UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`QUALCOMM INC.,
`Patent Owner
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`Case No. IPR2018-01275
`Patent No. 9,203,940
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`QUALCOMM INC.,
`Patent Owner
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`Case No. IPR2018-01275
`Patent No. 9,203,940
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case No. IPR2018-01275
`Attorney Docket No: 39521-0049IP2
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`TABLE OF CONTENTS
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`I.
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`Introduction ...................................................................................................... 1
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`II.
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`Claim Construction .......................................................................................... 2
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`A. Patent Owner’s construction of “pressing the power button” improperly
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`rewrites the language of the independent claims to avoid the cited prior art ........ 2
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`III.
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`Patent Owner fails to rebut any of the instituted grounds of unpatentability .. 7
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`A. Ground 2-A – The Petition demonstrates that claims 1-4, 6, 8-9, 12-15, 17,
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`and 19-20 are rendered obvious by the combination of Maloney, Beghtol, and
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`Ishihara ................................................................................................................... 9
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`B. Ground 2-B – The Petition demonstrates that claims 7 and 18 are rendered
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`obvious by the combination of Maloney, Beghtol, Ishihara, and Vertaschitsch .....
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` ..................................................................................................................... 20
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`C. Ground 2-C – The Petition demonstrates that claims 10, 11, 21, and 22 are
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`rendered obvious by the combination of Maloney, Beghtol, Ishihara, and Little ...
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` ..................................................................................................................... 21
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`IV. Conclusion ..................................................................................................... 22
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`EXHIBITS
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`APPLE-1001
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`U.S. Patent No. 9,203,940 to Hawkins, et al. (“the ’940
`patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’940 Patent
`(“the Prosecution History”)
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`APPLE-1003
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`Reserved
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`APPLE-1004
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`Curriculum Vitae of Dr. Brad Myers
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`APPLE-1005
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`Reserved
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`APPLE-1006
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`Reserved
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`APPLE-1007
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`U.S. Pub. No. 2006/0095849 to Vertaschitsch et al.
`(“Vertaschitsch”)
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`APPLE-1008 to
`APPLE-1011
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`Reserved
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`APPLE-1012
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`U.S. Patent No. 5,642,413 to Little (“Little”)
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`APPLE-1013 to
`APPLE-1016
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`Reserved
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`APPLE-1017
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`U.S. Patent No. 6,453,169 to Maloney (“Maloney”)
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`APPLE-1018
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`U.S. Patent No. 6,426,736 to Ishihara (“Ishihara”)
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`APPLE-1019
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`Reserved
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`APPLE-1020
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`U.S. Patent No. 6,253,075 to Beghtol et al. (“Beghtol”)
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`APPLE-1021
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`Declaration of Dr. Brad Myers
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`APPLE-1022
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`Declaration of Sara Fish
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`ii
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`APPLE-1023
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`U.S. Patent No. 6,727,830 to Lui et al. (“Lui”)
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`APPLE-1024
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`Second Declaration of Dr. Brad Myers
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`APPLE-1025
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`Deposition Transcript of Patent Owner’s Expert Dr. Jeffay
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`I.
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`INTRODUCTION
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`The arguments in the Patent Owner Response (“POR”) fail when
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`longstanding legal principles are properly applied to the factual record developed
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`in this proceeding. The Board should reject the arguments in the POR as they are
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`inconsistent with, mischaracterize, and, at times, ignore the teachings of the cited
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`art, the arguments presented in the Petition, and the evidence of record. In
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`addition, the overly-narrow and self-serving claim construction presented by Patent
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`Owner (“Qualcomm”) for the term “pressing” is inconsistent with the specification
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`of the ’940 patent, and does not represent the broadest reasonable interpretation
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`(BRI) of this claim term.
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`In its Institution Decision, the Board found that Petitioner (“Apple”)
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`established a reasonable likelihood that claims 1-4, 6-15, and 17-22 (“the
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`Challenged Claims”) of U.S. Patent No. 9,203,940 (“the ’940 patent”) are
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`unpatentable for the reasons advanced in the Petition. As explained herein, the
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`arguments presented in the POR fail to rebut the positions advanced in the Petition.
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`Accordingly, the Board should echo the reasoning and holding from its Institution
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`Decision in its Final Written Decision, and find the Challenged Claims
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`unpatentable.
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`II. CLAIM CONSTRUCTION
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`A.
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`Patent Owner’s construction of “pressing the power button”
`improperly rewrites the language of the independent claims to
`avoid the cited prior art
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`Patent Owner argues that the claim language “pressing the power button,”
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`which is recited in several of the challenged claims, means “‘tapping’ or ‘pressing
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`and immediately releasing’ the power button.” Response, 7. This construction is
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`not supported by the disclosure of the ’940 patent, and is merely an attempt by
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`Patent Owner to improperly import limitations from the specification in order to
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`avoid the art cited in the Petition. See Williamson v. Citrix Online, LLC, 792 F. 3d
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`1339, 1345 (Fed. Cir. 2015). Petitioner asserts that a POSITA would understand
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`the broadest reasonable interpretation of the term “pressing the power button” to be
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`broad enough to include both “pressing and immediately releasing” the power
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`button and “pressing and holding” the power button, which is consistent with the
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`disclosure of the ’940 patent. APPLE-1024, [35]; see, e.g., APPLE-1001, 3:13-26.
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`1.
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`Patent Owner’s construction is inconsistent with the ’940
`patent’s specification
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`The ’940 patent describes examples of functionality activated by a “single
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`press and release” of the power button, by “pressing and holding” the power
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`button, and by a “single press” of the power button. APPLE-1001, 3:16-26
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`(emphasis added). These passages indicate that ’940 patent does not use the term
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`“pressing” to describe only a “pressing and immediately releasing” action as Patent
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`Owner argues. See id; Response, 22 (“[p]ressing” the power button
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`means…“pressing and immediately releasing” the power button).1 Instead, the
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`’940 patent explicitly describes an action as a “press and release” if a release
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`follows the initial press, as a “press and hold” if a hold follows the initial press, or
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`as simply a “press” if no action or an indeterminate action follows the initial press.
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`See id.; APPLE-1024, [36]. During his deposition, Patent Owner’s expert agreed
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`that a “press and release” involves a “press” followed by a “release,” and that a
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`“press and hold” involves a “press” followed by a “hold.” See APPLE-1025,
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`23:11-16 (Q: “So the release has to be after the press. Correct?” Dr. Jeffay: “Yes.”
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`Q: “In a press and hold, is the hold after the press?” Dr. Jeffay: “Yes.”).
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`Further, Patent Owner’s construction of “pressing” as “pressing and
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`immediately releasing” would make portions of the disclosure of the ’940 patent
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`disclosure nonsensical. Response, 22. For example, under Patent Owner’s
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`construction, the ’940 patent’s description of a “single press and release” of the
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`power button would describe pressing and immediately releasing the power button,
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`1 Patent Owner mischaracterizes Dr. Myers’ deposition testimony to attempt
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`to support this interpretation. In fact, Dr. Myers’ never testified that a “single
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`press” of the power button is equivalent to a “single press and immediate release”
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`as Patent Owner appears to imply. See POR, 8 (citing EX-2005, 44:9-11).
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`followed by releasing the power button again. See id., 3:16-17. Patent Owner
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`does not explain how such a second “release” of the power button immediately
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`following the first release would be possible, since the power button must first be
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`pressed in order to be released. See id. In addition, the ’940 patent’s description of
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`“pressing and holding the power button” would not make sense under Patent
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`Owner’s construction of “pressing” as “pressing and immediately releasing.” Id.,
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`3:18-19. This passage would be transformed into “pressing and immediately
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`releasing and holding the power button,” which is nonsensical because it is
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`impossible to “hold” a press of a button that has already been released. See id.;
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`APPLE-1024, [38].
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`Thus, it is clear from the ’940 patent’s usage of the terms “press and release”
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`and “press and hold,” as well as from the inclusion of the word “press” in both
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`terms, that the ’940 patent contemplates the term “press” to encompass both a
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`“press and release” and a “press and hold.” See APPLE-1001, 3:16-26; APPLE-
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`1024, [38-39].
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`2.
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`Patent Owner’s construction is inconsistent with the claims of
`the ’940 patent
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`The structure of the ’940 patent claims themselves also supports this
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`interpretation. The preambles of all claims of the ’940 patent include the
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`transitional phrase “comprising.” See, e.g., APPLE-1001, claim 1 (“A method ...
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`comprising:”), claim 12 (“A mobile computing device, comprising:”). It is well-
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`settled that “comprising” claims are open-ended. See, e.g., Mars Inc. v. H.J. Heinz
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`Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004) (“[T]he term ‘comprising’” is “open-
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`ended.”); Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368
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`(Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the
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`claim is open-ended and allows for additional steps.”). Thus, by definition, the
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`limitation of “pressing the power button” in the claims of the ’940 patent can be
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`met by disclosures that describe additional actions performed after the power
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`button is pressed, such as releasing or holding the power button.
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`3.
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`Patent Owner’s expert testimony supporting its proposed
`construction is conclusory and unsupported by evidence
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`Patent Owner’s proposed construction of “pressing the power button” also
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`relies on expert testimony regarding how a POSITA would interpret this term. See
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`Ex-2002, [72]. But neither Patent Owner nor its expert cite any evidence
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`supporting that a POSITA would understand “pressing” to mean “pressing and
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`immediately releasing.” See id. During his deposition, Patent Owner’s expert
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`stated that this opinion regarding a POSITA’s understanding of the term was
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`“informed by the plain and ordinary meaning of the word ‘press.’” APPLE-1025,
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`31:9-15. But the expert could not explain what this plain and ordinary meaning
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`entailed, and admitted that he did not cite any evidence in his declaration
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`supporting this meaning. Id., 31:16-25, 32:13-17.
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`In fact, the only evidence presented by Patent Owner regarding the meaning
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`of “press” (other than citations to the ’940 patent itself) is a quote from the ’940
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`provisional application stating that a “normal single press” includes a “release after
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`being held for less than one second.” See POR, 7-8 (citing Ex-2004, 6). Holding
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`the button for one second before releasing does not conform with Patent Owner’s
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`proposed construction of “pressing” as including an “immediate release.” See Ex-
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`2004, 6; APPLE-1024, [38].
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`4.
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`Patent Owner’s proposed construction is improper
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`The Federal Circuit has repeatedly held that claims must “not be read
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`restrictively unless the patentee has demonstrated a clear intention to limit the
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`claim scope using words or expressions of manifest exclusion or restriction.”
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`Williamson, 792 F.3d at 1348 (quoting Innova/Pure Water v. Safari Water
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`Filtration Sys., 381 F.3d 1111, 1117 (Fed. Cir. 2004)). Patent Owner has not
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`identified, and the ’940 patent does not contain, any language that demonstrates “a
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`clear intention to limit” the terms “pressing the power button” to mean “pressing
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`and immediately releasing the power button.” See Williamson, 792 F.3d at 1348.
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`Instead, Patent Owner’s construction merely attempts to improperly import
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`limitations from the ’940 patent into the claims, a practice the Federal Circuit has
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`repeatedly cautioned against. See Williamson, 792 F.3d at 1347 (quoting Laitram
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`Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (“[I]t is the claims, not
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`the written description, which define the scope of the patent right,” and a “court
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`may not import limitations from the written description into the claims.”). Thus,
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`Patent Owner’s construction of “pressing the power button” is improper, and the
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`term should be interpreted to include both “pressing and releasing” the power
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`button and “pressing and holding” the power button, which is consistent with its
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`broadest reasonable interpretation in light of the disclosure of the ’940 patent. See
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`APPLE-1001, 3:16-26; APPLE-1024, [36-39].
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`III. PATENT OWNER FAILS TO REBUT ANY OF THE INSTITUTED
`GROUNDS OF UNPATENTABILITY
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`As shown in the Petition, the Challenged Claims are rendered obvious by the
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`combination of Maloney, Beghtol, and Ishihara. See Petition, 7-34. The
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`Institution Decision found that the Petition had shown a reasonable likelihood of
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`prevailing with respect to these claims. See Decision, 16-17.
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`In its POR, Patent Owner repeatedly mischaracterizes or improperly
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`dismisses arguments presented in the original Petition. Patent Owner addresses
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`several “strawman” representations of Petitioner’s arguments in the POR, and in
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`doing so repeatedly fails to address the actual arguments presented by the Petition
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`related to the combination.
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`Patent Owner also addresses the references in the combinations individually,
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`concluding that if a claim limitation is not fully taught individually by any of the
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`references in the combination, it is therefore not taught by the combination. It is
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`well-settled that such an approach is impermissible. Bradium Tech. v. Iancu, Case
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`Nos. 2017-2579, 2017-2580 (Fed. Cir. 2019) (“A finding of obviousness, however,
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`cannot be overcome by attacking references individually where the rejection is
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`based upon the teachings of a combination of references.”) (quoting In re Merck,
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`800 F.2d 1091, 1097 (Fed. Cir. 1986)).
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`In addition, Patent Owner argues that the combinations are based on
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`“hindsight” throughout its Response, but fails to provide evidence to support these
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`allegations. Patent Owner appears to use this argument against any combination
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`analysis presented in the Petition, despite the lengthy, non-hindsight-based
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`combination analysis included in the Petition for each combination. See, e.g.,
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`Petition, 11-12 (“Reasons to combine Maloney, Beghtol, and Ishihara”), 35-36
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`(“Reasons to combine Maloney, Beghtol, Ishihara, and Vertaschitsch”), 38-39
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`(“Reasons to combine Maloney, Beghtol, Ishihara, and Little”).
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`As shown below, the POR fails to rebut any of the arguments presented in
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`the Petition. Thus, the Board should maintain its position from the Institution
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`Decision, and find the Challenged Claims unpatentable.
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`A. Ground 2-A – The Petition demonstrates that claims 1-4, 6, 8-9,
`12-15, 17, and 19-20 are rendered obvious by the combination of
`Maloney, Beghtol, and Ishihara
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`1.
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`Claims 1 and 12 – The Petition demonstrates that the
`combination of Maloney, Beghtol, and Ishihara teaches
`“enabling a user to silence a ring associated with the telephone
`call by pressing the power button”
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`Patent Owner presents multiple arguments alleging that the combination of
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`Maloney, Beghtol, and Ishihara does not teach this claim limitation. Each of these
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`arguments fail, as explained in the sections below.
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`a)
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`Patent Owner’s arguments with respect to Maloney’s
`disclosure of this feature are based on its incorrect
`construction of “pressing the power button”
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`Patent Owner alleges that Maloney does not teach “enabling a user to ...
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`silence a ring associated with a telephone call, by pressing and immediately
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`releasing the power button, before a threshold duration elapses.” Response, 18
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`(emphasis added). Patent Owner’s entire argument with respect to Maloney’s
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`disclosure relies on its proposed claim construction of “pressing the power button”
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`to mean “pressing and immediately release the power button.” See Response, 17-
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`23. As described above, Patent Owner’s proposed claim construction is
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`inconsistent with both the ’940 patent’s disclosure and the plain language of the
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`claims. See Section II.A, supra. When this claim language is correctly interpreted
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`to simply mean what it says (as it was in the Petition) rather than being improperly
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`narrowed (as proposed by Patent Owner in its Response), the combination of
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`Maloney, Beghtol, and Ishihara teaches “enabling a user to silence a ring
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`associated with the telephone call by pressing the power button,” as previously
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`explained in the Petition and found sufficient for institution by Board. See
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`Petition, 18-19; Decision, 11.
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`b)
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`The Petition demonstrates that a POSITA would have
`been motivated to combine Maloney, Beghtol, and
`Ishihara in the manner proposed
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`Patent Owner argues that the Petition “merely asserts that a combination of
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`Maloney with Beghtol (and Ishihara) would include Maloney’s call silencing
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`functionality along with Beghtol’s caller identification information,” and alleges,
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`without evidence or explanation, that the Petition relies on “impermissible
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`hindsight” to justify the combination. See Response, 24 (citing Petition, 17-18).
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`This argument ignores and fails to address the Petition’s nearly three page
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`explanation of how a POSITA would have combined Maloney, Beghtol, and
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`Ishihara (in a section titled “The combination of Maloney, Beghtol, and Ishihara”),
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`and why a POSITA would have been motivated to perform the combination (in a
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`section titled “Reasons to combine Maloney, Beghtol, and Ishihara”). See Petition,
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`10-12. The Board preliminarily agreed with this analysis in the Institution
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`Decision, stating that, for the purposes of institution, the Petition “adequately
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`established a motivation to combine” Maloney, Beghtol, and Ishihara. Decision,
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`16.
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`c)
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`Beghtol does not “teach away” from the proposed
`combination
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`As it did in its Preliminary Response, Patent Owner again argues that
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`Beghtol teaches away from a combination with Maloney because “Beghtol states
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`that when receiving a call, merely silencing the ring has negative consequences.”
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`Response, 50. The Board found this argument unpersuasive in the Institution
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`Decision, correctly noting that Petitioner relies on Maloney, not Beghtol, to
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`address the “silencing the ring” limitation. See Decision, 14. The Board correctly
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`found “no reason why adoption of Beghtol’s Caller ID would require one to also
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`adopt its teachings about silencing rings.” See id. Patent Owner does not explain
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`how the statements in Beghtol that “silencing the ring is insufficient and
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`undesirable” are in any way related to Beghtol’s teaching of displaying a Caller ID.
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`It also fails to explain how these statements would discourage a POSITA from
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`incorporating the Caller ID functionality of Beghtol into Maloney as proposed in
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`the Petition.
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`Patent Owner further argues that “Beghtol’s teaching toward call rejection,
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`and disparagement of merely silencing a ringer, would lead a POSITA in a
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`direction divergent from the claims[.]” Response, 51. This argument proposes that
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`Beghtol’s statements regarding call silencing somehow negate the “call silencing”
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`feature described in Maloney. See id. This is simply not how teaching away
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`works. In fact, allowing a teaching in one reference to negate a teaching in another
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`runs counter to the proposition, repeatedly emphasized by Patent Owner, that a
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`reference “must be considered for all it [teaches].” See Polaris Indus., Inc. v.
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`Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018); W.L. Gore & Assoc., Inc. v.
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`Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).
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`Patent Owner also argues that “merely silencing a call requires continued
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`processing of the connection and the call” and “wastes battery.” Response, 52.
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`Again, this argument attempts to negate Maloney’s teaching of “call silencing,”
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`and has no bearing on the Caller ID feature from Beghtol that is incorporated in the
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`proposed combination.
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`Thus, as the Board correctly found in the Institution Decision, Beghtol does
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`not teach away from the proposed combination of Maloney, Beghtol, and Ishihara.
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`See Decision, 14.
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`d)
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`The proposed combination involves modifying Maloney
`based on Beghtol, not vice versa
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`Patent Owner argues that “a POSITA looking at Maloney and Beghtol
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`would not combine them at least because Beghtol by itself accomplishes each of
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`the alleged reasons to combine.” Response, 54 (emphasis added). Patent Owner
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`thus concludes that “Beghtol does not need to be improved or combined with
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`Maloney.” Id. (emphasis added). Ground 2-A in the Petition is clearly stated as
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`“Maloney in view of Beghtol and Ishihara,” indicating that Maloney is being
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`modified based on Beghtol’s teachings, rather than Beghtol being modified based
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`on Maloney. Petition, 7 (emphasis added). The Petition’s description of the
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`combination makes this distinction clear. Id., 7 (“Maloney describes a
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`communication device” and “[i]n the combination, the communication device
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`incorporates the technique described in Beghtol”). Thus, Patent Owner’s argument
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`mischaracterizes the proposed combination, and is therefore unpersuasive.
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`Patent Owner further states that “a POSITA would view Beghtol as better
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`than, and not needing combination with, Maloney.” Response, 54-55. Again,
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`Patent Owner attempts to negate the disclosure of Maloney by inventing a kind of
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`subjective “beauty contest” where a POSITA would discard Maloney in favor
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`Beghtol. Id. Patent Owner cites no case law to support discarding references in
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`this manner, and, in fact, none exists. Accordingly, this argument is unpersuasive.
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`2.
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`Claims 1 and 12 – The Petition demonstrates that the
`combination of Maloney, Beghtol, and Ishihara teaches
`“enabling the user to activate a backlight of the display by
`pressing the power button”
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`a)
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`Ishihara’s disclosure of activating a touch sensor does
`not negate its disclosure of pressing the power button to
`activate the backlight
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`Patent Owner argues that the combination does not teach this limitation
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`because Ishihara allegedly requires a “touch sensor” to be activated before pressing
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`the power button of the device in order to active the backlight. See Response, 34
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`(alleging that “there is no logic path that allows the backlight to be lit in the
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`absence of the signal from the touch sensor”). But, as discussed above (see
`
`Section II.A, supra), the preambles of all claims of the ’940 patent use the
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`transitional phrase “comprising,” making them open-ended. See, e.g., APPLE-
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`1001, claim 1 (“A method ... comprising:”), claim 12 (“A mobile computing
`
`device, comprising:”); See Mars, 377 F.3d at 1376; Invitrogen, 327 F.3d at 1368.
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`Indeed, the Federal Circuit has specifically noted that the “transition ‘comprising’
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`in a method claim indicates that the claim is open-ended and allows for additional
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`steps.” Invitrogen, 327 F.3d at 1368 (emphasis added). Thus, if Ishihara teaches
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`“enabling the user to activate a backlight of the display by pressing the power
`
`button” (which it does), it teaches that limitation regardless of whether it teaches
`
`that another action, such as activating a touch sensor, precedes the pressing of the
`
`power button. See id.
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`b)
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`Ishihara teaches a device that does not include a touch
`sensor and enables the user to activate a backlight of the
`display by pressing the power button
`
`Patent Owner alleges that, in Ishihara, “there is no logic path that allows the
`
`backlight to be lit in the absence of the signal from the touch sensor.” Response,
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`34. This interpretation of the reference is incorrect. For example, Ishihara’s
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`“Description of the Prior Art” states that “[i]n a conventional portable telephone,
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`14
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`the backlight ... is lit up for a predetermined period of time only when the user
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`presses any key” (which includes the power button). APPLE-1018, 1:12-15
`
`(emphasis added). The Petition relies on this disclosure in Ishihara to address the
`
`“backlight” limitation of the claims. See Petition, 19-21 (citing and quoting
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`APPLE-1018, 1:12-15). The prior art device described by Ishihara in this section
`
`does not include a touch sensor, as indicated by the disclosure that, in order to
`
`activate the backlight, “the user must press any key, resulting in inconvenience.”
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`APPLE-1018, 1:18-19; APPLE-1024, [40]. In fact, Ishihara states that an object of
`
`adding the touch sensor is to allow the portable telephone to be “immediately
`
`operated even in a dark place to improve operability,” thereby avoiding the
`
`“inconvenience” of pressing the key. Id., 1:62-63. Thus, Patent Owner’s
`
`interpretation of Ishihara as including “no logic path that allows the backlight to be
`
`lit in the absence of the signal from the touch sensor” is incorrect based on
`
`Ishihara’s “Description of the Prior Art.” See APPLE-1018, 1:12-19 (cited at
`
`Petition, 19-21).
`
`c)
`
`Patent Owner’s arguments related to the “power button
`switch” of Ishihara are unpersuasive
`
`Patent Owner argues that Ishihara does not “disclose or suggest the claimed
`
`activation upon ‘pressing the power button’ because the ‘power button switch’ is
`
`not the same as the keys used for ‘key-in operation.’” Response, 35. This
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`15
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`Case No. IPR2018-01275
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`argument mischaracterizes Petitioner’s proposed combination of Maloney,
`
`Beghtol, and Ishihara. The Board found a similar argument in the Preliminary
`
`Response unpersuasive. Decision, 14. In addressing that argument in its
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`Institution Decision, the Board correctly summarized Petitioner’s proposed
`
`combination:
`
`Ishihara states that “the backlight is lit with any key-
`
`in operation on the operation unit 14,” where “operation
`
`unit 14” refers to the main keypad. Ex. 1018, 2:47–48; see
`
`id. 3:27–38, Fig. 2A. Maloney has a “power key.” We see
`
`no reason why Ishihara’s teaching of engaging the
`
`backlight with “any key-in operation” on its keypad would
`
`not be applicable to Maloney’s power key. That Ishihara
`
`uses a power “switch” appears to be beside the point
`
`because, as Maloney uses a “key” for power, the
`
`combination need only draw from Ishihara the concept of
`
`using a “key” for the backlight.
`
`
`
`Id. (emphasis added); see, e.g., Petition, 10-12, 21 (“Ishihara teaches illuminating
`
`the backlight in response to ‘when the user presses any key,’ which a POSITA
`
`16
`
`
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`would have understood to include the user pressing the power button of Maloney
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`(a key)”).2
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`Accordingly, Patent Owner’s argument does not address the combination of
`
`Maloney, Beghtol, and Ishihara as it is proposed by the Petition, and is therefore
`
`unpersuasive.
`
`d)
`
`The combination teaches backlight illumination
`dependent on whether a call is being received
`
`Patent Owner argues that “Petitioner provides no reasoning, other than
`
`impermissible hindsight, as to why a POSITA would have conditioned backlight
`
`illumination on whether a call is being received.” Response, 43. Again, as with its
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`many other allegations of the use of “hindsight,” Patent Owner provides no
`
`evidence of the Petition actually utilizing hindsight to justify the combination. See
`
`id. In fact, the Petition includes a lengthy explanation of why a POSITA would
`
`have conditioned backlight illumination on whether a call is being received. See,
`
`e.g., Petition, 19-21. The Petition states that:
`
`Maloney ... teaches, and the combination thus
`
`provides, that the function of silencing the ring is
`
`conditioned on whether a telephone call is presently being
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`2 The Decision further notes that it is “not clear that there is meaningful
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`difference between ‘key’ and ‘switch.’” Decision, 14 note 7.
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`17
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`received, and that if the communication device is not
`
`receiving a telephone call, the action of silencing the ring
`
`will not be taken (e.g., because the ring will not be
`
`occurring if no incoming call is received).
`
`
`
`Id., 19-20. The Petition further states that:
`
`
`
`[I]t would have been obvious to a POSITA to
`
`modify the method of Maloney to turn on the backlight in
`
`response to depression of the power button (a key press)
`
`when no incoming call has been received. As described
`
`above, Ishihara teaches illuminating the backlight in
`
`response to “when the user presses any key,” which a
`
`POSITA would have understood to include the user
`
`pressing the power button of Maloney (a key).
`
`
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`Id., 21. Patent Owner does not address these arguments, which the Institution
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`Decision credits as “adequately establish[ing] a motivation to combine” for the
`
`purposes of the Board’s preliminary decision. Decision, 16.
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`e)
`
`Ishihara does not teach away from the proposed
`combination
`
`The “inconvenience” noted by Ishihara related to “the user ... press[ing] any
`
`key” to activate the backlight does not teach away from the proposed combination
`
`with Maloney. See APPLE-1018, 1:18-19. As taught by Ishihara, “conventional
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`18
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`portable telephone[s]” at the time operated in this manner. See id., 1:12 (emphasis
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`added). Thus, any “inconvenience” resulting from “the user ... press[ing] any key”
`
`to activate the backlight was not sufficient to dissuade a POSITA from utilizing
`
`this approach, as indicated by Ishihara’s description of it as “conventional” (i.e.,
`
`widely used in the art). See id., 1:12-19. Therefore, Ishihara does not teach away
`
`from the proposed combination.
`
`3.
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`Dependent claims
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`a)
`
`Claims 4 and 15
`
`Patent Owner argues that “the claims recite the same input (‘pressing the
`
`power button’) as having ... three effects (‘to silence a ring associated with the
`
`telephone call,’ ‘to activate a backlight of the display,’ and ‘to power off the
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`mobile computing device’). Response, 58. Again, Patent Owner fails to address
`
`the Petition arguments with respect to these claims.
`
`As discussed above, the Petition argues that, in the combination, when a call
`
`is being received a long press of the power button will turn the phone on or off (as
`
`taught by Maloney), and a short press of the power key will silence the ringer (as
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`also taught by Maloney). See, e.g., Petition, 24-26. The Petition further argues
`
`that when a call is not being received a long press of the power button will turn the
`
`phone on or off (as taught by Maloney), and a short press of the power key will
`
`activate the backlight (as taught by Ishihara). See, e.g., id., 19-21, 24-26.
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`19
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`b)
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`Claims 6 and 17
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`Patent Owner argues that “claims 6 and 17 require the power button to have
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`four functions: silencing an incoming call, activating a backlight, powering on/off
`
`the device, and toggling the radio on and off.” Response, 57. Again, Patent
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`Owner fails to address the Petition arguments with respect to these claims. As
`
`stated in the Petition, “Maloney teaches that the power button can be used to toggle
`
`the device between the ‘on state,’ where the RF transceiver circuitry (the radio) is
`
`powered or ‘on,’ and the ‘off state,’ where the RF transceiver circuitry (the radio)
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`is not powered or ‘off.’” P
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