Nintendo of America Inc.v.Motion Games, LLC

Patent Trial and Appeal Board

May 15, 2015

08487211 (P.T.A.B. May. 15, 2015)

Trials@uspto.gov Paper 51
571-272-7822 Entered: May 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NINTENDO OF AMERICA INC.,
Petitioner,

v.

MOTION GAMES, LLC,
Patent Owner.
____________

Case IPR2014-00164
Patent No. 6,167,607 B1
____________

Before MEREDITH C. PETRAVICK, BRYAN F. MOORE, and
TRENTON A. WARD, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C §318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Nintendo of America Inc. (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) to institute an inter partes review of claims 1, 2, 15–17, 25, 26, 34,
and 39–41 (“the challenged claims”) of U.S. Patent No. 6,167,607 B1 (“the
’607 patent”). On May 19, 2014, pursuant to 35 U.S.C. § 314, we instituted
this trial as to all of the challenged claims on the sole proposed ground under
35 U.S.C. § 103. Paper 12 (“Dec. to Inst.”). Motion Games, LLC (“Patent
Owner”) filed a Patent Owner Response (Paper 23, “PO Resp.”), and
Petitioner filed a Reply (Paper 28, “Pet. Reply”).
Patent Owner filed a Motion to Exclude on December 10, 2014.
Paper 33 (“Mot.”). Petitioner filed an Opposition to Patent Owner’s Motion
to Exclude (Paper 38, “Opp.”), and Patent Owner filed a Reply to
Petitioner’s Opposition (Paper 42, “Reply to Opp.”).
An oral hearing in this proceeding was held on January 16, 2015. A
transcript of the hearing is included in the record. Paper 48 (“Tr.”).
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 2, 15–17, 25, 26, 34, and 39–
41 of the ’607 patent are unpatentable.

A. The ’607 Patent
The ’607 patent, titled “Vision Target Based Assembly,” issued on
January 2, 2001, based on Application No. 08/487,211, which was filed on
June 7, 1995. Application No. 08/487,211 claims priority through a chain of
related applications to Application No. 06/262,492, filed on May 11, 1981.
Ex. 1001, 1.
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The ’607 patent relates to methods and systems for fabricating objects
using targets applied to the object. Id. at Abstract. The ’607 patent’s
specification describes numerous embodiments of using targets to control
machines and objects during fabrication processes. One embodiment,
depicted in Figure 5, relates to using targets to determine the attitude, shape,
or dimension of the object before and after a forming process, and using that
information for further handling, assembly, inspecting, or working of the
object. See id. at col. 2, ll. 42–47. Figure 5 is reproduced below.

Figure 5 depicts the use of target points 700 over part 702.

Figure 5 shows part 702, such as a metal body panel or aircraft panel, before
and after forming process 706. See id. at col. 9, l. 62–col. 10, l. 31. Prior to
forming process 706, part 702 is imprinted with a dot target pattern on one
inch centers through the total width, and camera 708 is used to determine the
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patten of targets. Id. at col. 10, ll. 7–11. After forming process 706, camera
710 views targets 700 to determine if their pattern has changed in order to
determine any irregularities in the forming process and to establish a “new
data base” for part 702. Id. at col. 10, ll. 15-20. The new data base and
target dots on the part then are used in the handing of the part during further
forming processes, such as handling by handler 718. See id. at col. 10, ll.
23–49.

B. Illustrative Claims
Claims 1 and 25 of the ’607 patent are illustrative of the claims at
issue and read as follows:
1. A method of creating a data base for an object
having at least first and second discrete targets
thereon in a pattern, said method comprising:
electro-optically sensing, with an electro-optical
sensing means, the pattern of said first target and said
second target; and
using a processing means, creating a data base of
said object using said sensed pattern of said first target
and said second target, said created data base
comprising said sensed pattern of said first and second
targets.

25. Apparatus for creating a data base for an object
having at least first and second discrete targets
thereon in a pattern, said apparatus comprising:
electro-optical sensing means for sensing the
pattern of said first target and said second target; and
processing means for creating a data base of said
object using said sensed pattern of said first target and
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said second target, said data base comprising said
sensed pattern of said target and second targets.

C. Related Proceedings
The ’607 patent is involved in Motion Games, LLC v. Nintendo Co.,
LTD; Nintendo of America Inc., Retro Studios, Inc., Rent-A-Center, Inc., and
Gamestop Corp., No. 6:12-cv-878, filed in the U.S. District Court for the
Eastern District of Texas.
Petitioner also filed petitions for inter partes review of U.S. Patent
No. 7,756,297 B2 (IPR2014-00165) and U.S. Patent No. 7,843,429 B2
(IPR2014-00166). The proceedings in IPR2014-00165 and IPR2014-00166
were terminated due to settlement between the parties.

II. ANALYSIS
A. Claim Construction
Consistent with the statute and legislative history of the America
Invents Act (AIA)1, the Board interprets claims using the 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, 1279–81 (Fed. Cir. 2015). Under the broadest reasonable
construction standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).

1 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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i. “creating a data base of said object”
Claim 1 recites a step of “creating a data base of said object using said
sensed pattern of said first target and said second target, said created data
base comprising said sensed pattern of said first and second targets.” Claim
25 recites “creating a data base of said object using said sensed pattern of
said first target and said second target, said data base comprising said sensed
pattern of said first and second targets” as the function of a means-plus-
function limitation.
Patent Owner argues that “creating a data base” should be construed
to mean “storing as data a sensed pattern representative of a physical object
without reference to or knowledge of the object itself” because, according to
Patent Owner, during prosecution the plain and ordinary meaning of
“creating a data base” was disclaimed explicitly and “creating a data base”
was limited to its proposed construction. PO Resp. 8–10. To support its
argument, Patent Owner cites to this statement made in an Amendment, filed
on May 22, 2000 (Ex. 1005, 318–320, “May 22 Amendment”): “it is the
pattern itself which now stands for the object and which is used regardless of
a correlation to the actual object, and which is neither disclosed nor made
obvious by the Bales paper.” Id. at 9. Patent Owner argues that “a
construction that disregards an explicit disclaimer is not reasonable, and
therefore should not be considered the broadest reasonable construction.”
Id. at 9–10.
Petitioner argues that the broadest reasonable interpretation of
“creating a data base” requires, “at a minimum, storing the sensed data.”
Pet. Reply 1–2 (citing Dec. to Inst. 7 (stating that “[c]reating a data base
requires, at a minimum, storing the sensed data”)). Petitioner also argues
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that the May 22 Amendment does not support Patent Owner’s alleged
disclaimer (Pet. Reply 5–6). According to Petitioner, the prosecution history
and the May 22 Amendment “does not define or limit the ‘database’ to one
which does not refer to or have knowledge of the physical object, but rather
only states that the ‘data base’ can be used without reference to or
knowledge of the physical object itself.” Id. at 6 (emphasis original).
Petitioner further argues that neither the claims nor the Specification support
Patent Owner’s construction, but instead supports a construction of “creating
a data base” as requiring, “at a minimum, storing the sensed data.” Id. at 1–
5.
Regardless of whether “a construction that disregards an explicit
disclaimer is not reasonable” (PO Resp. 9–10), under the broadest
reasonable construction standard, we are not persuaded that the May 22
Amendment includes the alleged explicit disclaimer. Only “a clear and
unmistakable disavowal during prosecution overcomes the heavy
presumption that claims terms carry their full ordinary and customary
meaning.” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095
(Fed. Cir. 2013) (internal quotation marks omitted); see Omega Eng’g, Inc.,
v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003) (requiring that “the
alleged disavowing statements to be both so clear as to show reasonable
clarity and deliberateness, and so unmistakable as to be unambiguous
evidence of disclaimer” (internal citations omitted)).
In the May 22 Amendment, the claims of the ’607 patent were
amended to include requirements that the object had discrete targets in a
pattern; that the pattern was sensed by the sensing means; and that the data
base comprised the sensed pattern. E.g, see Ex. 1005, 323. The May 22
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Amendment also included arguments that the amended claims overcame a
rejection under 35 U.S.C. § 103 over the Bales paper.2 The pertinent portion
of the arguments of the May 22 Amendment is reproduced below.
In the present invention, an object is provided with at
least first and second targets thereon which are in a pattern.
This pattern may be known (targets dots on one inch centers) or
unknown (for example applied to the object at random
locations). Whatever the pattern, it is the pattern which is then
sensed electro-optically, and this sensed pattern then becomes a
data base for the object. This pattern data base can then be
used in a number of ways, such as to handle the object or to
track changes made to the object, all without reference to or
knowledge of the physical object itself. . . .
The Bales paper does not disclose the use of discrete
targets in a pattern as a data base. . . The suggested data base
that the Examiner proposes would be obvious from the Bales
paper is one which merely correlates targets to the object,
which in the present invention there is no such correlation
(though it could be done for additional reasons, as noted in
certain dependent claims, but this would be another, different,
data base.) Rather, it is the pattern itself which now stands for
the object and which is used regardless of a correlation to the
actual object, and which is neither disclosed nor made obvious
by the Bales paper.
Ex. 1005, 319–320 (emphases added).
As can been seen from the above, the May 22 Amendment states that
the data base is created from the sensed pattern of the discrete targets and
states that it could be used without reference to or knowledge of the object
itself or used regardless of a correlation to the actual object. Thus, we are
not persuaded by Patent Owner that the May 22, 2000 Amendment clearly

2 BALES ET AL., NASA TECHNICAL PAPER 1819, MARKING PARTS TO AID
ROBOT VISION (Apr. 1981).
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and unmistakably disclaims a data base that stores the sensed pattern with
reference to or knowledge of the physical object itself.
We are persuaded by Petitioner that the broadest reasonable
construction in light of the Specification of “creating a data base of said
object” requires, at a minimum, storing the sensed pattern of the first and
second targets. This construction is consistent with the language of the
claims, themselves, and with the Specification.
Independent claims 1 and 25 recite that the data base is created using
the sensed pattern of the first and second targets and that the data base
“compris[es] said sensed pattern of said first and second targets.” Thus, the
language of the claims themselves requires storing the sensed pattern of said
first and second targets in the data base. We see nothing in the language of
claims 1 and 25 that additionally requires that the sensed pattern is stored
without reference to or knowledge of the object, itself, or additionally
requires that the sensed pattern is later used without reference to or
knowledge of the object, itself. Claims 1 and 25 also contain no
requirements as to how the data base is used in further processing the object
or precludes using the data base in further processing that requires reference
to or knowledge of the object, itself.
We also see nothing in the Specification that requires that the sensed
pattern be stored in the data base without reference to or knowledge of the
object, itself. Although Patent Owner argues that the ’607 patent “teaches
multiple data bases; some requiring correlation between observed points and
known targets, and some do not” and extolls the benefits of a non-correlated
data base, Patent Owner does not provide any specific citation as to where
the ’607 patent discloses a non-correlated data base or the extolled benefits.
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PO Resp. 4–6. Patent Owner, however, does cite to column 10, lines 7–31,
as disclosing, generally, storing data related to the arrangement or
configuration of targets on an object. See id. at 4–5.
Contrary to Patent Owner’s argument, column 10, lines 7–31, of the
Specification of the ’607 patent do not support Patent Owner’s proposed
construction, but instead support Petitioner’s proposed construction. The
cited passage states that, after a forming process, camera means 710 again
monitors targets 700 to sense the new pattern and to “establish the new data
base for the part.” Ex. 1001, col. 10, ll. 15–20. The ’607 patent then
describes that the data base then can be used for further handling and
assembling processes. See id. at col. 10, ll. 15–58. Contrary to Patent
Owner’s argument, the further handling and assembling processes may
require reference to or knowledge of the object itself. See col. 2, ll. 42–50
(“The location of the targets after forming are then determined. From this
determined location, the attitude, shape, or dimensions of the object or
portions thereof are also determined. Depending upon the determined data,
the handling, [assembling], inspecting, or working the object is then
effected.”); col. 1, ll. 52–54 (“To use targets one must know the part feature
database relative to the target points on the part.”). This is consistent with a
construction of “creating a data base of the object” as requiring, at a
minimum, storing the sensed pattern of the first and second targets.
Given the above, we determine that the broadest reasonable
construction in light of the Specification of “creating a data base of said
object” requires, at a minimum, storing the sensed pattern of the first and
second targets and does not preclude that the sensed pattern is stored with
reference to or knowledge of the object, itself.
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ii. “processing means” and “processing means for creating a data base of
said object using said sensed pattern of said first target and said second
target, said data base comprising said sensed pattern of said first and
second targets”
Claim 1 recites “a processing means” in a step of creating a data base
of said object using said sensed pattern of said first target and said second
target. Claim 25 recites “processing means for creating a data base of said
object using said sensed pattern of said first target and said second target,
said data base comprising said sensed pattern of said first and second
targets.”
Petitioner argues that the “processing means” should be interpreted as
means-plus-function language under 35 U.S.C. § 112, sixth paragraph. 3
Pet. 4. Petitioner argues that the corresponding structure is a “computer.”
Id. Patent Owner, likewise, indicated during oral hearing that the claimed
processing means are equivalent to a general purpose computer. See Tr. 35–
36 (Patent Owner’s counsel stated: “All you are doing is sticking data into a
database.”)
These limitations are in “means-plus-function” form. The sixth
paragraph of § 112 governs the scope and meaning of means-plus-function
claim limitations. This paragraph provides:
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding

3 Section 4(c) of the AIA, re-designated 35 U.S.C. § 112, sixth paragraph, as
35 U.S.C. § 112 (f). Because the ’607 patent has a filing date prior to
September 16, 2012, the effective date of the AIA, we refer to the pre-AIA
version of 35 U.S.C. § 112.
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structure, material, or acts described in the
specification and equivalents thereof.
(emphasis added).
For a computer-implemented means-plus-function claim limitation
under 35 U.S.C. § 112, sixth paragraph, the specification must disclose a
specific algorithm used by the computer to perform the recited function.
Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013);
In re Katz, 639 F.3d 1303, 1315 (Fed. Cir. 2011); Aristocrat Techs.
Australia Pty Ltd. v. Int’l Game Techs., Inc., 521 F.3d 1328, 1333 (Fed. Cir.
2008). A narrow exception to this rule applies if the function is a generic
function, such as “processing,” “receiving,” and “storing,” and can be
performed by any general-purpose computer without special programming.
In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011).
We determine that the “processing means” is a limitation in means-
plus-function form and is construed to cover the corresponding structure
described in the ’607 patent and equivalents. The function of the
“processing means” is “creating a data base for an object using said sensed
pattern of said first target and said second target.” As discussed above, we
determined that creating a data base requires, at a minimum, storing the
sensed pattern. Storing the pattern is a generic function that can be achieved
by any general purpose computer without special programming. Therefore,
it is not necessary for the ’607 patent to disclose more than a general
purpose computer, such as a specific algorithm for creating the object’s data
base. See In re Katz, 639 F.3d at 1316. The ’607 patent describes a
computer storing target pattern data. Ex. 1001, col. 12, ll. 24–26; see id. at
Fig. 5.
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Given the above, we construe the claimed “processing means” as
requiring a general purpose computer, or equivalents thereof.

B. Obviousness Ground
Petitioner argues that claims 1, 2, 15–17, 25, 26, 34, and 39–41 are
unpatentable under 35 U.S.C. § 103(a) over Hay and Haas. Pet. 17–59.
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
i. Overview of Prior Art
a. Hay
Hay is a U.S. patent titled “Position Detecting Apparatus” and issued
on December 9, 1980. Ex. 1002, 1. Figure 1 of Hay is illustrative and
reproduced below.
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Figure 1 depicts a tunneling machine incorporating a position detecting
apparatus.
Figure 1 depicts a tunneling machine incorporating the position
detecting apparatus. Ex. 1002, col. 1, ll. 36–38. The position detecting
apparatus includes computer 17 remote from the machine, target plane 5
attached to boom 2, and camera 6 positioned to view target plane 5. Id. at
col. 2, l. 65–col. 3, l. 3, col. 3, ll. 13–15, col. 3, ll. 33–38, claim 1. Target
plane 5 includes lines of radiation emitting LEDs defining target points at
their intersections or, alternatively, includes target point source LEDs. Id. at
col. 1, ll. 43–47, col. 2, ll. 7–9, col. 6, ll. 10–12, Fig. 2. Camera 6 is
“preferably a solid-state device” with a “two dimensional array of radiation
sensitive elements.” Id. at col. 3, l. 67–col. 4, l. 8. Camera 6 views target
plane 5 and generates signals indicative of the position of the target points
on the focal plane of the camera. See id. at col. 3, l. 50–col. 4, l. 8.
Computer 17 receives and stores the generated signals. Id. at col. 1, ll. 28–
30; col. 4, ll. 13–34.
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b. Haas
Haas is U.S. patent titled “Apparatus and Method for Analyzing a
Golf Swing and Displaying Results” and issued on January 30, 1979. Ex.
1003, 1. Figure 1A of Haas is reproduced below.

Figure 1A depicts an embodiment of the system of Haas.
Figure 1A depicts an embodiment of the system for analyzing a golf
swing and displaying results. Id. at col. 4, ll. 52–53. A plurality of light
sources, such as light source 18, are affixed to golfer 10 and golf club 14.
Id. at col. 5, ll. 1–6. Electro-optical sensors 16, 16a, 16b, 16c view golfer 10
and golf club 14 (id. at col. 4, ll. 55–61) and output data defining the
position of the light sources (id. at col. 1, ll. 38-41, col. 4, ll. 55–61). Data
collector 44 receives and stores the output data. Id. at col. 5, ll. 28–31. The
stored data is used to generate a representation of the golfer on a display for
analysis of the golfer’s swing. See id. at col. 1, ll. 38–57.
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ii. Independent Claim 1
Petitioner alleges that claim 1 is unpatentable as obvious over the
combination of Hay and Haas. Pet 17–20, 23–25, 27–32. Petitioner argues
that Hay discloses most of the limitations of method claim 1 (id. at 17–20,
27–32) and that, in particular, Hay discloses the step of creating a data base
of the object using the sensed pattern (id. at19 (citing Ex. 1002, col. 1, ll.
28–34, col. 4, ll. 13–33)). Petitioner admits that Hay’s four target points,
which are on the same target plane, may not be considered discrete and
relies upon Haas to cure any deficiency. Pet. 17–18. Petitioner argues that
using discrete targets, as disclosed in Haas, instead of Hay’s target points on
a target plane would be a simple substitution of known elements to obtain a
predictable result. See Pet.18, 25; Ex. 1006 ¶ 66.
Patent Owner argues that Hay and Haas fail to render claim 1 obvious
because neither Hay nor Haas discloses the step of creating a data base of
the object when the step is construed, as proposed by Patent Owner, to
require storing as data a sensed pattern representative of a physical object
without reference to or knowledge of the object itself. PO Resp. 10–24.
Patent Owner’s argument fails from the outset because it is not based
upon the broadest reasonable construction. As discussed above in section
II(A)(i–ii), the broadest reasonable construction of “creating a data base of
said object” requires, at a minimum, storing the sensed pattern of the first
and second targets and of “processing means” requires a general purpose
computer or equivalent. Claim 1, thus, requires, at a minimum, storing the
sensed pattern of the first and second targets using a general purpose
computer, or equivalent. As Petitioner points out, Hay discloses
computer 17 storing signals indicative of the positions of the target points on
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the focal plane of the camera array. See Pet. 19 ((citing Ex. 1002, col. 1, ll.
28–34, col. 4, ll. 13–33), 34–36. Hay, thus, meets the claimed step of
“creating a data base,” when given its broadest reasonable construction.
Upon review of Petitioner’s evidence and analysis, and taking into
account Patent Owner’s additional arguments, discussed below, we
determine that Petitioner has shown by a preponderance of the evidence that
claim 1 is unpatentable under 35 U.S.C. § 103 over Hay and Haas.
iv. Independent Claim 25
Likewise, Petitioner alleges that claim 25 is unpatentable as being
obvious over the combination of Hay and Haas. Pet. 17–20, 23–25, 42–53.
Petitioner argues that Hay discloses most of the limitations of claim 25 (id.
at 17–20, 42–53) and that, in particular, Hay discloses the processing means
for creating the data base of the object (id. at19 (citing Ex. 1002, col. 1, ll.
28–34, col. 4, ll. 13–33)). Petitioner admits that Hay’s four target points,
which are on the same target plane, may not be considered discrete and
relies upon Haas to cure any deficiency. Pet. 17–18. Petitioner argues that
using discrete targets, as disclosed in Haas, instead of Hay’s target points on
a target plane would be a simple substitution of known elements to obtain a
predictable result. See Pet. 18, 25; Ex. 1006 ¶ 66.
Patent Owner again argues that Hay and Haas fail to render claim 25
obvious because neither Hay nor Haas discloses the processing means for
creating a data base of the object when “creating a data base” is construed,
as proposed by Patent Owner, to require storing as data a sensed pattern
representative of a physical object without reference to or knowledge of the
object itself. PO Resp. 10–24.
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Patent Owner’s argument again fails from the outset because it is not
based upon the construction of “processing means for creating a data base of
said object” that we adopted above. As discussed above in section II(A)(ii),
we construed the “processing means for creating a data base” element of
claim 25 as requiring a general purpose computer or equivalent, thereof. As
Petitioner points out, Hay discloses computer 17, which stores signals
indicative of the positions of the target points on the focal plane of the
camera array. See Pet. 19 ((citing Ex. 1002, col. 1, ll. 28–34, col. 4, ll. 13–
33), 34–36. Hay, thus, meets the claimed processing means for creating a
data base of the object, when this claim element is given the construction we
adopted above.
Upon review of Petitioner’s evidence and analysis, and taking into
account Patent Owner’s additional arguments, discussed below, we
determine that Petitioner has shown by a preponderance of the evidence that
claim 25 is unpatentable under 35 U.S.C. § 103 over Hay and Haas.
v. Dependent Claims 2, 15–17, 26, 34, 39, 40, and 41
Patent Owner makes no arguments regarding the additional limitations
recited in dependent claims 2, 15–17, 26, 34, 39, 40, and 41. Upon review
of the Petitioner’s evidence and analysis (Pet. 20–23, 38–42, 53–59), we
determine that Petitioner has shown by a preponderance of the evidence that
the dependent claims are unpatentable. See Dec. to Inst. 11–13(discussing
the disclosures of Hay and Haas with regards to the dependent claims).

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C. Patent Owner’s Additional Arguments
i. Motivation to Combine
Patent Owner argues that Petitioner’s declarant Dr. Welch applied
impermissible hindsight analysis in testifying that one of ordinary skill in the
art would have been motivated to combine Hay and Haas because Dr. Welch
was not able to articulate any motivation to combine the references during
cross-examination. PO Resp. 25–26 (citing Ex. 2005). To support its
argument, Patent Owner quotes Dr. Welch’s statement below:
I think implicit in that is the assumption that a person of
ordinary skill needed a reason to combine that. So they would
have been motivated to combine if they saw a deficiency that
they needed to address . . . What I’m saying is I’m not aware of
any specific deficiency that one would need to address. But if
one of ordinary skill, themselves, thought there was something
they didn’t understand or didn’t see, they could have easily
reached to Haas, or many other things.
Id. at 16 (citing Ex. 2005, 185–186) (emphasis omitted).
Petitioner replies that Patent Owner mischaracterizes Dr. Welch’s
statement (Pet. Reply 10–11 (citing Ex. 2005, 180–181)) and that Dr. Welch
set forth a number of motivations to combine Hay and Haas in his original
and reply declarations (Pet. Reply 11). According to Petitioner, correctly
characterized, Dr. Welch’s statement indicates that a person of ordinary skill
in the art “would not even have to look beyond Hay to achieve the
inventions of the ’607 Patent but that ‘if there was something that they didn’t
see in Hay for some reason, then [Dr. Welch] think[s] Haas probably would
have made that more attractive to them if they did.’” Pet. Reply 10–11
(citing Ex. 2005, 180–181).
We are not persuaded by Patent Owner’s argument because, as
Petitioner argues, it mischaracterizes Dr. Welch’s quoted testimony. Upon
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review of Dr. Welch’s pertinent cross-examination testimony, we agree with
Petitioner that Dr. Welch’s statement indicates that he believes a person of
ordinary skill in the art would not have to look beyond Hay to achieve the
claimed invention, but that Haas provides further evidence as to the
obviousness of the invention. See Ex. 2005, 179–87; Ex. 1012 ¶ 20. We,
thus, are not persuaded by Patent Owner that Dr. Welch applied
impermissible hindsight analysis in testifying that one of ordinary skill in the
art would be motivated to combine Hay and Haas.
ii. Field of Endeavor
Patent Owner argues that one of ordinary skill in the art would not
have been motivated to combine Hay and Haas because they address
different problems in different fields of endeavor. PO Resp. 26. Patent
Owner states, “both involve using cameras to observe targets, but the
similarities stop there” (id. at 27) and argues that “Hay and Haas use
different apparatuses, different algorithms, and attempt to solve different
problems in highly disparate fields of endeavor” (id. at 29).
Petitioner replies that both Hay and Haas are within the computer
vision field and that somebody working within that field would have
knowledge of both. Pet. Reply 11–12. Petitioner argues that even Patent
Owner’s declarant Dr. Bobick admitted that somebody working in the
computer vision field would have knowledge of both types of apparatuses.
Id. at 11 (citing Ex. 1013, 11).
We are persuaded by Petitioner that Hay and Haas are analogous art
because both are within the computer vision field of endeavor. See Pet. 24;
Pet. Reply 11–12. Although Hay and Haas have some differences, both Hay
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and Haas are within the computer vision field and both electro-optically
sense and store target patterns. See Ex. 1006 ¶¶ 64, 67, 70; Ex. 2005, 11–12.
iii. Secondary Considerations
Patent Owner argues that evidence of secondary considerations
outweighs Petitioner’s prior art evidence of obviousness. PO Resp. 30–39.
Patent Owner argues that Petitioner’s own Nintendo Wii embodies the
features of the claims of the ’607 patent and, in particular, embodies the
feature of storing the sensed pattern without reference to or knowledge of
the object on which the target resides. Id. at 31. It is this feature, according
to Patent Owner, that is the basis for the success of the Nintendo Wii. See
id. 35–39.
Petitioner replies that Patent Owner provides insufficient evidence to
establish a nexus between the success of the Nintendo Wii and the claims of
the ’607 patent. Pet. Reply 13–14.
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17–18. To be relevant, evidence of
nonobviousness must be commensurate in scope with the claimed invention.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Thus, to be accorded
substantial weight, there must be a nexus between the merits of the claimed
invention and the evidence of secondary considerations. In re GPAC, 57
F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually
sufficient connection between the objective evidence and the claimed
invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
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We are not persuaded by Patent Owner’s argument because it is not
commensurate with the scope of the claims. Patent Owner’s argument is
based upon the claims of the ’607 patent requiring a feature of storing the
sensed pattern without reference to or knowledge of the object on which the
target resides. As discussed above in section II(A)(i), the claims of the ’607
patent require no such feature.
Further, even if the claims required such a feature, Patent Owner’s
evidence is insufficient to establish that the Nintendo Wii includes such a
feature. Patent Owner relies upon the Declaration of Dr. Bobick to establish
a nexus between the claims of the ’607 patent and the success of the
Nintendo Wii. In testifying the Nintendo Wii is a commercial embodiment
of the ’607 patent, Dr. Bobick, however, states that his opinion is based upon
only limited amounts of information provided in the related district court
proceeding and that he reserves the right to amend or change his opinions.
Ex. 2007 ¶ 84. Dr. Bobick, further, states that his opinion is based upon
Exhibit 2012, which is a chart detailing Patent Owner’s preliminary
infringement contentions in the related district court proceeding. Id. ¶ 86.
Exhibit 2012 is nothing more than attorney argument that the Nintendo Wii
infringes the claims of the ’607 patent and an insufficient basis for
establishing a nexus between the success of the Nintendo Wii and the claims
of the ’607 patent. In order to establish a proper nexus, Patent Owner must
offer “proof that the sales were a direct result of the unique characteristics of
the claimed invention-as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.” In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996).

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C. Motion to Exclude
Patent Owner filed a Motion to Exclude portions of the Reply
Declaration of Dr. Francis Welch and corresponding portions of Petitioner’s
Reply. Mot. 1. Specifically, Patent Owner argues for exclusion of
paragraphs 10–21 of Dr. Welch’s Declaration and corresponding sections II–
IV of Petitioner’s Reply. Id.
As the movant, Patent Owner has the burden of proof to establish that
it is entitled to the requested relief. See 37 C.F.R. § 42.20(C). For the
reasons discussed below, we deny Patent Owner’s Motion to Exclude.
i. Under Federal Rule of Evidence (“FRE”) 403
First, Patent Owner essentially argues that paragraphs 10–21 and
Appendix D of Dr. Welch’s Reply Declaration are improper rebuttal
evidence which should have been presented with the Petition. Mot. 2–4, 10–
11; Reply to Opp. 3, 4–5; see also Paper 35 (Petitioner’s Notice of Objection
to Reply Brief Materials arguing the same sections of the Reply and
paragraphs of Dr. Welch’s Reply Declaration exceed the permissible scope
of reply). Patent Owner further argues that these paragraphs and sections
should be excluded under Federal Rule of Evidence 403 because Patent
Owner and its declarant did not have an opportunity to address this
testimony. Mot. 10. According to Patent Owner the probative value is
outweighed by the alleged undue delay in filing. Petitioner counters that
these paragraphs of Dr. Welch’s Reply Declaration and sections of its Reply
should not be excluded because they are responsive to arguments raised in
Patent Owner Response and the supporting evidence in Dr. Bobick’s
Declaration. Reply to Opp. 2–5.
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We are not persuaded that paragraphs 10–21 of Dr. Welch’s Reply
Declaration and sections II-IV of the Reply should be excluded as
inadmissible under FRE 403. At the outset, Patent Owner’s argument is
improper. A motion to exclude is neither a substantive sur-reply, nor a
proper vehicle for arguing whether a reply or supporting evidence is of
appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC,
IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013)(Paper 16), Berk-Tek
LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31,
2014) (Paper 39).
In any event, the mere fact that Dr. Welch’s Reply Declaration
includes evidence that was not discussed specifically in the Petition is
insufficient to establish the impropriety of such evidence, much less
inadmissibility under the FRE. The very nature of a reply is to respond to
the opposition, which in this case is the Patent Owner Response. See 37
C.F.R. § 42.23(B). Patent Owner argues that Petitioner should have been
aware that Patent Owner might propose a claim construction based upon an
alleged prosecution history disclaimer when it filed its Petition, and
therefore, should have included its corresponding arguments and evidence in
its Petition. See Mot. 3. Patent Owner’s argument is unreasonable. The
need for relying on evidence not previously discussed in the Petition may
not exist until a certain argument has been raised in the Patent Owner
Response. Patent Owner’s proposed claim construction was raised for the
first time in these proceedings in Patent Owner Response. The Reply
complies with 37 C.F.R. § 42.23 as it only responds to arguments raised in
Patent Owner’s Response. See Paper 36.
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ii. Under FRE 402
Patent Owner argues that paragraphs 10–14 and Appendix D of
Dr. Welch’s Reply Declaration amount to improper opinions that there is
insufficient written description and/or enablement to support the claims of
the ’607 when construed as proposed by Patent Owner and should be
excluded under FRE 402 as irrelevant. Mot. 4–6; Reply to Opp. 4.
Petitioner counters that paragraphs 10–14 and Appendix D is relevant
because they rebut Patent Owner’s claim construction argument and “goes
directly to how the claims should be interpreted based on the written
description of the ’607 patent.” Opp. 4.
We are not persuaded that paragraphs 10–14 and Appendix D of
Dr. Welch’s Reply Declaration should be excluded as irrelevant under FRE
402. Paragraphs 10–21 of Dr. Welch’s Reply Declaration and sections II-IV
of the Reply were submitted appropriately to respond to Patent Owner’s
claim construction argument and evidence presented in its Response.
iii. Under FRE 702 or 703
Patent Owner argues that paragraphs 15–21 of the Dr. Welch’s Reply
Declaration contradict Dr. Welch’s cross-examination testimony and,
therefore, should be excluded under FRE 702 and 703. Mot. 7–9. Patent
Owner also argues that Appendix D of Dr. Welch’s Reply Declaration
should be excluded because it is conclusory expert testimony unsupported
by any documentation. Id. at 6. Petitioner counters that Patent Owner’s
argument goes to the weight of the evidence rather than to its admissibility
(Reply to Opp. 5–6) and disputes that Dr. Welch’s Reply Declaration is
contradictory or conclusory (id. at 7–9).
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We are not persuaded that paragraphs 15–21 and Appendix D of
Dr. Welch’s Reply Declaration should be excluded under FRE 702 and 703.
Patent Owner’s arguments go to the weight of the evidence in question
rather than its admissibility. There is a strong public policy for making all
information filed in a non-jury, quasi-judicial administrative proceeding
available to the public, especially in an inter partes review, which
determines the patentability of claims in an issued patent. It is within the
Board’s discretion to assign appropriate weight to evidence. See e.g., In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 13598, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the options expressed in the
declarations.”)
iv. Procedural Deficiency
Patent Owner’s Motion to Exclude also is deficient procedurally. A
party challenging the admissibility of evidence with a motion to exclude
“must object timely to the evidence.” Office Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,767 (Aug. 14, 2012). Section 42.64(b)(1) of our Rules
requires that “[o]nce a trial has been instituted, any objection must be served
within five business days of service of evidence to which the objection is
directed.” As Patent Owner, itself, points out, Patent Owner’s Motion to
Exclude is based upon objections, which were untimely served. See id. at 1;
see Opp. 1–2. Patent Owner did not request that the Board waive or suspend
the requirement of 37 C.F.R. § 42.64(b)(1) prior to filing the late objections.
In as much as Patent Owner does so now in its Motion to Exclude, Patent
Owner’s request is denied. Patent Owner’s Motion to Exclude proffers no
showing of good cause as to why the late service of the objection should be
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excused (37 C.F.R. § 42.5(c)(3)), other than to argue that Petitioner suffered
no prejudice. See Mot. 1; Opp. 1–2; Reply to Opp. 1–2.
In addition, 37 C.F.R. § 42.64(c) requires that “[t]he motion must
identify the objections in the record in order and must explain the
objections.” Office Trial Practice Guide, 77 Fed. Reg. at 48,767. In the
Motion to Exclude, Patent Owner states that “Motion Games served
corresponding objections on Nintendo on November 10, 2014,” but does not
identify the corresponding objections in the record.

III. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that claims 1, 2, 15–17, 25, 26, 34, and 39–41 are unpatentable
under 35 U.S.C. § 103(a) over Hay and Haas.
We deny Patent Owner’s Motion to Exclude.
This is a Final Written Decision of the Board under 35 U.S.C. §
328(a). Parties to the proceeding seeking judicial review of this decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 15–17, 25, 26, 34, and 39–41 of U.S.
Patent No. 6,167,607 B1 are unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied.

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PETITIONER:

Barry J. Coyne
REED SMITH LLP
bcoyne@reedsmith.com

Joseph S. Presta
NIXON & VANDERHYE, P.C.
jsp@nixonvan.com

PATENT OWNER:

Jeffrey B. Vockrodt
HUNTON & WILLIAMS LLP
jvockrodt@hunton.com

Richard S. Meyer
BOIES, SCHILLER & FLEXNER LLP
rmeyer@bsfllp.com