the screen. Id.
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`III. REFERENCES RELIED ON BY PETITIONER
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`Case IPR2018-01257
`Patent No. 8,552,978
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`As a general matter, Petitioner’s references, when combined, do not show all
`
`the elements of the challenged claims. Furthermore, Petitioner, in describing the
`
`references asserted in the present IPR, has ignored sections of the disclosures that
`
`teach away from the subject matter of the challenged claims. These sections, once
`
`properly considered by a PHOSITA, would have made clear that a PHOSITA
`
`would have had no motivation to combine the references. The sections of Patent
`
`Owner’s Preliminary Response that follow immediately hereafter describe the
`
`defects in each reference.
`
`A. U.S. Patent No. 7,089,148 to Bachmann et al. (“Bachmann”)
`
`Even a cursory review reveals that Bachmann (Ex. 1004) is not directed
`
`toward the same kind of technology claimed by the ‘978 Patent. Bachmann is
`
`directed towards a method and apparatus for motion tracking of an articulated rigid
`
`body. Bachmann teaches a device that has multiple housings to be placed at
`
`different articulations of the body. To this end, Bachmann discloses using a “three-
`
`axis magnetometer,” a “three-axis accelerometer,” and a “three-axis gyroscope.”
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`Thus, Bachmann discloses a nine-axis sensor module. Exhibit 1004, 7:32-45.
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`Bachmann also discloses methods for minimizing error. Id.
`
`Bachmann is not directed towards a 3D pointing device. It is directed to a
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`system and method for tracking the motions of an articulated rigid body, namely a
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`human body. Id. at 13:32-41, 48-51, Fig. 4. The devices placed on the body are not
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`used to point to or control anything. The invention in Bachmann merely tracks
`
`movement without meaningfully mapping those movements onto a 2D display
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`frame.
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`Figure 4 of Bachmann depicts an implementation of the invention in which
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`three sensors are used to track the posture of the human body. Id. One sensor is
`
`attached to each limb segment to be tracked. The sensor information is output to a
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`processing unit that calculates the posture of the body. Id. at 14:2-5.
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`Bachmann discloses the possibility of outputting a signal to a display to
`
`enable a virtual representation of the articulated rigid body to be displayed. Id. at
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`14:20-29, Fig. 4. However, the display in Bachmann is not used to control anything
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`on the screen in the way the invention of the ‘978 Patent is used to point to and
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`select objects on the display screen.
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`B. U.S. Patent Application Pub. No 2004-0095317 to Zhang et al.
`
`(“Zhang”)
`
`Zhang (Ex. 1005) is directed to a method and apparatus of universal remote
`
`pointing control for a home entertainment system and computer. The invention in
`
`Zhang comprises a handheld pointing device, a display control unit, and a
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`command delivery unit. The direction of the pointing device is determined by
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`internal orientation sensors, signals regarding the pointing direction are transmitted
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`Patent No. 8,552,978
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`to the display control unit, and a cursor/pointer is drawn onto the screen to indicate
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`the pointer’s location. Exhibit 1005, Abstract.
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`Zhang discloses a pointing device with a dual-axis magnetic sensor and a
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`dual-axis accelerometer. The magnetic sensor detects the device’s yaw and the
`
`accelerometer detects the device’s pitch. Id. at [0025]-[0027]. Thus, Zhang
`
`discloses a four-axis sensor module that is incapable of detecting roll. Zhang
`
`acknowledges that adding additional sensors could provide the ability to detect the
`
`device’s roll, but does not disclose how to do so. Id. at [0025]. Zhang explicitly
`
`recognizes that each additional sensor brings additional noise and errors that must
`
`be accounted for in calculating the orientation of the device, which is not a simple
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`task, and acknowledges
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`that adding additional accelerometers would be
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`problematic. Id. at [0004].
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`Because Zhang cannot detect angular velocity for the roll of the device, it is
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`incapable of detecting full three-dimensional orientation. Thus, while Zhang does
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`disclose a pointing device, it does not qualify as a 3D pointing device. Ex. 2001,
`
`¶70.
`
`
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`Zhang discloses the possibility of replacing either its accelerometers or
`
`magnetometers with gyroscopes, which would also be capable of detecting the
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`pointing device’s heading, but Zhang does not teach that all three types of sensors
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`should be used together. Id. at [0006], Claim 2.
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`Patent No. 8,552,978
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`The invention in Zhang calculates the orientation of the device by comparing
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`its measured yaw and pitch to pre-set reference angles that were stored in the
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`display control unit during a calibration procedure. Id. at [0030], Fig. 6a and 6b.
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`Zhang does not disclose specific methods or formulae for comparing signals from
`
`the sensor module.
`
`C. U.S. Patent 7,158,118 to Liberty (“Liberty”)
`
`Liberty (Ex. 1006) is directed to a 3D pointing device with orientation
`
`compensation that utilizes a five-axis sensor module utilizing two rotation sensors
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`(each detecting rotation about a single axis) and a three-axis accelerometer. Ex.
`
`1006, 4:48-5:12; 8:56-9-2. Liberty’s five-axis sensor module allowed for detection
`
`of roll about the X-axis, meaning the pointing device can detect its orientation in
`
`three-dimensional space.
`
`However, the five-axis sensor module of Liberty has notable shortcomings.
`
`It cannot detect or compensate for roll directly or accurately because the roll value
`
`must be derived from the gravitational acceleration detected by the accelerometer.
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`Ex. 1001, at 3:9-13. As a result of using a derivative function to obtain orientation,
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`the noise generated by the sensor will be amplified leading to greater error. Ex.
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`2001, ¶74.
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`The five-axis sensor of Liberty can only accurately detect acceleration when
`
`the device is static. Id. at 3:13-19. As such, the mapping of Liberty’s spatial angles
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`Patent No. 8,552,978
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`onto a 2D reference frame will be greatly affected and erred. Id. at 2:50-3:9. Thus,
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`there was a need for a 3D pointing device that could accurately map all of its
`
`spatial angles onto a 2D reference frame. The ‘978 Patent solved the problem of
`
`Liberty by a device and method capable of doing so.
`
`IV. CHALLENGES
`
`Petitioner presents no argument that any challenged claims are anticipated
`
`by the prior art. Rather, Petitioner challenges Claims 10 and 12 of the ‘978 Patent
`
`on two combinations of references: Zhang in view of Bachmann; and Liberty in
`
`view of Bachmann. A claim may be invalid for obviousness only if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious, at the time the invention was made, to
`
`one of ordinary skill in the relevant art. 35 U.S.C. § 103.
`
`Obviousness is a question of law based on underlying issues of fact.
`
`Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997).
`
`Obviousness is determined based on four factual inquiries: (1) the scope and
`
`content of the prior art; (2) the differences between the claimed invention and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) any secondary
`
`considerations of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 12-18
`
`(1966). References must be considered in their entirety, including portions of a
`
`reference that suggests non-obviousness. W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
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`721 F.2d 1540, 1550 (Fed. Cir. 1983). It is impermissible to pick and choose from
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`Case IPR2018-01257
`Patent No. 8,552,978
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`any one reference only the portions of the disclosure that may indicate obviousness
`
`while excluding portions necessary for a PHOSITA to fully appreciate what the
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`reference suggests.
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`In order to prevent hindsight bias – that an invention involving a
`
`combination of known elements seems obvious to a modern observer – the law
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`requires a “teaching, suggestion, or motivation” to combine the asserted references.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The motivation to
`
`combine the references may arise from the references themselves, from the
`
`knowledge of a PHOSITA, and/or from the nature of the problem to be solved. Id.
`
`Where the art is relatively simple, the risk of hindsight judgment is high, and
`
`consequently, the tests of whether to combine the references must be rigorously
`
`applied. In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
`
`The Supreme Court has recognized rationales for combining or modifying
`
`references to show obviousness of the claimed subject matter. Some of these
`
`rationales include: combining prior art elements according to known methods to
`
`yield predictable results; simply substituting one known element for another to
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`obtain predictable results; using a known technique to improve a similar device,
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`method, or product in the same way; and choosing from a finite number of
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`identified, predictable solutions with a reasonable expectation of success. KSR,
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`Case IPR2018-01257
`Patent No. 8,552,978
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`550 U.S. at 415-422.
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`Where the prior art indicates that a particular advancement in the art would
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`be impossible, unlikely, ill advised, or contrary to an explicit disclosure of the
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`reference, the prior art teaches away from that advancement. In re Gurley, 27 F.3d
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`551, 553 (Fed. Cir. 1994). References that teach away from their combination
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`cannot establish a prima facie case of obviousness. Id.
`
`The Board has discretion to reject a petition that presents the same or
`
`substantially the same prior art or arguments that were previously presented to the
`
`office during prosecution of the patent at issue. 35 U.S.C. § 325(d). Such is the
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`case here. Specifically, U.S. Patent 7,158,118 to Liberty (“Liberty”) is disparaged
`
`in the specification of the ‘978 Patent. Ex. 1001, 2:38-4:2. Liberty and several
`
`other related patents were already considered in the prosecution of the ‘978 Patent,
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`Ex. 1009, at 83-84 (‘978 File History, Information Disclosure Statement by
`
`Applicant), and rejected as prior art that renders obvious the inventions of the ‘978
`
`Patent.
`
`Furthermore, Liberty cites Petitioner’s asserted reference Zhang as prior art.
`
`Liberty discloses a 3D pointing device with orientation compensation that utilizes a
`
`five-axis sensor module. Liberty improved upon Zhang by adding an additional
`
`motion sensor that allowed for detection of roll about the X-axis, meaning the
`
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`Case IPR2018-01257
`Patent No. 8,552,978
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`pointing device can detect full orientation in three-dimensional space. However,
`
`the five-axis sensor module of Liberty has shortcomings. It cannot detect or
`
`compensate for roll directly or accurately because the roll value must be derived
`
`from the gravitational acceleration detected by the accelerometer. Id. at 3:10-13.
`
`The five-axis sensor of Liberty can only accurately detect roll when the device is
`
`static. Id. at 3:13-19. As such, the mapping of Liberty’s spatial angles onto a 2D
`
`reference frame will be greatly affected and erred. Id. at 2:66-3:9. Thus, there was
`
`a need for a 3D pointing device that could accurately map all of its spatial angles
`
`onto a 2D reference frame. The ‘978 Patent solved the problem of Liberty by
`
`inventing a way of compensating for the readings of an additional motion sensor.
`
`The nine-axis sensor module of the ‘978 Patent can accurately calculate roll
`
`without deriving the value from gravitational acceleration, and therefore can
`
`accurately map every value of its orientation onto a 2D reference frame.
`
`Liberty was considered by the USPTO to be a patentable improvement over
`
`Zhang for adding a single sensor axis, which as described above involves the
`
`difficult task of compensating for the additional noise and errors. The ‘978
`
`Patent’s addition of yet another sensor axis for more accurate orientation detection
`
`and further improved noise and error reduction is a patentable improvement over
`
`Liberty and Zhang, Ex. 2001, ¶77. a point that has already been considered by the
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`USPTO during prosecution. There is no justification for requiring the Board to
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`Case IPR2018-01257
`Patent No. 8,552,978
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`revisit those efforts here, and the Board should therefore exercise its discretion and
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`reject the Petition which relies entirely on these already-considered arguments.
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`V. CLAIM CONSTRUCTION
`
`Exhibit 1002, Declaration of Prof. Majid Sarrafzadeh, ¶¶ 35-52 discusses
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`claim construction from the Petitioner’s perspective. Paragraph 35-36 states that
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`during an inter partes review proceeding, generally, the broadest reasonable
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`interpretation applies. Petitioner’s expert then proceeds to offer claim construction
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`for the claim terms “spatial pointer reference frame” and “rotation output.” Exhibit
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`1002, ¶¶ 47, 52. Patent Owner does not believe special construction for these terms
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`is necessary. However, other claim terms may require construction, namely the
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`term “3D pointing device.”
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`
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`The Petition asserts that “rotation output” should be interpreted to mean the
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`“output of a rotation sensor.” Petition at 18. The Petition also asserts that “spatial
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`reference frame” should be interpreted to mean “a reference frame associated with
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`the 3D pointing device, which always has its origin at the same point in the device
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`and in which the axes are always fixed with respect to the device.” Petition at 17-
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`18.
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`
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`Petitioner’s constructions are based and rely on a joint claim construction
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`and prehearing statement submitted to the U.S. District Court for the Eastern
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`District of Texas. The claims at issue have since been subject to a claim
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`17
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`

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`construction order in that case (the “claim construction order”). Cywee Group Ltd.
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`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`v. Samsung Electronics Co, Ltd., C.A. No. 2-17-cv-00140-wcb-rsp (E.D. Tex.,
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`June 7, 2018). Patent Owner’s proposed claim constructions are consistent with
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`that order, which has been included as Ex. 2003. Patent Owner’s proposed
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`constructions are being offered for purposes of this Preliminary Response only.
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`A.
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`“Rotation Output”
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`Petitioner defines “rotation output” as the “output of a rotation sensor.”
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`Petition at 18. Patent Owner does not believe any special construction of this term
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`is necessary.
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`B.
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`“Spatial Reference Frame”
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`Petitioner defines “spatial reference frame” as “a reference frame associated
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`with the 3D pointing device, which always has its origin at the same point in the
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`device and in which the axes are always fixed with respect to the device.” Petition
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`at 17-18. The claim construction order likewise defines the “spatial reference
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`frame” as a “frame of reference associated with the 3D pointing device, which
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`always has its origin at the same point in the device and in which the axes are
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`always fixed with respect to the device.” Ex. 2003, at 6. This is essentially the
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`plain and ordinary meaning; Patent Owner therefore believes that no construction
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`of this term is necessary.
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`
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`18
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`C.
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`“3D Pointing Device”
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Patent Owner believes that the phrase “3D Pointing Device” may be
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`afforded its plain and ordinary meaning and does not require construction.
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`However, Petitioner’s positions suggest that clarification may be necessary.
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`“[E]ach of the phrase’s constituent parts has a widely understood ordinary meaning
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`consistent with their usage in the patent.” Ex. 2003, at 8. In order to give the
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`meaning to the term “pointing device” as used in the phrase, the device must be
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`able to point to or control something on a display. Ex. 2001, ¶61. A PHOSITA
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`would understand that a “pointing device” is used to “perform control actions and
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`movements... for certain purposes including entertainment such as playing a video
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`game, on the display device through the [] pointer on the screen.” Id.; Ex. 1001,
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`1:52-55. In order to give meaning to the term “3D” in the phrase, the device must
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`be capable of detecting motion in all three spatial dimensions. The plain language
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`of claim 10 supports this construction:
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`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;
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`Ex. 1001, 36:64-67 (emphasis added). Claim 10 clearly indicates that the 3D
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`pointing device must be capable of sensing orientation in the three dimensions of
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`the global reference frame – the X, Y, and Z axes.
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`19
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Giving plain and ordinary meaning to each term, this phrase should be
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`construed to mean “a device capable of sensing movement and orientation in three
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`dimensions to point to or control actions on a display.” Ex. 2001, ¶63.
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`VI. BACHMANN IS NOT ANALOGOUS ART
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`As discussed above, Bachmann is not directed to a 3D pointing device, and
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`as such it would not be considered prior art from a relevant, analogous field. Under
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`§ 103, a reference asserted against a patent must not be “too remote to be treated as
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`prior art.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). In other words, asserted
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`references must be of the same type of art or of an analogous art. Id. There are two
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`criteria to determine whether prior art is analogous: (1) whether the art is from the
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`same field of endeavor; and (2) if the reference is not within the inventor’s field of
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`endeavor, whether the reference is still reasonably pertinent to the particular
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`problem that the inventor is trying to solve. Id. at 658-59.
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`The specific field of endeavor of the ‘978 Patent is “3D Pointing Devices.”
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`Ex. 2001, ¶78. This is clear from the title of the invention, the disclosure
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`specification, and the language of the claims – which repeatedly use the term “3D
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`pointing device.” Id. As discussed above, Bachmann’s field of endeavor is “motion
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`tracking of articulated bodies.” Id. The Federal Circuit has cautioned against
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`defining a field of endeavor too broadly. See, e.g., In re Clay, 966 F.2d at 659
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`(asserted art was not considered to be in the same “field of endeavor merely
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`
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`20
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`Case IPR2018-01257
`Patent No. 8,552,978
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`because both relate to the petroleum industry”). However, even if the field of
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`endeavor of the ‘978 Patent is broadly defined as “controlled systems,” Ex. 2001,
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`¶14, Bachmann cannot be said to fall within this field because its disclosed device
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`is not used to control anything. Bachmann therefore does not and cannot satisfy the
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`first criterion to qualify as analogous art.
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`Bachmann also fails to satisfy the second criterion to qualify as analogous
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`art. In order for a reference to be considered “reasonably pertinent to the particular
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`problem,” it must “logically [] have commended itself to an inventor’s invention in
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`considering his problem.” In re Clay, 966 F.2d at 659. The ‘978 Patent addresses
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`the problem of more accurately detecting and mapping the movement and rotation
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`