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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION, HP INC., DELL INC., DELL TECHNOLOGIES
`INC., ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`Petitioners,
`
`v.
`
`LITL LLC,
`Patent Owner.
`_________________
`
`IPR2024-00457
`U.S. Patent No. 9,880,715
`__________________
`
`PETITIONERS’ PRELIMINARY REPLY
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`I.
`II.
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`
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`U.S. Patent 9,880,715
`IPR2024-00457
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`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`FACTS ............................................................................................................ 2
`A.
`Lenovo’s ’715 IPR (IPR2021-00786) .................................................. 2
`B.
`Lenovo’s ’715 EPR (No. 90/014,958) ................................................. 3
`C.
`The Petition .......................................................................................... 4
`
`III. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER § 325(D) ........................................................................................... 5
`A.
`The First Part of Advanced Bionics Framework Is Not Met ................ 5
`
`1.
`
`The Petition Does Not Rely on Substantially the Same
`Art .............................................................................................. 5
`
`2.
`
`The Petition Does Not Raise Substantially the Same
`Arguments .................................................................................. 8
`The Second Part of Advanced Bionics Is Not Met ............................... 9
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`B.
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`U.S. Patent 9,880,715
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`TABLE OF AUTHORITIES
`
`CASES
`Dell Techs. Inc. v. LiTL LLC,
`IPR2024-00480, Paper 13, 18-23 (May 28, 2024) ............................................... 6
`Lenovo (United States) Inc. v. LiTL LLC,
`IPR2021-00786, Paper 1, 3 (May 4, 2021) ....................................................... 2, 5
`Mylan Pharms. Inc. v. Merck Sharp & Dohme Corp.,
`IPR2020-00040, Paper 21, 20 (May 12, 2020) ................................................... 10
`STATUTES
`35 U.S.C. § 325(d) ......................................................................................... 1, 2, 4, 5
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`U.S. Patent 9,880,715
`IPR2024-00457
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`EXHIBIT LIST
`
`Reference
`U.S. Patent No. 9,880,715 (“the ’715 patent”)
`File History of the ’715 patent
`Declaration of Dr. Henry Houh in Support of Petition (“Houh
`Decl.”)
`Dr. Henry Houh CV
`U.S. 90/014,958 Ex Parte Reexamination File History
`German Patent Application Publication DE10331185A1
`(“Pröll”) with certified translation
`U.S. Patent 6,137,468 (“Martinez”)
`Joan Preppernau & Joyce Cox, Step By Step Windows Vista,
`Microsoft Press (Jan. 3, 2007) (“Preppernau”)
`U.S. Patent 5,847,698 (“Reavey”)
`RESERVED
`U.S. Patent Application Publication 2008/0062141 A1 (“Chan-
`dhri”)
`RESERVED
`RESERVED
`RESERVED
`Declaration of June Munford
`Complaint, LiTL LLC v. ASUSTeK Computer Inc., No. 23-cv-
`00122 (D. Del. Feb. 1, 2023)
`Complaint, LiTL LLC v. Dell Techs. Inc., No. 23-cv-0121 (D.
`Del. Feb. 1, 2023)
`Complaint, LiTL LLC v. HP Inc., No. 23-cv-00120 (D. Del.
`Feb. 1, 2023)
`Order Granting Microsoft Intervention, LiTL LLC v. HP Inc.,
`No. 23-cv-00120 (D. Del. Oct. 16, 2023)
`
`
`
`Exhibit
`1001
`1002
`1003
`
`1004
`1005
`1006
`
`1007
`1008
`
`1009
`1010
`1011
`
`1012
`1013
`1014
`1015
`1016
`
`1017
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`1018
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`1019
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`U.S. Patent 9,880,715
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`Exhibit
`1020
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`1021
`
`1022
`
`Reference
`Scheduling Order, LiTL LLC v. HP Inc., No. 23-120 (D. Del.
`Jan. 11, 2024), ECF No. 44
`Foley, James D., et al., Computer Graphics Principles and
`Practice, Second Edition in C (July 1997)
`Dino Esposito, New Graphical Interface: Enhance Your Pro-
`grams with New Windows XP Shell Features, MSDN Magazine
`1023 Maintenance & Service Guide, HP Pavilion dv1600 Entertain-
`ment Notebook PC (June 2006)
`Complaint, LiTL LLC v. Lenovo (United States), Inc., No. 20-
`cv-00689 (D. Del. May 22, 2020)
`Stipulation of Dismissal, LiTL LLC v. Lenovo (United States)
`Inc., No. 20-cv-00689 (D. Del. Feb. 3, 2023)
`RESERVED
`Dan Littman, Fujitsu LifeBook T3000 Tablet PC review, CNET
`(Oct. 12, 2003)
`Stephanie Bruzese, HP Compaq Tablet PC TC1100 review,
`CNET (Oct. 12, 2003)
`Brian Nadel, Acer TravelMate C110 review, CNET (July 9,
`2003)
`1030 Mark Harris, OLPC XO-1 (One Laptop Per Child) review,
`CNET (Jan. 7, 2008)
`Ltr. From Lenovo Counsel to Microsoft Counsel re Indemnifi-
`cation
`RESERVED
`RESERVED
`RESERVED
`Q&A: Microsoft Unveils Details for Ultra-Mobile Personal
`Computers, Microsoft News (Mar. 9, 2006)
`AU Patent Application Publication 2001/100022 A4 (“Ad-
`amson”)
`RESERVED
`RESERVED
`Board Authorization to File Preliminary Reply
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`1024
`
`1025
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`1026
`1027
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`1028
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`1029
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`1031
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`1032
`1033
`1034
`1035
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`1036
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`1037
`1038
`1039
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`U.S. Patent 9,880,715
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`I.
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`INTRODUCTION
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`The Board should reject PO’s invitation to exercise its discretion under
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`§ 325(d) based on alleged similarities between the Petition and Lenovo’s prior ex
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`parte reexamination 90/014,958 challenging the ’715 Patent (“’715 EPR”). The ’715
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`EPR request included four SNQs: (1) Ledbetter, (2) Ledbetter + Pogue, (3)
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`Lane + Ledbetter + Pogue, and (4) Shimura + Ledbetter + Pogue. The Office granted
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`Lenovo’s request based on all four SNQs, but the subsequent examination involved
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`only the Ledbetter + Pogue SNQ, with the examiner providing only one sentence of
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`analysis for each of Lane and Shimura in the Notice of Intent to Issue an Ex Parte
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`Reexamination Certificate. This IPR includes grounds based on Pröll in combination
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`with the following: (1) Martinez, (2) Martinez + Chandhri, (3) Martinez +
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`Preppernau, (4) Preppernau, and (5) Preppernau + Chandhri. Despite the EPR
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`Examiner’s dearth of analysis on Lane, and even though none of the ’715 EPR SNQs
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`relied on a combination of Lane (which PO alleges is substantially similar to Pröll)
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`and Pogue (which PO alleges is substantially similar to Martinez and Preppernau) to
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`render obvious the limitation reciting “select…in response to the detected current
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`computer system configuration” in independent claims 1 and 20, PO now urges the
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`Board to exercise its discretion based on Petition’s use of Pröll + Martinez and
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`Pröll + Preppernau to render obvious the “select…in response to…” limitation.
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`The ’715 EPR did not involve any of the same art, the art in the Petition is not
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`substantially the same as the art in the ’715 EPR, and—even assuming the art was
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`substantially the same—Lenovo did not make, and the Office did not consider,
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`substantially the same arguments as presented in the Petition. Moreover, even
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`assuming there was any substantial similarity between the art and arguments in the
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`’715 EPR and those in the Petition, the Office materially erred because it did not
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`consider the allegedly similar art/arguments to any reasonable extent, did not
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`consider the arguments PO alleges are “substantially similar,” and did not have the
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`benefit of the Petition or Dr. Houh’s analysis. Exercise of discretion under § 325(d)
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`is unwarranted here.
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`II.
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`FACTS
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`A. Lenovo’s ’715 IPR (IPR2021-00786)
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`On May 4, 2021, Lenovo filed IPR2021-00786 based on two obviousness
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`grounds: (1) Shimura and Tsuji; and (2) Shimura, Tsuji, and Pogue. Lenovo (United
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`States) Inc. v. LiTL LLC, IPR2021-00786, Paper 1, 3 (May 4, 2021). The Board
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`denied institution on the basis that Lenovo’s grounds did not teach a “plurality of
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`views” as the Board construed the term. Id., Paper 6, 23-30 (Oct. 21, 2021). Notably,
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`the Board did not address whether Pogue taught this limitation because Lenovo did
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`not rely on Pogue for this teaching. Id., 29. PO does not argue that the Board should
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`exercise its discretion under § 325(d) in light of Lenovo’s IPR.
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`B.
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`Lenovo’s ’715 EPR (No. 90/014,958)
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`On February 16, 2022, Lenovo filed the request for the ’715 EPR and
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`presented obviousness grounds based on Ledbetter, Ledbetter in combination with
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`Pogue, Lane in combination with Ledbetter in view of Pogue, and Shimura in
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`combination with Ledbetter in view of Pogue. EX1005, 947. Relevant here, Lenovo
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`never relied on a combination of Lane and Pogue (nor any other combination with
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`Pogue) to argue that the “select one of the plurality of views…in response to the
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`detected current computer system configuration…” limitation is disclosed by the
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`prior art. Id., 1139-42 (relying on Ledbetter alone), 1176-78 (relying on Lane alone
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`or a combination of Lane and Ledbetter),1 1123-25 (relying on Shimura alone or a
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`combination of Shimura and Ledbetter).2
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`The Office found that all four grounds raised substantial new questions of
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`patentability and ordered reexamination. Id., 1408-30. However, the Examiner
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`issued a rejection based on just one of the SNQs—the combination of Ledbetter and
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`Pogue. Id., 1453-86.
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`1 Lenovo’s request in the ’715 EPR mentions Pogue but provides no argument
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`regarding why it teaches this limitation in combination with another reference.
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`2 Supra, n.1.
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`In a subsequent interview with the Examiner, PO addressed only the
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`Ledbetter-Pogue ground. Id., 1496-515. After the interview, PO’s response to the
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`rejection again only addressed the Ledbetter-Pogue ground. Id., 1517-61.
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`The Examiner subsequently issued a Notice of Intent to Issue an Ex Parte
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`Reexamination Certificate on December 20, 2022. Id., 1675-82. With respect to
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`Ledbetter, the Examiner stated that “Ledbetter’s loading of different software that
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`displays different visual representations of content does not display a plurality of
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`views.” Id., 1680. With respect to Pogue the Examiner stated that “the selection of a
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`plurality of views is not in response to the detected current computer system
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`configuration or responsive to sensor input.” Id. (emphasis in original); see also id.,
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`1681 (“At best, Pogue’s selection of views is based on a user selection and not a
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`computer’s configuration.”).
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`The Examiner discussed Lane in just one sentence, stating that it “teaches use
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`of a visual display in laptop format and other formats by changing the orientation
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`from landscape or portrait position, but there is not [sic] explicit teaching of
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`organizing visual representations of content differently.” Id.
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`C. The Petition
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`The Petition’s grounds do not rely on Ledbetter, Pogue, Lane, or Shimura.
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`Instead, the Petition demonstrates how the combinations of Pröll and Martinez
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`(Ground 1), Pröll, Martinez, and Chandhri (Ground 2), Pröll, Martinez, and
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`Preppernau (Ground 3), Pröll and Preppernau (Ground 4), and Pröll, Preppernau,
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`and Chandhri (Ground 5) render obvious the Challenged Claims. Notably, the
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`Petition relies on Pröll in combination with each of Martinez and Preppernau to teach
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`the patent limitations 1[f]: “select one of the plurality of views for display on the
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`computer system in response to the detected current computer system
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`configuration…” and 20[f]: “select one of the plurality of views for display on the
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`computer system in response to the detected current computer system
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`configuration….”
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`III. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION UNDER
`§ 325(d)
`
`A. The First Part of Advanced Bionics Framework Is Not Met
`The Petition Does Not Rely on Substantially the Same Art
`1.
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`Although the POPR dedicates pages 20 through 29 to superficial comparisons
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`of Pröll to Lane and Pogue to Martinez/Preppernau, these comparisons fail to
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`account for the teachings of the references as a whole. See also, POPR, 18-20.
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`PO’s comparison of Pröll to Lane fails to account for key differences between
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`the references, instead reducing 48 pages of specification between the two references
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`to a characterization that both references disclose “laptops with a plurality of
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`physical configurations” and “sensors to keep displayed content right-way-up.” Id.,
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`20, 22. But there are important differences in the disclosures of these references that
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`are relevant to the challenged claims and cannot be reduced to a comparison of a
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`handful of figures and two sentences of analysis. For example, Pröll’s switch/sensor
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`is located in its hinge to detect swiveling of the first body of its computer relative to
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`the second body (Pröll, ¶49, claim 18), while Lane’s sensor detects the position of
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`the laptop relative to gravity (and, relevant to the challenged claims, is not
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`necessarily indicative of the computer system’s configuration). Lane, EX2009, 5-6;
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`see also Dell Techs. Inc. v. LiTL LLC, IPR2024-00480, Paper 13, 18-23 (May 28,
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`2024) (in denying institution, Board noting that Lane’s accelerometer provides
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`information only about spatial orientation of its keyboard, not the orientation of its
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`two modules relative to one another).
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`PO provides an even more high-level comparison of Pogue with
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`Martinez/Preppernau. PO provides a brief characterization of Martinez and
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`Preppernau’s disclosure and a comparison to Pogue’s figures. POPR, 22-29. This
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`again fails to account for key differences, including, for example, the fact that
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`Martinez’s display adjustment is based on movement detected by a sensor (Petition,
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`23), which supports the motivation to combine with Pröll, which detects movement
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`of the two bodies of a laptop by a sensor (id., 27-30, 34-35 (discussing motivation
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`to combine Pröll and Martinez)); see also EX1003, ¶¶69-77, 84-85 (Dr. Houh
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`explaining the same). And although PO at least compared figures from Pröll and
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`Lane side by side (POPR, 21-22), PO’s only side-by-side comparison with Pogue is
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`between Pogue and Preppernau’s covers (id., 26). This cannot account for the
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`differences in how Pogue and Preppernau teach the features PO briefly summarizes.
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`For example, Preppernau illustrates various window configurations (e.g., the
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`Cascade view) that a POSITA would have understood to lend themselves to either
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`of Pröll’s tablet and conventional laptop orientations. Petition, 78-84; EX1003,
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`¶¶168-72, 174 (Dr. Houh discussing the same). PO’s high-level characterization of
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`Preppernau and comparison to Pogue’s figures omits this important visualization
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`disclosed in Preppernau, as is apparent from the figure comparison below:
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`POPR, 28 (citing Pogue, Fig. 2-26).
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`Petition, 81 (citing Preppernau, 50-51).
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`2.
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`The Petition Does Not Raise Substantially the Same
`Arguments
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`PO’s assertion that “Petitioner’s grounds make substantially the same
`
`argument Lenovo made” is plainly incorrect. Lenovo did not rely on a combination
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`of Lane and Pogue (or indeed any combination with Pogue) for the “select…in
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`response to the detected current computer system configuration” limitation on which
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`PO anchors its arguments. POPR, 30. PO’s citations to the ’715 EPR prove as much.
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`Id. (citing EX1005, 1177 (discussing a combination of Lane, Ledbetter, and Pogue
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`but only relying on the teachings of Lane and/or Ledbetter to disclose the “select…in
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`response to the detected current computer system configuration” limitation and
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`cross-referencing EX1005, 1033-36 (relying on a combination with Pogue for only
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`the limitations reciting “display a plurality of views…” and “wherein the computer
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`content includes at least one of selectable digital content…”)); see also, EX1005,
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`1139-42 (relying on Ledbetter alone for “select…in response…” limitation), 1123-
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`25 (relying on Shimura alone or a combination of Shimura and Ledbetter).
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`Accordingly, the Petition does not rely on substantially the same art as the
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`’715 EPR because there are key differences between Pröll and Lane, as well as
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`Martinez/Preppernau and Pogue. Neither does it rely on substantially the same
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`arguments because Lenovo never argued that a combination with Pogue teaches the
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`“select…in response…” limitation, which is the limitation as to which PO alleges
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`the Petition’s arguments are substantially the same. Thus, part one of Advanced
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`Bionics is not met, and the Board need not reach part two.
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`B.
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`The Second Part of Advanced Bionics Is Not Met
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`If the Board nonetheless decides to consider part two of the Advanced Bionics
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`framework, the Office erred in a manner material to the patentability of the
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`challenged claims.
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`Under Becton, Dickinson factor (c), even assuming, arguendo, there is
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`substantial similarity between (1) Lane and Pröll and (2) Pogue and
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`Martinez/Preppernau, the Office did not consider the Lane-Pogue combination PO
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`alleges is substantially the same as the Petition’s combinations. As explained in
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`Section II.B, Lenovo’s Ledbetter-Pogue combination was the only one discussed in
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`the Non-Final Rejection, the Interview, and PO’s Response. It was not until the
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`Notice of Intent to Issue a Reexamination Certificate that the Examiner even
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`mentioned Lane, doing so in only a sentence that is unrelated to the arguments that
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`PO alleges are substantially the same as in the Petition. See Section II.B. Further, as
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`explained in Section III.A.2, Lenovo did not even present what PO alleges to be
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`“substantially the same arguments” as in its EPR request because Lenovo never
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`argued that Lane combined with Pogue (or indeed any other reference combined
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`with Pogue) teaches the “select…in response to…” limitation. Thus, the Examiner
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`did not evaluate Lane in combination with Pogue in the manner alleged by PO.
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`Under Becton, Dickinson factor (e), Petitioner has explained how the
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`Examiner erred in evaluating Lane and Pogue (again assuming, arguendo,
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`substantial similarity between those references and the Petition’s asserted art)
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`because the Examiner did not consider a combination of Lane and Pogue for teaching
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`the “select…in response to…” limitation. The Petition, supported by the testimony
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`of Dr. Houh, explains why a POSITA would have been motivated to make the Pröll-
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`Martinez and Pröll-Preppernau combinations. See Petition, 20-21 (citing Houh Decl.
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`¶¶60-67); id., 42-45 (citing Houh Decl. ¶¶107-09). The Petition also explains how
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`each combination renders obvious the Challenged Claims, including the “select…in
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`response to…” limitation. Id., 20-21, 29, 51.
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`Finally, under Becton, Dickinson factor (f), additional evidence in the form of
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`Dr. Houh’s testimony warrants consideration by the Board because the examiner in
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`the ’715 EPR did not have the benefit of Dr. Houh’s analysis regarding why the
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`Pröll-Martinez and Pröll-Preppernau combinations, along with the other grounds in
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`the Petition, render obvious the Challenged Claims. See, e.g., Mylan Pharms. Inc. v.
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`Merck Sharp & Dohme Corp., IPR2020-00040, Paper 21, 20 (May 12, 2020)
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`(declining to exercise discretion to deny institution under § 325(d) in part because
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`the Petition presented expert testimony regarding the prior art that was not before
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`the Examiner).
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`Dated: July 5, 2024
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`U.S. Patent 9,880,715
`IPR2024-00457
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`Respectfully submitted,
`
` /s/ Jessica Kaiser
`Jessica Kaiser
`Reg. No. 58,937
`Attorney for Petitioners
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`Perkins Coie LLP
`1900 Sixteenth Street, Ste. 1400
`Denver, CO 80202-5255
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`CERTIFICATE OF SERVICE
`I hereby certify that on July 5, 2024 true and correct copies of the foregoing
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`PETITIONERS’ PRELIMINARY REPLY was served via electronic mail upon the
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`following counsel of record for Patent Owner:
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`Richard F. Giunta: RGiunta-PTAB@WolfGreenfield.com
`Gerald B. Hrycyszyn: GHrycyszyn-PTAB@WolfGreenfield.com
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`Dated: July 5, 2024
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`Respectfully submitted,
`
` /s/ Jessica Kaiser
`Jessica Kaiser
`Reg. No. 58,937
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`Perkins Coie LLP
`1900 Sixteenth Street, Ste. 1400
`Denver, CO 80202-5255
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