Trials@uspto.gov
`571-272-7822
`
`
`Paper 12
`Date: June 10, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HP INC., DELL TECHNOLOGIES INC., DELL INC.,
`ASUSTEK COMPUTER INC., and ASUS GLOBAL PTE. LTD.,
`Petitioner,
`v.
`LITL LLC,
`Patent Owner
`
`IPR2024-00404
`Patent 8,624,844 B2
`
`
`
`
`
`
`
`
`
`Before GARTH D. BAER, BRIAN D. RANGE, and DAVID COTTA,
`Administrative Patent Judges.
`BAER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
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`IPR2024-00404
`Patent 8,624,844 B2
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`
`I.
`
`INTRODUCTION
`
`A. Background
`HP Inc., Dell Technologies, Inc., Dell Inc., ASUSTeK Computer, Inc.
`and ASUS Global Pte. Ltd. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1, 3, 4, 7–10, 13, 14, 16–18, and 22 (the “challenged
`claims”) of U.S. Patent No. 8,624,844 B2 (Ex. 1001, “the ’844 patent”).
`Paper 6, 1 (“Pet.”). LiTL LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). With our authorization, Petitioner
`filed a Reply to Patent Owner’s Preliminary Response (Paper 10, “Pet.
`Reply”) and Patent Owner filed a Sur-reply (Paper 11, “PO Sur-reply”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition in view of the present record and for the reasons
`explained below, we determine that Petitioner has shown a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims.
`Accordingly, we institute an inter partes review on all grounds set forth in
`the Petition.
`
`B. Related Proceedings
`The parties identify four district court cases that involve the ’844
`patent: LiTL LLC v. HP Inc., No. 1:23-cv-00120-RGA (D. Del.); LiTL LLC
`v. Dell Technologies Inc. and Dell Inc., No. 1:23-cv-00121-RGA (D. Del.);
`LiTL LLC v. ASUSTeK Computer Inc., et al., No. 1:23-cv-00122-RGA (D.
`Del.); and LiTL LLC v. Lenovo (United States), Inc. et al., No. 1:20-cv-
`00689 (D. Del.). Pet. 70, Paper 8, 2. Patent Owner also identifies the
`following proceeding that challenged the ’844 patent: Reexamination Serial
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`Patent 8,624,844 B2
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`No. 90/014,965, filed February 25, 2022 (“’844 Reexam”). Id. at 1. The
`’844 patent was also the challenged patent in a previous inter partes review
`involving different prior art, Lenovo (United States) Inc. v. LiTL LLC, Case
`No. IPR2021-00822 (“IPR2021-00822”).
`
`C. The ’844 Patent (Ex. 1001)
`The ’844 patent is titled “Portable Computer with Multiple Display
`Configurations.” Ex. 1001, code (54). The computer system of the ’844
`patent describes different profiles to customize the graphical user interface
`in different modes, including a laptop mode in which the portable computer
`has a conventional laptop appearance, with the display inclined at a viewing
`angle from the base (id. at 6:26–28); an easel mode in which the base of the
`computer and its display stand upright forming an inverted “V,” and the
`display and keyboard are on opposite sides (id. at 7:48–61); and a frame
`mode in which the display and base are at a similar orientation and angle as
`in easel mode, but with the base lying flat on a surface and the keyboard
`facing down (id. at 16:3–13).
`Figure 17 of the ’844 patent, reproduced below, illustrates a portable
`computer in laptop mode. Id. at 5:13–15.
`
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`
`Figure 4 of the ’844 patent, reproduced below, illustrates the portable
`computer in easel mode. Id. at 4:47–48.
`
`
`Figure 26 of the ’844 patent, reproduced below, illustrates the portable
`computer configured into frame mode. Id. at 5:35–37.
`
`
`
`
`The ’844 patent explains that the display’s orientation can change
`based on the different modes or in response to a user’s input. Id. at 2:42–44.
`
`Challenged Claims
`A.
`Of the challenged claims, claims 1, 10, and 18 are independent.
`Claim 1 is exemplary of the claimed subject matter and reads as follows:
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`1. A portable computer configurable between a plurality of
`display modes including a laptop mode and an easel mode
`wherein transitions between the plurality of display modes
`allows an operator to interact with a single display screen in
`each of the plurality of display modes, the portable computer
`comprising:
`a base including a keyboard;
`a main display component rotatably coupled to the base such
`that the main display component and the base are rotatable with
`respect to one another about a longitudinal axis running along
`an interface between the main display component and the base
`to transition between at least the laptop mode and the easel
`mode, the main display component including the single display
`screen, wherein the transition between the laptop mode and the
`easel mode allows the operator to operate the portable computer
`while viewing the single display screen in each of the plurality
`of display modes, wherein
`the laptop mode is configured to display to a user on the main
`display component a first content mode having a first content
`display orientation with the main display component oriented
`towards the user and the keyboard oriented to receive input
`from the user;
`the easel mode is configured to display to the user on the main
`display component a second content mode having a second
`content display orientation with the main display component
`oriented towards the user and the keyboard oriented away from
`the user, wherein the first and second content display
`orientations are 180 degrees relative to each other, and wherein
`the portable computer is operable in the easel mode to enable
`the user to interact with displayed content without interacting
`with the keyboard; and
`a navigation control disposed at least partially within the base
`and rotatable about the longitudinal axis, the navigation control
`configured to permit a user to control at least one of operating
`parameters of the portable computer and content displayed on
`the single display screen wherein the plurality of modes
`includes a frame in which the main display component is
`oriented towards the operator, the base contacts a substantially
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`horizontal surface, and the keyboard faces the substantially
`horizontal surface.
`Ex. 1001, 17:9–51.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 2.
`
`Claim(s) Challenged
`1, 3, 4, 7–10, 13, 14, 16,
`18, 22
`1, 3, 4, 7–10, 13, 14, 16,
`18, 22
`
`17
`
`1, 3, 4, 7–10, 13, 14, 16,
`18, 22
`
`1, 3, 4, 7–10, 13, 14, 16,
`18, 22
`
`17
`
`35 U.S.C. §1
`
`References/Basis
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Lane2, Pogue3
`
`Lane, Pogue, Hotelling4
`
`Lane, Pogue, Segawa5
`
`Lane, Pogue, MIT6
`
`Lane, Pogue, MIT, Hotelling
`
`Lane, Pogue, MIT, Segawa
`
`Petitioner submits a declaration from Dr. Andrew Wolfe. Ex. 1002.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103.
`See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application
`that issued as the ’844 patent was filed before the effective date of the
`relevant amendments, the pre-AIA version of § 103 applies.
`2 Pub. No. WO 95/24007, Pub. Sept. 8, 1995 (Ex. 1006, “Lane”).
`3 Windows XP Home Edition: The Missing Manual (2d ed.) (David Pogue,
`Pogue Press, LLC & O’Reilly Media, Inc. 2004) (Ex. 1007, “Pogue”).
`4 U.S. 2006/0026535, Pub. Feb. 2, 2006 (Ex. 1020, “Hotelling”).
`5 U.S. 2006/0183512 A1, Pub. Aug. 17, 2006 (Ex. 1012, “Segawa”).
`6 Ricciuti, The $100 Laptop Moves Closer to Reality, C|Net, publ. Sept. 28,
`2005 (Ex. 1010, “MIT”).
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`
`II. DISCUSSION
`A. Discretion under 35 U.S.C. § 325(d)
`Patent Owner contends we should deny institution under 35 U.S.C.
`§ 325(d) “because ‘the same or substantially the same prior art or arguments
`previously were presented to the Office.’” Prelim. Resp. 9. Specifically,
`Patent Owner explains, the Office considered both Lane and Pogue during
`the ’844 Reexam and ultimately confirmed the patentability. See Prelim.
`Resp. 16–26. For the reasons given below, we are not persuaded to exercise
`our discretion to deny the Petition based on § 325(d).
`In evaluating arguments under § 325(d), we use a two-part
`framework: (1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office; and (2) if either
`condition of the first part of the framework is satisfied, whether the
`petitioner has demonstrated that the Office erred in a manner material to the
`patentability of challenged claims. Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
`Feb. 13, 2020) (precedential).
`Although Petitioner does not dispute that this case satisfies the first
`part of the Advanced Bionics framework, Petitioner asserts that we should
`not deny institution because it has demonstrated that the Office erred in
`allowing the claims. Pet. 68, Pet. Reply 2–5.
`We agree with Petitioner that it has shown under part two of the
`Advanced Bionics framework that the Office materially erred when it
`allowed the challenged claims. As Petitioner explains, during the ’844
`Reexam, “the examiner rejected the independent claims by mapping the
`‘first content mode’ and ‘second content mode’ limitations of claim 10 to [a
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`different reference’s] display of an application, such as a media player
`software, handwriting recognition software, and gaming software.” Pet. 68
`(citing Ex. 1005, 128–29). However, the Examiner withdrew the rejection
`and confirmed patentability after Patent Owner successfully argued that
`“‘displaying a content mode’ requires the display of a visual representation
`of a ‘higher level construct’ that is distinct from a group of applications or
`other content.” Pet. 69 (citing Ex. 1005, 94–100); see Ex. 1005, 6–7
`(Examiner noting the prior art’s failure to teach content-mode limitations).
`We agree with Petitioner that the Examiner erred because “the
`examiner should have recognized that these limitations read on the Windows
`XP desktop and folder icons as disclosed in Pogue.” Pet. Reply. 2. Patent
`Owner does not substantively challenge whether the content-mode
`limitations read on Pogue’s display of a desktop with the My Documents
`and My Pictures. See Prelim. Resp. 21–25, PO Sur-reply 3–5. Instead,
`Patent Owner merely asserts that “the Examiner was well-aware of Lenovo’s
`allegation that Pogue disclosed the claimed content modes,” but “did not
`believe that a rejection over Lane and Pogue was proper.” Prelim. Resp. 21–
`22; See Prelim. Sur-reply 3. Conspicuously absent in Patent Owner’s
`briefing is any explanation why a rejection over Lane and Pogue would have
`been improper. In these circumstances, we agree with Petitioner that the
`Examiner materially erred, either by failing to consider Pogue’s disclosures
`relative to the claimed content modes or by considering Pogue, but failing to
`recognize that it teaches the claimed content modes. For these reasons, we
`decline to exercise our discretion to deny the Petition based on § 325(d).
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`B. Claim Construction
`In an inter partes review proceeding, we construe patent claims using
`the same standard used in a civil action under 35 U.S.C. § 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of the claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b).
`
`“frame mode”
`1.
`Petitioner proposes we construe “frame mode” the same as we did in
`IPR2021-00822 as “having the keyboard face down on a surface with the
`screen face up, and the base and display components forming a non-zero
`angle.” Pet. 8–9. Patent Owner does not dispute Petitioner’s construction in
`its Preliminary Response. On the current record, we agree with and adopt
`Petitioner’s proposed construction.
`
`“content mode”
`2.
`Petitioner proposes we construe “content mode” consistent with
`Patent Owner’s construction during the ’844 Reexam, where Patent Owner
`“argued for and received a construction of [‘Content Mode’] as meaning
`‘displaying some information that represents a higher-level construct into
`which content is grouped.’” Id. at 9 (citing Ex. 1005, 6). Further, “[t]his
`recitation is distinct from merely displaying individual things (e.g.,
`applications) that may be grouped into a content mode.” Id. Patent Owner
`does not dispute Petitioner’s construction in its Preliminary Response. On
`the current record, we agree with and adopt Petitioner’s proposed
`construction.
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`“display mode”
`3.
`Petitioner proposes we construe “display mode” as ‘“the particular
`physical configuration of the portable computer.’” Id. at 10 (quoting
`Ex. 1005, 3480). Id. Patent Owner does not dispute Petitioner’s
`construction in its Preliminary Response. On the current record, we agree
`with and adopt Petitioner’s proposed construction.
`
`“navigation control”
`4.
`Petitioner proposes we construe ‘“navigation control’ . . . broadly to
`include any conventional tool for navigating, including a touchscreen”
`because that construction is consistent with the ’844 patent’s specification as
`well as Patent Owner’s infringement contentions in a related district court
`case. Id. at. 11 (citing Ex. 1001, 12:17–21; Ex. 1013 ¶ 147). Patent Owner
`does not dispute Petitioner’s construction in its Preliminary Response. On
`the current record, we agree with and adopt Petitioner’s proposed
`construction.
`Although Petitioner proposes we construe an additional claim term
`related to an axis of rotation, we agree with Petitioner that we “need not
`resolve this issue” to determine whether to institute an inter partes review.
`Id. at 11–12; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))).
`
`Level of Ordinary Skill in the Art
`C.
`Petitioner asserts that a person of ordinary skill in the art
`would have had a bachelor’s degree (or equivalent) in electrical
`engineering, computer engineering, computer science, or a
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`comparable subject and would have had two to three years of
`work experience in the design and architecture of laptop
`computers and other portable electronic devices. Alternatively,
`a person of ordinary skill in the art would have had an advanced
`degree (or equivalent) in electrical engineering, computer
`engineering, computer science, or a comparable subject and
`would have had one year of post-graduate research or work
`experience in the design and architecture of laptop computers
`and other portable electronic devices. A person of ordinary skill
`in the art would have been familiar the structural hardware
`aspects of laptop computers and other portable electronic devices
`as well as designs of user interfaces employed and displayed by
`computer operating systems and their organization of content
`and functionality. Similar skills and knowledge could be
`acquired by other means.
`Pet. 7. Patent Owner does not dispute the level of ordinary skill in the art.
`For this Decision, we agree with and adopt Petitioner’s proposal as
`reasonable and consistent with the level of skill reflected in both the prior art
`and the ’844 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).
`
`D. Description of Primary Prior Art References
`Lane (Ex. 1006)
`1.
`Lane is titled “Modular, Reconfigurable Devices.” Ex. 1006, code
`(54). Lane describes a system adapted to rotate about two adjacent, parallel
`axes permitting components to be positioned throughout approximately 0–
`360 degrees. Id. at code (57).
`Figure 1 of Lane, is reproduced below.
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`Figure 1 illustrates a module device in the open position. Id. at 3:31–34.
`The modular device illustrated in Figure 1 includes a keyboard 14, a
`display 18, and torque-generating device 37. Id. at 5:4–6. The torque-
`generating device 37 is designed to retain the display 18 in a selected
`position relative to the keyboard 14 when the modular device is in use. Id. at
`5:19–22. The modular device in Figure 1 also includes a position-indicating
`mechanism 38 that indicates the spatial orientation of the module and assists
`in determining “whether the information to appear on visual display 35
`should be in ‘landscape’ or ‘portrait’ position.” Id. at 5:23–6:3.
`Figures 5–9 of Lane are reproduced below.
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`Figures 5–9 show device 10 in various configurations. Id. at 7:30–32.
`Figures 5–9 each illustrate a cross-sectional view of device 10,
`including first and second modules 14 and 18, and connector 54 attaching
`the first and second modules. Id. at 7:30–37. Figure 5 shows an unrotated or
`“nominally closed” view of the device. Id. at 7:32–35. Figure 6 illustrates
`“second module 18 rotated about axis 62 to form an obtuse angle.” Id. at
`8:2–5. Figure 7 illustrates a configuration where the “second module 18 has
`been rotated approximately 180° relative to first module 14.” Id. at 8:9–12.
`Figure 8 illustrates rotating the second module 18 to greater than 270°, and
`Figure 9 illustrates rotating the second module 18 by approximately 360°.
`Id. at 8:12–19.
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`Pogue (Ex. 1007)
`2.
`Pogue is a manual for the Microsoft Windows XP Pro operating
`system. EX1007, 2. Pogue’s Figure 1–3 is reproduced below.
`
`
`Figure 1–3 shows the Widows desktop. Ex. 1007, 36. Pogue explains that
`users can change the default desktop to include My Documents and My
`Network Places icons. Id. at 36.
`
`E. Obviousness Analysis
`1. Ground 1: Obviousness based on Lane and Pogue
`In its first unpatentability ground, Petitioner contends that claims 1, 3,
`4, 7–10, 13, 14, 16, 18, and 22 would have been obvious over Lane and
`Pogue. Pet. 26–56. Based on the present record and for the reasons
`explained below, we determine that Petitioner has demonstrated a reasonable
`likelihood of success in proving that claims 1, 3, 4, 7–10, 13, 14, 16, 18, and
`22 would have been obvious over Lane and Pogue.
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`a) Petitioner’s Proposed Combination of Lane and Pogue
`Petitioner relies primarily on Lane for the bulk of the challenged
`claims’ elements, including the portable computer’s base, keyboard, and
`display. Id. at 25–30. Petitioner also relies on Lane for disclosing the
`claimed laptop and easel modes, as well as corresponding display
`orientations. Id. at 31–43. Petitioner further asserts that Lane’s electronic
`mouse and touchscreen teaches the challenged claims’ navigation control.
`Id. at 44–49. Because Lane “is silent as to what content is displayed on the
`display/touchscreen,” Petitioner relies on Pogue for disclosing the claimed
`content modes—i.e., “My Documents” and “My Pictures” icons. Id. at 38,
`40–41.
`According to Petitioner, a skilled artisan “would have found it
`obvious to combine Lane and Pogue because Lane is directed toward a
`portable computer but does not specify an operating system.” Id. at 25.
`Petitioner explains that a skilled artisan “would have been motivated to
`select a Windows operating system due to market forces because, prior to
`and at the time of the claimed 2008 priority date of the 844 patent, Windows
`was the most widely used operating system for personal computers including
`portable personal computers such as laptop computers, and the Windows XP
`Pro version of that operating system as described in Pogue . . . was in
`widespread use.” Id. at 25–26.
`Patent Owner challenges several aspects of Petitioner’s obviousness
`challenge. We address those issues below.
`
`b) Petitioner’s Rationale and Reasonable Expectation of Success
`for Combining Lane and Pogue
`Patent Owner argues that Petitioner’s challenge fails because “every
`ground relies on a computer having a working touchscreen to meet at least
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`one limitation in every challenged claim,” but “Windows XP Pro did not
`support a touchscreen.” Prelim. Resp. 42–43. “Instead, Microsoft
`introduced a new and different version of Windows called ‘Windows XP
`Tablet PC Edition’ to support pen-based computing and touchscreens.” Id.
`at 48. Thus, Patent Owner contends, Petitioner’s rationale for the
`combination fails because a skilled artisan “never would have used the
`operating system described by Pogue with Lane because it would have
`destroyed Lane’s ability to use Lane’s touchscreen.” Id. at 43. Further,
`Patent Owner asserts that a skilled artisan would have no reasonable
`expectation of success in implementing Petitioner’s proposed combination
`“because the operating system that the Lane-Pogue computer uses did not
`support a touchscreen.” Id.
`On this record, we disagree with Patent Owner’s argument because
`“[t]he test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference . . . but rather whether ‘a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention.’” Allied Erecting & Dismantling Co. v. Genesis
`Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (internal citations
`omitted). In addition, “we do not ignore the modifications that one skilled in
`the art would make to a device borrowed from the prior art.” In re ICON
`Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). Even if Patent
`Owner is correct that Windows XP Pro did not include touchscreen support,
`that does not mean it would be beyond a skilled artisan’s capability to
`modify Windows XP Pro or select a Windows XP version like the Tablet PC
`Edition that does include touchscreen support as well as the My Documents
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`and My Pictures features on which Petitioner relies. With the rationale
`outlined above, Petitioner has articulated sufficient reasoning with rational
`underpinning to support the legal conclusion that its proffered combination
`would have been obvious to one skilled in the art. See KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007). In addition, Petitioner provides
`testimony, yet uncontested, that a skilled artisan would have had a
`reasonable expectation of success in implementing both Windows XP Pro on
`Lane’s device and touchscreen functionality on the combined Lane-Pogue
`system. See Ex. 1002, ¶¶ 101, 103, 143.
`
`c) “a navigation control . . . rotatable about the longitudinal axis”
`Claim 1 recites “a navigation control disposed at least partially within
`the base and rotatable about the longitudinal axis.” Ex. 1001, 17:42–43.
`Petitioner asserts Lane’s electronic mouse 32 meets the claimed navigation
`control. Pet. 45–46.
`Patent Owner asserts Petitioner’s challenge fails for two reasons.
`First, Patent Owner faults Petitioner for failing to explain how or why
`Lane’s mouse “is somehow ‘rotatable about the longitudinal axis.’” Prelim.
`Resp. 59–60. We disagree. In addressing the navigation control element,
`Petitioner notes that Lane’s mouse is “disposed in the first module 14 (the
`base).” Pet. 45. Elsewhere, Petitioner repeatedly asserts that Lane’s base
`rotates about a longitudinal axis. E.g., Pet. 31, 35, 36. Moreover, it is clear
`from Lane’s Figures 1 and 5–9 that the electronic mouse rotates about
`Lane’s longitudinal axis because it is attached to Lane’s base 14 that rotates
`about Lane’s longitudinal axis as the device moves on its hinge assembly.
`Second, Patent Owner asserts that Lane’s mouse is deficient because,
`unlike the ’844 patent’s scroll wheel, which “is disposed within the base and
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`is rotatable relative to the base about the longitudinal axis,” Lane’s
`electronic mouse is not “rotatable relative to the base.” PO Resp. 61. We
`disagree with this argument because the claim’s plain language recites only
`rotation “about the longitudinal axis,” but not rotation relative to the base.7
`For these reasons, on the current record, we agree with Petitioner that the
`Lane’s mouse is a “navigation control . . . rotatable about the longitudinal
`axis” as claim 1 requires.
`
`d) “a navigation control disposed at least partially about the
`longitudinal axis”
`Claim 18 requires “a navigation control disposed at least partially
`about the longitudinal axis.” Ex. 1001, 20:24–25. Petitioner asserts Lane’s
`mouse 32 and its touchscreen display 35 are the claimed navigation control.
`Pet. 45–46, 48–49. Although Patent Owner does not dispute that the
`claimed “navigation control” reads on Lane’s display 35, Patent Owner
`alleges that Lane’s mouse is deficient because it is not “disposed in the
`location of the axis and around the axis.” Prelim. Resp. 65.
`The parties’ dispute appears to be one of claim construction. Patent
`Owner asserts that, for a component to be disposed at least partially about
`the longitudinal axis, it must be “in the location of the axis and around the
`axis.” Prelim. Resp. 65. Petitioner, in contrast, asserts that “all portions of
`the base that are spaced apart from the longitudinal axis” are disposed at
`least partially about the longitudinal axis. Pet. 48. We decline to decide this
`issue at this stage for two reasons. First, even if Patent Owner is correct that
`Lane’s mouse is deficient, Patent Owner does not dispute that Lane’s display
`
`7 To the extent Patent Owner intends to distinguish Lane’s mouse because its
`actuation is not rotatable about the longitudinal axis, Patent Owner has not
`made that argument but may do so at trial.
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`
`screen is disposed at least partially about Lane’s longitudinal axis, as claim
`18 requires. In addition, to the extent that this issue eventually requires
`resolution to determine patentability, it is better resolved at trial, after full
`briefing from the parties.
`
`e) Ground 1 Summary
`Other than as outlined above, Patent Owner does not additionally
`challenge Petitioner’s obviousness analysis at this stage. We have reviewed
`Petitioner’s arguments and the underlying evidence cited in support and are
`persuaded that, at this stage, Petitioner sufficiently demonstrates a
`reasonable likelihood of succeeding in its obviousness challenge to claims 1,
`3, 4, 7–10, 13, 14, 16, 18, and 22 based on Lane and Pogue.
`
`2. Petitioner’s Additional Obviousness Grounds
`In two additional obviousness grounds, Petitioner adds Hotelling for
`teaching “a touchscreen that is operable in all physical
`configurations/display modes,” in case we find Lane’s teaching on that
`feature inadequate. Id. at 56–58, 63. Petitioner adds another reference,
`Segawa for the additional limitation in dependent claim 17—manually
`selecting one of a plurality of display modes. See id. at 58–59, 64.
`Petitioner further adds MIT for its single-axis-hinge teaching, in case we
`construe the claims “as limited to having only one longitudinal axis of
`rotation.” Id. at 61, 64.
`Other than as outlined above, Patent Owner does not additionally
`challenge Petitioner’s additional obviousness grounds involving Hotelling,
`Segawa, and MIT. See Prelim Resp. 68–70. We have reviewed Petitioner’s
`arguments and the underlying evidence cited in support and are persuaded
`
`19
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`

`

`IPR2024-00404
`Patent 8,624,844 B2
`
`that, at this stage, Petitioner sufficiently demonstrates a reasonable
`likelihood of succeeding in these additional obviousness challenges.
`III. CONCLUSION
`After considering the evidence and arguments presented in the current
`record, we determine that Petitioner has demonstrated a reasonable
`likelihood of success in proving that at least one of the challenged claims of
`the ’844 patent is unpatentable. We therefore institute trial on all challenged
`claims and grounds raised in the Petition. At this stage of the proceeding,
`we have not made a final determination as to the patentability of any
`challenged claim or as to the construction of any claim term. Any final
`determination will be based on the record developed during trial. We place
`Patent Owner on express notice that any argument not asserted in a timely-
`filed Response to the Petition, or in another manner permitted during trial,
`shall be deemed waived, even if that argument was presented in the
`Preliminary Response.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1, 3, 4, 7–10, 13, 14, 16–18, and 22 of the ’844 patent is
`instituted with respect to all grounds set forth in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’844 patent shall commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a trial.
`
`
`
`
`
`20
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`

`

`IPR2024-00404
`Patent 8,624,844 B2
`
`For PETITIONER:
`James Heintz
`James Day
`Daniel Callaway
`Raymond Chan
`DLA PIPER LLP US
`jim.heintz@dlapiper.com
`jday@fbm.com
`dcallaway@fbm.com
`raymond.chan@procopio.com
`
`For PATENT OWNER:
`Richard Giunta
`Gerald Hrycyszyn
`WOLF GREENFIELD & SACKS, P.C.
`rgiunta-ptab@wolfgreenfield.com
`ghrycyszyn-ptab@wolfgreenfield.com
`
`21
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`