ASUSTeK Computer Inc.v.ExoTablet Ltd.

Patent Trial and Appeal Board

Apr 23, 2015

11849454 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov
571-272-7822 
Paper 6
Date Entered: April 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ASUSTEK COMPUTER INC.,
Petitioner,

v.

EXOTABLET, LTD.,
Patent Owner.
____________

Case IPR2015-00041
Patent 7,477,919 B2
____________

Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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BACKGROUND
ASUSTeK Computer Inc. (“Petitioner”) filed a Petition, Paper 1
(“Pet.”), to institute an inter partes review of claims 1–4, 6, 7, 14, and 19
(the “challenged claims”) of U.S. Patent No. 7,477,919 B2 (“the ’919
Patent”) (Ex. 1101). 35 U.S.C. § 311. ExoTablet, Ltd. (“Patent Owner”) did
not file a Preliminary Response.
For the reasons described below, we do not institute an inter partes
review of the challenged claims based on the grounds identified in the
Petition.
PENDING LITIGATION
The Petition states that on April 16, 2014, Petitioner filed a complaint
for declaratory judgment of non-infringement of the ’919 Patent in ASUS
Computer Int’l v. ExoTablet, Ltd., Case No 4:14-cv-01743, in the Northern
District of California, that Patent Owner answered and counter-claimed
alleging infringement of the ’919 Patent, and that Petitioner then filed a
counterclaim alleging invalidity of the ’919 Patent. Pet. 1.
In IPR2015-00043 and IPR2015-00046, Petitioner also has challenged
the patentability of the same claims of the ’919 Patent as those challenged in
this Petition.
THE ’919 PATENT (EXHIBIT 1101)
The ’919 Patent discloses an input/output device that has a phone port
for connecting to a cell or other portable phone. Ex. 1101, col. 2, ll. 1–2.
The device has input components, such as a keyboard, and output
components, such as a screen, that are easier for a person to use than the
small keypad and screen available on a cell phone. Id. at col. 2, ll. 3–9.
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Signals representing information or commands a user supplies with the input
components are sent via the phone port to the phone, which transmits
wireless signals to the intended destination device. Id. at col. 2, ll. 10–13.
The phone also receives wireless signals, which are sent through the phone
port of the input/output device to be displayed as text or images on the
screen. Id. at col. 2, ll. 13–16.
The input/output device generally has a housing that houses (i) the
input components, e.g., a microphone or keyboard, (ii) the output
components, e.g., a screen or speaker, (iii) a data storage device, e.g., a hard
drive that can store a browser, email, and wireless application protocol,
(iv) a processor, and (v) a phone interface having a support member for the
portable phone and the phone port. Id. at col. 2, ll. 17–26. A modem also
can be provided for use with a portable phone that does not have one. Id. at
col. 2, ll. 21–22. A user engaged in a conversation on a portable phone can
insert the phone into the phone interface on the device to bring up a web
page or view other data on its display screen and use the keyboard or another
input component to enter data, such as a website address, email messages,
personal information for making online purchases, a file location on a
remote computer, or control functions. Id. at col. 4, ll. 36–57. The phone
transmits wireless data representing the data to the intended destination and
receives wireless signals that are communicated to the device, which
processes the signals to display text and images or to provide audible output.
Id. at col. 4, l. 57–col. 5, l. 5. The device can be provided with minimum
functionality to perform input/output operations, or can be provided with
additional functionalities, e.g., the browser functionality, a video card,
additional storage drives, a scanner, printer, and Bluetooth functionality. Id.
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at col. 6, ll. 7–24, 28–35. The device can be powered, e.g., by photovoltaic
cells, or by a 120/240V line source through a detachable power cord. Id. at
col. 6, ll. 25–28.
The ’919 Patent describes a first exemplary embodiment in which the
housing has the shape and size of a portable computer and the support
member is formed by (i) a frame, e.g., a solid, perforated or lattice frame that
may be elastic to fit different sized phones, having a bottom or side wall
with the port disposed thereon pivotally mounted to the housing so that the
frame pivots into an out of the housing opening, or (ii) a slot formed in the
base housing section, or (iii) a slot formed in the pivotal housing section, or
(iv) a base plate slidably attached to the housing at an opening so that the
base plate slides into and out of the housing, or a retractable arm attached to
the housing so that the arm slides out of the opening to laterally support the
phone, or (v) a base plate pivotally mounted to the housing at an opening so
that the base plate pivots into and out of the housing, or a pivotably
retractable arm attached to the housing at an opening so that the arm pivots.
Id. at col. 2, ll. 30–59.
The ’919 Patent discloses a second exemplary embodiment in which
the slot has a channel for receiving the portable phone, with the support
member formed by one of the walls defining the slot or channel. Id. at
col. 2, ll. 60–64. A third exemplary embodiment, similar to the second
includes an adapter sleeve that receives and holds the phone so that the
phone can be slid into and out of the sleeve and slot as desired. Id. at col 2,
l. 64–col. 3, l. 3.
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ILLUSTRATIVE CLAIM
Claim 1 is illustrative:

1. An input/output device for a mobile telephone
providing
a handheld, wirelessly portable, enhanced user interface
for the mobile telephone having a display screen,
comprising:
a housing sized and configured to be conveniently
carried by hand;
an electronic display screen mounted to or
enclosed in the housing that is larger than the
display screen on the mobile telephone;
a user operable input device mounted to or
enclosed in the housing for receiving user
commands for controlling the mobile telephone
while the input/output device is handheld and
wirelessly portable;
a cradle mounted to or enclosed in the housing
configured for physically receiving and holding
the mobile telephone;
a communication port mounted to or enclosed in
the housing for communicating with the mobile
telephone when the mobile telephone is held by
the cradle;
wherein the input/output device is configured to
physically hold and transport the mobile
telephone while the input/output device is
handheld, the input device is used to control the
mobile telephone, and the enlarged display
screen displays information supplied by the
mobile telephone; and
wherein the mobile telephone input/output device
holding the mobile telephone is configured to
be conveniently operated while handheld and
used as an integrated wireless communication
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device in which the mobile telephone engages
in wireless communications while the
input/output device operates as a handheld,
wirelessly portable, enhanced user interface for
the mobile telephone.
BASIS OF PETITION
The face of the ’919 Patent states that it issued from U.S. Patent
Application No. 11/849,454 filed on September 4, 2007 and that it is a
continuation of U.S. Patent Application No. 11/295,332 (“the ’332 Appl.”)
filed on January 23, 2006. No other related application data or priority
information appears on the face of the ’919 Patent. Petitioner notes that the
’332 Appl. claims to be a continuation of U.S. Patent Application
10/247,661 filed on September 19, 2002, which claims priority to
provisional application No. 60/323,661 filed on Sept. 20, 2001. Pet. 3.
Petitioner also notes that in a sworn declaration, which was filed in the
related lawsuit in the Northern District of California, inventor Peter Warren
asserts that he conceived of the claimed subject matter no earlier than 2001.
Id. (citing Ex. 1115 (“Warren Decl.”) ¶ 2).
Petitioner purports to assert the following two challenges to the
patentability of the challenged claims:
Claims 1, 2, 3, 4, 6, 7, 14, and 19 are anticipated under 35 U.S.C.
§ 102(a) and (b) by Kumar1 or obvious under 35 U.S.C. § 103(a) over
Kumar alone or in view of Kahn2; and
Claims 1, 2, 3, 4, 7, 14, and 19 are anticipated under 35 U.S.C.
§ 102(a), (b) and (e) by, or obvious under 35 U.S.C. § 103(a) over, Lebby.3

1 WO 00/60450, publ. Oct. 12, 2000 (Ex. 1102).
2 U.S. Patent No. 6,505,055 B1, filed May 1, 1998, issued Jan. 7, 2003 (Ex.
1104).
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Notwithstanding Petitioner’s characterization that it asserts two
challenges, Petitioner actually asserts the following challenges:
Claims Statutory Ground Basis
1, 2, 3, 4, 6, 7, 14, 19 § 102 Kumar
1, 2, 3, 4, 6, 7, 14, 19 § 103 Kumar
1, 2, 3, 4, 6, 7, 14, 19 § 103 Kumar and Kahn
1, 2, 3, 4, 7, 14, 19 § 102 Lebby
1, 2, 3, 4, 7, 14, 19 § 103 Lebby
CLAIM CONSTRUCTION
Petitioner proposes constructions for the following terms used in the
claims: cradle, channel, concealed, and power source. In an inter partes
review, claim terms in an unexpired patent are interpreted according to their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
778 F.3d 1271, 1278 (Fed. Cir. 2015). If an inventor acts as his or her own
lexicographer, the definition must be set forth in the specification with
reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The terms also
are given their ordinary and customary meaning as would be understood by
one of ordinary skill in the art in the context of the disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Based on the
current record, we interpret certain terms of the challenged claims as
follows.

3 U.S. Patent No. 6,115,618, filed Feb. 24, 1998, issued Sept. 5, 2000 (Ex.
1103).
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Cradle
Petitioner proposes that the broadest reasonable interpretation for the
term cradle in claim 1 is “a mechanical support.” Pet. 10. As Petitioner
notes, “cradle” is used only once in the Specification of the ’919 Patent. Id.
Column 8, lines 31–32, of the ’919 Patent states “the adapter 160 can have a
curved top surface that forms a cradle for a portable phone with a curved
bottom.” Petitioner’s construction is so broad that it would encompass any
mechanical support, which is far broader than the way the term is used in the
Specification (see id.). We note that the term “cradle” has been employed
extensively in the context of a resting place for telephone receivers.
Merriam-Webster Online Dictionary and Thesaurus, http://www.merriam-
webster.com/dictionary/cradle (Ex. 3001). Thus, in the context of the ’919
Patent we construe “cradle” as a structure shaped to support a mobile
telephone.
Channel
Patent Owner proposes that the term “channel” should be given its
broadest reasonable interpretation, but does not propose a specific
construction. Pet. 10–11. The references in the Specification to the housing
having a “slot or channel” (Ex. 1101, col. 2. ll. 62, 67) suggest that the terms
are used interchangeably in the ’919 Patent. The Specification states that the
slot or channel is for receiving the portable phone (id. at col. 2, l. 62), and
that the support member is formed by a wall defining a channel in the
housing for receiving the portable phone (id. at col. 2, ll. 63–64, col. 8,
ll. 37–40, Fig. 13). Thus, we construe the term “channel” to mean a
structure, such as a slot, that receives the mobile telephone.
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Concealed
Petitioner notes that the term “concealed,” which appears in claim 7 is
not used in the Specification. Pet. 11. We agree with Petitioner’s proposed
construction that “concealed” as used in claim 7 means hidden from view.
Power source
Petitioner notes that the Specification does not use the term “power
source,” but discloses that a power supply for the device can be provided by
a detachable power cord for connection to 120/240V line source, by
photovoltaic cells, or by combinations thereof. Petitioner proposes that the
term “power source” in claim 14 be construed to mean “a source of power
including any connection for connecting to a power outlet though which
power can be transmitted.” Pet. 11–12. We adopt Petitioner’s proposed
construction.
ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
Petitioner’s challenges in this Petition are based primarily on Kumar
and Lebby. Kumar discloses a hand-held device for mobile computing with
a detachable handset unit and portable docking display unit. Ex. 1102,
Abstract. The portable docking display unit is dimensioned to receive
docking of the detachable handset, which can function as a wireless phone.
Id. at Abstract, 3. The detachable unit has slots to mate the detachable unit
to the docking display unit. Id. at 5. For applications requiring a larger
display and keyboard, the detachable unit is docked and provides power to
the docking display unit. Id. at 3. Kumar illustrates the docking display unit
as a clamshell unit including an auxiliary display in a lid portion and an
auxiliary keyboard in a base portion that face each other when closed. Id. at
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5, Fig. 1. The lid of the docking display unit contains a communication jack
and a power jack, such an AC adapter/charger. Id.
Lebby discloses a portable electronic device, such as a cellular
telephone, with a removable display including a virtual image display
mounted to a power source. Ex. 1103, col. 2, ll. 12–14, 41–52. The device
has a battery receptacle electrically interfacing with the portable electronic
device, and a communication port that serves as a means for communicating
signals between the display and the portable device. Id. at Abstract. The
display is detachably mounted to a battery source and connected to control
electronics for viewing a virtual image generated by the portable electronics
equipment. Id. at col. 2, ll. 13–16. The display includes control functions to
permit operation of the display by the user and provide a user interface with
the virtual image of the portable electronic device. Id. at col. 2, ll. 16–20.
Petitioner cites Kumar as disclosing or suggesting all of the
limitations of claims 1–4, 6, 7, 14, and 19. Pet. 1–3. Petitioner also
specifically discusses the combination of Kumar and Kahn in the context of
claim 14. Id. at 36–37. Petitioner cites Lebby as disclosing or suggesting all
of the limitations of claims 1–4, 7, 14, and 19. Pet. 38–60.
The patent rules promulgated for America Invents Act (AIA) post-
grant proceedings, including those pertaining to institution, are “construed to
secure the just, speedy, and inexpensive resolution of every proceeding.”
37 C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b) (regulations for AIA post-
grant proceedings take into account “the efficient administration of the
Office” and “the ability of the Office to timely complete [instituted]
proceedings”). In IPR2015-00046, we instituted inter partes review on
Petitioner’s challenges to the same claims as those challenged in this Petition
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based on Barvesten4 alone (claims 1–4, 6, 7, 14, and 19), on Kahn alone
(claims 1–3, 14, and 19), the combination of Kahn and Chitturi5 (claim 4)
and the combination of Kahn and Kumar (claim 7). Petitioner cites the
references in this Petition as disclosing the same features of the challenged
claims as those features Petitioner argues are found in the references cited in
IPR2015-00046. Therefore, we exercise our discretion and, to ensure timely
completion of inter partes review of claims 1–4, 6, 7, 14, and 19 in 
IPR2015-00046, we do not institute an additional review of the claims here.
See 37 C.F.R. § 42.108(a).
SUMMARY
We do not institute inter partes review in IPR2015-00041.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is DENIED.

4 U.S. Patent No. 6,714,802 B1, filed Sept. 21, 2000, issued Mar. 30, 2004.
5 U.S. Patent No. 6,489,932 B1, filed Sept. 30, 1999, issued Dec. 3, 2002.
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PETITIONER:
Andrew Y. Piatnicia
Daniel W. Bedell
PIATNICIA LEGAL
andy@piatnicialegal.com
daniel@piatnicialegal.com
IP@piatnicialegal.com

PATENT OWNER:
Stephen R. Risley
Robert Blaha
SMITH RISLEY TEMPEL SANTOS LLC
srisley@srtslaw.com
rblaha@srtslaw.com