Trials@uspto.gov
`571-272-7822
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` Paper No. 25
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`Entered: September 26, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACER INC., ACER AMERICA CORPORATION,
`ASUSTEK COMPUTER INC., ASUS COMPUTER INTERNATIONAL,
`GOOGLE LLC, MICROSOFT CORPORATION, and
`MICROSOFT MOBILE INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS ELECTRONICS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-003861
`Patent RE44,913
`____________
`
`
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Microsoft Corporation and Microsoft Mobile Inc. (collectively,
`“Microsoft”) filed a petition in IPR2017-01766, and Microsoft has been
`joined to the instant proceeding.
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`

`

`Case IPR2017-00386
`Patent RE44,913
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`
`I.
`
`INTRODUCTION
`
`Acer Inc., Acer America Corporation, ASUSTek Computer Inc.,
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`ASUS Computer International, and Google LLC requested an inter partes
`
`review of claims 1 and 3–16 (the “challenged claims”) of U.S. Patent No.
`
`RE44,913 (Ex. 1001, “the ’913 patent”). Paper 2 (“Petition” or “Pet.”).
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`Patent Owner Koninklijke Philips Electronics N.V. filed a Preliminary
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`Response. Paper 7 (“Prelim. Resp.”). Upon consideration of the Petition
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`and Preliminary Response, we instituted an inter partes review pursuant to
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`35 U.S.C. § 314 of the challenged claims. Paper 8 (“Decision on Institution”
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`or “Dec. on Inst.”), 19.
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`After institution, Microsoft Corporation and Microsoft Mobile Inc.
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`requested an inter partes review of the challenged claims and filed a motion
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`for joinder to the instant proceeding. IPR2017-01766, Papers 2 and 3.
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`Patent Owner, together with Microsoft Corporation and Microsoft Mobile
`
`Inc., filed a joint stipulation stating that Patent Owner did not oppose the
`
`requested joinder. IPR2017-01766, Paper 7, 3. We granted the motion and
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`joined the Microsoft entities to the instant proceeding. IPR2017-01766,
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`Paper 15, 10. Consequently, we refer herein to Acer Inc., Acer America
`
`Corporation, ASUSTek Computer Inc., ASUS Computer International,
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`Google LLC, Microsoft Corporation, and Microsoft Mobile Inc. collectively
`
`as “Petitioner.”
`
`Petitioner and Patent Owner requested an oral hearing, and a hearing
`
`was held on February 28, 2018. Paper 20. A transcript of the oral hearing
`
`has been entered into the record. Paper 23 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons discussed below, we determine that Petitioner has failed to
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`show by a preponderance of the evidence that any of the challenged claims
`
`are unpatentable.
`
`II.
`
`BACKGROUND
`
`A.
`
`Asserted Grounds of Unpatentability
`
`Petitioner advances the following grounds of unpatentability under
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`35 U.S.C. § 103(a) (Pet. 3–4):
`
`1. Obviousness of claims 1 and 3–16 over Sakata II2; and
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`2. Obviousness of claims 1 and 3–16 over Sakata II and Buxton3.
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`B. Overview of the ’913 patent
`
`The ’913 patent relates to entering characters on a handheld mobile
`
`device via a keypad. Ex. 1001, 1:18–21. Figure 1 of the ’913 patent is
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`reproduced below.
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`
`
`
`2 Sakata, Japanese Unexamined Patent Application No. 2000-148366
`(“Sakata II”) (Ex. 1004).
`3 Buxton, U.S. 6,094,197; iss. July 25, 2000 (“Buxton”) (Ex. 1006).
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`Figure 1 depicts a default display state of a keypad 100 with twelve
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`keys 102, where each key is associated with a primary character 104 and a
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`plurality of secondary characters 106. Id. at 3:25–28. The primary
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`characters in Figure 1 are the numbers and symbols displayed on the keys of
`
`the keypad. Id. at 3:28–31. The secondary characters in Figure 1 are the
`
`letters displayed in groups below each key. Id. at 3:31–37.
`
`In one embodiment, a user selects a primary character by initiating a
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`“quick tapping” of the corresponding key for a pre-determined time period,
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`for instance 0.2 seconds. Id. at 6:1–6. If the user’s tap is longer than the
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`pre-determined time period, the keypad responds to the user’s tap by
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`entering into a second state, wherein secondary characters associated with
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`the selected key are made available. Id. at 4:4–6, 6:3–6. Figure 2 of the
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`’913 patent is reproduced below.
`
`
`Figure 2 depicts a second display state of the keypad after a first key
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`selection by a user. Id. at 3:42–43. In this instance, the user has selected the
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`key associated with primary character ‘5’, causing the primary character ‘5’
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`to remain displayed on the selected key and causing the associated
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`secondary characters ‘j’, ‘k’, and ‘l’ each to be displayed on an adjacent key.
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`Id. at 3:44–52. The user may now select any of the displayed characters by
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`tapping on the corresponding key, thereby providing “quick and accurate
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`character input wherein secondary characters are available with only two
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`key selections.” Id. at 3:63–65, 4:4–6. “Following a character input, the
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`keypad of [Figure] 2 is returned to the default display state as shown in
`
`[Figure] 1.” Id. at 3:60–62.
`
`C.
`
`Prosecution History
`
`The ’913 patent is a reissue of U.S. Patent No. 6,885,318. Ex. 1001,
`
`1. During prosecution of the reissue application and pursuant to a request
`
`for continued examination, Patent Owner submitted an information
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`disclosure statement (IDS) disclosing Japanese Patent No. 4,019,512 to
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`Sakata (the “Sakata ’512 patent”), which results from Japanese Unexamined
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`Patent Application No. 2000–56912 (“Sakata I”). Ex. 1008, 522. The IDS
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`does not identify the secondary reference, Buxton, and Buxton was not
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`before the Examiner during prosecution. Id.; see also Pet. 15 n. 4.
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`Moreover, the translation of Sakata II upon which Petitioner relies appears
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`to be materially different from the translation of the Sakata ’512 patent
`
`before the Examiner. Compare, e.g., Ex. 1004, ¶ 55 (Sakata II describing,
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`“when a user wants to select and enter a special character or symbol that is
`
`not displayed on the soft keyboard 20, a user touches the key position of the
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`group of similar characters and symbols with the touch pen 4 for longer than
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`the threshold time.”) with Ex. 1008, 289 (Sakata ’512 patent stating, “[o]n
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`the other hand, when changing the character classification displayed on a
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`soft keyboard 6, as for a user, the drag|drug menu 18 is displayed in the
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`place which touched arbitrary characters and passed for a fixed time with the
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`pointing device 3 like FIG. 19.”).
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`D.
`
`Illustrative Claim
`
`Claims 1, 3, and 4 are independent. Claim 1 is illustrative of the
`
`claimed subject matter and is reproduced below.
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`A method for inputting a character to a device, the
`1.
`device including a keypad, the keypad including a plurality of
`keys, at least one of the keys has a primary character, a plurality
`of secondary characters and an associated display area, the
`keypad in a default state displaying the primary character
`associated with the at least one key in the associated display area,
`the method comprising acts of:
`
`in the default state,
`
`returning the primary character as an input character
`in response to selection of the at least one key
`for a period shorter than a predetermined time
`period;
`
`switching to a second state after detecting a first key
`selection of the at least one key for a period
`longer than the predetermined time period;
`
`in the second state:
`
`the secondary characters
`displaying each of
`associated with the first selected key in a
`respective display area;
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`detecting a second key selection;
`
`selecting for the input character the secondary
`character associated with the second key
`selection; and
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`returning the keypad to the default state.
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`E.
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`Related District Court Proceedings
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`Petitioner identifies several actions for infringement of the ’913 patent
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`pending in the United States District Court for the District of Delaware.
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`Pet. 3.
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`F.
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`Testimony
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`Petitioner supports its challenges with the declaration of Dr. Andrew
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`Cockburn. Ex. 1002. Dr. Cockburn testified by deposition on August 29,
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`2017, and a transcript of his testimony has been entered into evidence.
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`Ex. 2006.
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`Patent Owner supports its challenges with a declaration of
`
`Dr. Adam Porter. Ex. 2005. Dr. Porter testified by deposition on November
`
`29, 2017, and a transcript of his testimony has been entered into evidence.
`
`Ex. 1029.
`
`III. ANALYSIS
`
`A.
`
`Principles of Law
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and the burden of persuasion never shifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1378 (Fed. Cir. 2015). To prevail on its challenges, Petitioner must
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`demonstrate by a preponderance of the evidence that the challenged claims
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`are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time of the invention to a
`
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
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`of underlying factual determinations, including: (1) the scope and content of
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`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of skill in the art; and, if presented, (4) objective
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`evidence of nonobviousness, i.e., secondary considerations such as
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`commercial success, long felt but unsolved needs, and failure of others.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The obviousness
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`inquiry further requires an analysis of “whether there was an apparent reason
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`to combine the known elements in the fashion claimed by the patent at
`
`issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006) (requiring “articulated reasoning with some rational underpinning
`
`to support the legal conclusion of obviousness”)).
`
`B.
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`Claim Construction
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`1.
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`Applicable Standards and Principles of Law
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`In an inter partes review, claim terms are given their broadest
`
`reasonable interpretation in light of the specification in which they appear.4
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016); 37
`
`C.F.R. § 42.100(b). We presume that claim terms have their ordinary and
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`customary meaning. See TriVascular, Inc. v. Samuels, 812 F.3d 1056,
`
`1061–62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation,
`
`words of the claim must be given their plain meaning, unless such meaning
`
`is inconsistent with the specification and prosecution history.” (citation
`
`omitted)); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). Any special definition for a claim term must be set forth in the
`
`specification with reasonable clarity, deliberateness, and precision. In re
`
`
`4 We would construe the claim terms discussed below the same under
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
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`special definition or other consideration, “limitations are not to be read into
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`the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993). Only those terms that are in controversy need to be
`
`construed and only to the extent necessary to resolve the controversy. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (citing Vivid Techs. Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999)).
`
`The parties’ claim construction dispute at trial focuses on the meaning
`
`of the terms “primary character” and “secondary character,” as recited in
`
`each of independent claims 1, 3, and 4. See, e.g., Tr. 32:23–25, 33:10–12
`
`(counsel for Patent Owner arguing that its constructions were offered “in
`
`anticipation of potential new arguments” and that those arguments were in
`
`fact presented in Petitioner’s Reply). We interpret claim terms to the extent
`
`necessary to resolve the controversy before us. See Nidec Motor Corp., 868
`
`F.3d 1013 at 1017. Accordingly, we construe below the terms “primary
`
`character” and “secondary character” in order to resolve the parties’ claim
`
`construction dispute. We further determine that construction of additional
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`terms is not necessary for our analysis and, therefore, do not construe any
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`additional terms. See id.
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`2.
`
`Primary character and secondary character
`
`Patent Owner asserts the term “primary character” should be
`
`construed as “a key character assigned to be selectable in a default state.”
`
`PO Resp. 21–23 (citing Ex. 2005 ¶¶ 30–38); Tr. 35:1–22. Patent Owner
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`further asserts the term “secondary character” should be construed as “a key
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`character assigned to be selectable only in a second state.” Id.
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`Petitioner contends that “the plain meaning is appropriate” for the
`
`terms “primary character” and “secondary character.” Reply 24. Petitioner
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`elaborates, “their plain meaning . . . is that the primary characters are ones
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`that appear in the default state, and the secondary characters are ones that
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`appear in the secondary state.” Tr. 4:25–5:2.
`
`In determining the broadest reasonable construction of a claim term,
`
`we begin with the language of the claim itself. In re Power Integrations,
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`Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (quoting Amgen Inc. v. Hoechst
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`Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006)) (“[C]laim
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`construction must begin with the words of the claims themselves.”); In re
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`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim
`
`construction analysis, we begin with the claim language.”). Here, claim 1
`
`recites at least one key of a keypad having “a primary character” and “a
`
`plurality of secondary characters.” Ex. 1001, 6:50–51. The claim continues
`
`by defining a “default state” in which the “the primary character” is
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`displayed and is returned “in response to selection of the . . . key.” Id. at
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`6:53–60. Thus, consistent with Patent Owner’s proposed construction,
`
`claim 1 defines a primary character as one that is selectable in the default
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`state. See PO Resp. 21–23 (citing Ex. 2005 ¶¶ 30–38). With respect to
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`“secondary characters,” claim 1 recites a “second state” wherein each of the
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`secondary characters associated with a key is selectable. Ex. 1001, 6:61–
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`7:2. Thus, consistent with Patent Owner’s proposed construction, claim 1
`
`recites a secondary character as one that is selectable in the secondary state.
`
`See PO Resp. 21–23 (citing Ex. 2005 ¶¶ 30–38).
`
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`Central to the parties’ claim construction dispute is a question of
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`whether primary and secondary characters are limited to being selectable
`
`only in particular states. According to Patent Owner, the Specification
`
`describes primary characters as selectable in both the default and secondary
`
`states, whereas secondary characters “are only selectable after the keypad
`
`has entered the second state.” PO. Resp. 22. In support of its position,
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`Patent Owner asserts, “[a]s shown in Figures 1 and 2, primary character ‘5’
`
`is selectable in both the default state (via a selection of short duration), and
`
`the second state (via a selection of long duration). . . . However, secondary
`
`character ‘j’ is only selectable after the keypad has entered the second state.”
`
`Id. (citing Ex. 1001, 3:25–62; 5:10–14; 5:54–66; 6:1–14; Figs. 1, 2).
`
`Conversely, Petitioner contends that primary characters are those that
`
`are selectable in the default state, secondary characters are those that are
`
`selectable in the secondary state, and the Specification provides as an
`
`example the character ‘5’ that is both a primary and secondary character.
`
`Reply 24. Petitioner directs our attention to Table 2 of ’913 Patent, which is
`
`reproduced below.
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`Table 2 depicts “the characters displayed upon a first key selection
`
`corresponding to key 5 thereby providing a second keypad display state as
`
`shown in FIG. 2.” Ex. 1001, 3:34–36. At oral hearing, Petitioner’s counsel
`
`noted that the character ‘5’ is listed in the second column and asserted that,
`
`“Table 2 clearly labels all of those as secondary characters.” Tr. 5:23–24.
`
`The Specification describes primary and secondary characters—as
`
`well as Table 2 upon which Petitioner relies—with respect to Figures 1 and
`
`2, which are reproduced below again for ease of reference.
`
`
`
`Figure 1 depicts a default display state of a keypad 100 with twelve
`
`keys 102, where each key is associated with a primary character 104 and a
`
`plurality of secondary characters 106. Ex. 1001, 3:25–28. The primary
`
`characters in Figure 1 are the numbers and symbols displayed on the keys of
`
`the keypad. Id. at 3:28–31. The secondary characters in Figure 1 are the
`
`letters displayed in groups below each key. Id. at 3:31–37. Significantly,
`
`although “[t]he secondary characters 106 associated with each key are
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`shown in groups adjacent the respective key,” the secondary characters are
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`not shown as selectable in the default state (i.e., Figure 1). Id. at 3:31–33.
`
`Rather, consistent with Patent Owner’s argument, the secondary characters
`
`are only shown in Figure 1 as becoming selectable upon entering the second
`
`state, depicted in Figure 2. Id. at 3:41–52; 4:3–6 (“The dynamic keypad
`
`states illustrated in FIG. 1 and FIG. 2 provide a method of quick and
`
`accurate character input wherein secondary characters are available with
`
`only two key selections.”) (emphasis added).
`
`Figure 2 depicts a second display state of the keypad after a first key
`
`selection by a user. Id. at 3:42–43. The Specification describes the second
`
`state shown in Figure 5 as depicting secondary characters ‘j’, ‘k’, and ‘l’
`
`each to be displayed on keys adjacent to “the key associated with the
`
`primary character ‘5’.” Id. at 3:44–52. Contrary to Petitioner’s argument,
`
`this passage of the Specification does not describe the character ‘5’ as a
`
`secondary character. The character ‘5’ in Figure 2 bears the label 104,
`
`which the Specification designates “a primary character 104.” Id. at 3:27.
`
`The Specification continues, “the remaining keys have displayed upon them
`
`further characters 200 which are useful for text entry.” Id. at 3:52–57.
`
`Thus, the Specification discloses that the second state shown in Figure 2
`
`depicts a primary character, secondary characters, and “further characters.”
`
`Turning to Table 2, the Specification’s textual description of this table
`
`refers to its contents broadly as characters, and not merely as secondary
`
`characters. See, e.g., id. at 3:34–36 (Table 2 depicts “the characters
`
`displayed upon a first key selection corresponding to key 5 thereby
`
`providing a second keypad display state as shown in FIG. 2”) (emphasis
`
`added); see also id. at 3:42–44 (“the appropriate characters to be displayed
`
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`are retrieved from an appropriate stored KCT (e.g. Table 2) by the
`
`microprocessor”) (emphasis added). This usage of the broader term
`
`“characters” with regard to the second keypad display state is consistent with
`
`the Specification’s description of the second display state shown in Figure 2
`
`as depicting a primary character, the associated secondary characters of that
`
`primary character, and further characters—all of which appear in the second
`
`column of Table 2 under the heading “DISPLAY SECONDARY
`
`CHARACTER.” It further stands in contrast to the immediately preceding
`
`description of Table 1, which identifies the primary and secondary
`
`characters associated with each key under the headings “PRIMARY
`
`CHARACTER” and “SECONDARY CHARACTER,” respectively. Id. at
`
`5:10–14 (“Table 1 thereby provides primary and secondary characters to the
`
`microprocessor which, under the guidance of PRG instructs the touchscreen
`
`to display these characters in the appropriate locations to build up a default
`
`keypad display state corresponding to FIG. 1 and Table 1.”). Contrary to
`
`Petitioner’s argument regarding the character “5” as being both a primary
`
`character and a secondary character, Table 1 identifies that key character
`
`only as a “PRIMARY CHARACTER” and not a “SECONDARY
`
`CHARACTER.” Id. at 4:64.
`
`In light of the foregoing disclosures, we are not persuaded by
`
`Petitioner’s argument that one of ordinary skill would understand the
`
`Table 2 column heading as defining the character “5” as a secondary
`
`character. Rather, we agree with Patent Owner that the Specification only
`
`discloses secondary characters that are selectable in the second state.
`
`Reading these terms in light of how they are described in the ’913 patent, we
`
`agree with and adopt Patent Owner’s construction of the term “primary
`
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`character” as “a key character assigned to be selectable in at least a default
`
`state” and the term “secondary character” as “a key character assigned to be
`
`selectable only in a second state.”5
`
`C.
`
`Level of Ordinary Skill in the Art
`
`Petitioner states that a person of ordinary skill in the art for the
`
`technology in the ’913 patent “would have at least an undergraduate degree
`
`in computer science or computer engineering, or the equivalent” and “at
`
`least two years of experience in designing and/or implementing user
`
`interfaces, or equivalent academic experience.” Pet. 22 (citing Ex. 1002
`
`¶ 30). Patent Owner does not dispute Petitioner’s formulation, presents an
`
`analysis based on Petitioner’s formulation, and argues that, even under
`
`Petitioner’s formulation, Petitioner has failed to show the challenged claims
`
`are unpatentable. PO Resp. 20.
`
`In view of the foregoing, we adopt Petitioner’s formulation of the
`
`level of ordinary skill in the art. Further, this level of ordinary skill is
`
`reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350,
`
`1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of
`
`ordinary skill in the art).
`
`D.
`
`Asserted Obviousness of Claims 1 and 3–16 over Sakata II
`
`1.
`
`Overview of Sakata II
`
`Sakata II is a certified translation of a Japanese published patent
`
`application directed at a device and method for inputting text using a
`
`
`5 Because the Specification describes and depicts primary character “5” as
`selectable in the second state shown in Figure 2, we modify slightly Patent
`Owner’s proposed construction to recite explicitly “at least” and thus not
`arguably limited to only a default state.
`
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`software keyboard shown on a display screen. Ex. 1004, Abst. Figure 8 of
`
`Sakata II is reproduced below.
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`Figure 8 depicts a display of a “soft keyboard” wherein a user may
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`touch and immediately release a key using pen 4 to select the character
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`displayed on the key. Id. at ¶¶ 52–54. If, however, the user touches the key
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`for longer than a “preset threshold time, for example, longer than two
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`seconds,” then drag menu 23 is displayed over the location of the key. Id. at
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`¶¶ 52, 53, 55. The user may then drag pen 4 over the menu 23 to select a
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`character. Id. at ¶ 55. The newly-selected character is input and replaces the
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`character previously-displayed on the key. Id. at ¶¶ 40, 41, 55, Figs. 5–8.
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`2.
`Analysis of Independent Claim 1 and Dependent
`Claims 9–12
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`The final limitation of claim 1 recites: “returning the keypad to the
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`default state.” Ex. 1001, 7:3. The parties agree that Sakata II does not meet
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`this limitation and dispute whether one of ordinary skill in the art would
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`have modified Sakata II to return the keypad to a default state, as claimed.
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`Compare Reply 3 (citing Ex. 1002 ¶ 143) with PO Resp. 16 (citing Ex. 2005
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`¶¶ 68, 81–87).
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`Petitioner contends that “[t]he Sakata II invention performs an extra
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`step” beyond the method of claim 1 because “[r]ather than return to the
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`keyboard’s original ‘default’ state, it substitutes the just selected character
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`key for the initial primary key.” Pet. 38. According to Petitioner, this
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`character substitution is “[t]he only distinction between Sakata II and the
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`’913 patent.” Reply 3. Petitioner and Dr. Cockburn assert, “[o]mitting this
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`extra step is an insubstantial change, and would have been obvious to the
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`[person of ordinary skill in the art].” Id. at 38–39 (citing Ex. 1002 ¶¶ 144–
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`48, 171–81). This is because one of ordinary skill in the art would find it
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`obvious to try an implementation of Sakata II that omits the extra step in
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`light of “general notions of consistency” and a desire to improve efficiency.
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`Pet. 40–43, 53; Reply 15–16.
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`Patent Owner responds that Sakata II does not teach the final
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`limitation of claim 1 because it never returns to the claimed default state.
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`PO Resp. 16 (“Following character selection from a drag menu, the keypad
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`in Sakata II does not return to a default state. That is because, by purposeful
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`design, Sakata II’s keypad does not have a default state.”). According to
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`Patent Owner, “Sakata II is explicitly directed to an adaptive keyboard, in
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`which, following the selection of a special character from a group associated
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`with a particular key, the selected character is displayed on that key after the
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`drag menu disappears, regardless of what was previously displayed on the
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`key.” Id. Patent Owner asserts that this functionality is “designed for a
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`particular need—increased speed and efficiency through personal
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`customization”—and “having a default state as disclosed in the RE’913
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`patent would effectively destroy Sakata II’s intended purpose, as the
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`keyboard would no longer be adaptable to the preferences of the user.”
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`Id. at 31–32 (citing Ex. 2005 ¶¶ 85–89). Patent Owner continues that
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`Sakata II teaches away from the modification Petitioner proposes and that
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`“[i]n essence, Petitioner improperly attempts to use the RE’913 patent as a
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`roadmap to modify Sakata II in a manner that was never contemplated or
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`intended.” Id. at 33–34.
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`Having considered the complete trial record, we determine that
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`Petitioner has failed to establish by a preponderance of the evidence that one
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`of ordinary skill in the art would have modified Sakata II to return the
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`keypad to a default state, as claimed. Applying our constructions of the
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`terms “primary character” and “secondary character” set forth above, we
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`find Sakata II does not return to a “default state” because it does not return
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`after selection of a secondary character to a state in which the primary
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`character is displayed. See Ex. 1004 ¶¶ 40, 41, 55, Figs. 5–8. For instance,
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`Figure 8 of Sakata II depicts the process when a user selects the dynamic
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`key 22 bearing the character ‘mm’ for a longer than a preset threshold time.6
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`Ex. 1004 ¶¶ 52, 53. Upon reaching the threshold time, drag menu 23 is
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`displayed over the location of the key (i.e., entering the second state). Id. at
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`¶ 55. If the user then selects, for instance, the character ‘mg’ (i.e., a
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`secondary character) from the drag menu, Sakata II removes the drag menu
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`and replaces the ‘mm’ character previously displayed on the key (i.e., the
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`primary character) with the newly-selected ‘mg’ character (i.e., a secondary
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`character). See id. at ¶¶ 51, 55, 56. Thus, rather than return to the claimed
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`default state, in which secondary characters are not selectable, Sakata II
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`moves to a third state wherein the selected key displays the most recently
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`selected secondary character instead of the associated primary character.
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`This third state is explicitly designed to meet Sakata II’s stated goal of
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`efficient, user specific character recognition. As Patent Owner correctly
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`states, “Sakata II explains that there was a ‘heavy burden’ associated with
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`requiring users to search for desired characters from a large list of
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`characters.” PO Resp. 29 (citing Ex. 1004 ¶¶ 7–8; Ex. 2006, 151:16–152:5).
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`Given this burden, Sakata II states that its objective “is to enable a selective
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`input of the special characters and symbols described above by an easy
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`operation.” Ex. 1004 ¶ 8. Sakata II attributes improved efficiency in part to
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`its character substitution because “when the same special character or
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`6 For purposes of this illustration only, we assume, but do not find, that the
`character ‘mm’ meets the claimed “primary character.”
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`symbol is selected again, selective input can be carried out quickly without
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`having to perform [the] dragging operation.” Id. at ¶ 51.
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`It is against this backdrop that we evaluate Petitioner’s argument that
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`one of ordinary skill in the art would have found it obvious to try an
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`implementation of Sakata II omitting its character substitution. In so doing,
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`we are particularly mindful of the danger of relying on impermissible
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`hindsight. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
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`(cautioning against the use of hindsight).
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`Petitioner’s obvious-to-try rationale is predicated upon its assertion
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`that one of ordinary skill would have been motivated to try the proposed
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`modification for two reasons: (i) “general notions of consistency” and (ii) a
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`desire to improve efficiency. Pet. 40–43, 53; Reply 15–16. With regard to
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`consistency, Petitioner argues that an artisan of ordinary skill at the time
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`would have been familiar with the “golden rule” of interface design, which
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`according to Petitioner, states that “‘[t]he same information should be
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`presented in the same location on all screens’ in order to ‘facilitate
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`recognition’ of a particular design element.” Reply 8 (citing Ex. 1021, 132).
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`Petitioner, relying on Dr. Cockburn, asserts that Sakata II’s dynamic keys
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`“violate” this rule because “[i]f the set of characters displayed on the
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`keyboard are changing, then at least some element of consistency is being
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`compromised and a designer would be wary of that.” Id. at 10–11 (citing
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`Ex. 2006, 241:14–23, 37:6–23). Conversely, Patent Owner, relying on its
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`declarant Dr. Porter, states that an artisan of ordinary skill at the time would
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`have “understood ‘consistency’ to refer to a wide variety of concepts,
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`including consistent responses when pressing the same button, consistent
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`actions when carrying out a particular function, and consistent navigation
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`methods across all features.”’ PO Resp. 62 (citing Ex. 2005 ¶¶ 161–163).
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`Having considered the complete trial record, we determine Petitioner
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`and Dr. Cockburn do not explain persuasively why an ordinarily-skilled
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`artisan would have considered Sakata II’s character substitution to be a
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`“violation” of the “golden rule” of consistency. For instance, a reference
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`cited by Dr. Cockburn for this golden rule states merely, “Strive for
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`consistency. . . . Consistent sequences of actions should be required in
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`similar situations, identical terminology should be used in prompts, menus,
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`and help screens, and consistent commands should be employed
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`throughout.” Ex 1020, 61. Petitioner and Dr. Cockburn fail to explain
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`persuasively why Sakata II’s consistent operation of entering the selected
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`character and the