Sony Computer Entertainment America LLCv.APLIX IP HOLDINGS CORPORATION

Patent Trial and Appeal Board

Jun 3, 2016

10699555 (P.T.A.B. Jun. 3, 2016)

Trials@uspto.gov Paper 32
571-272-7822 Date Entered: June 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY COMPUTER ENTERTAINMENT AMERICA LLC,
Petitioner,

v.

APLIX IP HOLDINGS CORPORATION,
Patent Owner.
____________

Case IPR2015-00396
Patent 7,218,313 B2
____________

Before SALLY C. MEDLEY, BRYAN F. MOORE, and
JASON J. CHUNG, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
shown by a preponderance of the evidence that claims 1 and 3–14 of U.S.
Patent No. 7,218,313 B2 are unpatentable.
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A. Procedural History
Petitioner, Sony Computer Entertainment America LLC, filed a
Petition requesting an inter partes review of claims 1 and 3–14 of
U.S. Patent No. 7,218,313 B2 (Ex. 1001, “the ’313 patent”). Paper 2
(“Pet.”). Patent Owner, Aplix IP Holdings Corporation, filed a Preliminary
Response. Paper 10 (“Prelim. Resp.”). Upon consideration of the Petition
and Preliminary Response, on June 22, 2015, we instituted an inter partes
review of claims 1 and 3–14, pursuant to 35 U.S.C. § 314. Paper 11
(“Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 15 (“PO Resp.”)) and Petitioner filed a Reply (Paper 21
(“Pet. Reply”)). Patent Owner filed a Motion for Observations (Paper 25)
and Petitioner filed a Response to the Observations (Paper 29). An oral
hearing was held on January 19, 2016, and a transcript of the hearing is
included in the record (Paper 31; “Tr.”).
B. Related Proceedings
The ’313 patent is involved in the following lawsuit: Aplix IP
Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
(MLW) (D. Mass.). Pet. 59.
C. The ’313 Patent
The ’313 patent relates to hand-held electronic devices, such as cell
phones, personal digital assistants (“PDAs”), pocket personal computers,
smart phones, hand-held game devices, bar-code readers, and remote
controls having a keypad or one or more input elements. Ex. 1001, 1:5–11.
The hand-held device includes, on one surface, one or more software
configurable input elements that can be manipulated by a user’s thumb(s) or
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stylus, and on the other surface, one or more software configurable selection
elements that can be manipulated by a user’s finger(s). Id. at Abstract.
D. Illustrative Claim
Of the challenged claims, claim 1 is the only independent claim.
Claims 3–14 depend either directly or indirectly from claim 1.
Claim 1, reproduced below, is illustrative.
1. A hand-held electronic device comprising:
a memory configured to store a plurality of applications,
wherein each application is associated with a set of functions;
a processor configured to process a selected one of the
plurality of applications;
a first input assembly having a plurality of input elements
on a first surface configured to receive input from a human user
through manipulation of the plurality of input elements, wherein
at least one of the input elements on the first surface is configured
to selectively map to one or more input functions of the set of
functions associated with the selected one of the plurality of
applications;
a second input assembly having one or more input
elements on a second surface configured to be manipulated by
one or more of the human user’s fingers, wherein at least one of
the input elements on the second surface is further configured to
be selectively mapped to one or more input functions of the set
of functions corresponding to the selected one of the plurality of
applications, further wherein the plurality of input elements on
the first surface and the one or more input elements on the second
surface are arranged so as to substantially optimize a
biomechanical effect of the human user’s hand; and
wherein at least one of the input elements of the second
input assembly is a sensor pad configured to selectively represent
a plurality of delineated active areas, wherein manipulation of a
delineated active area causes the input function of one or more
input elements of the first input assembly to change.
Ex. 1001, 15:46–16:10.
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E. Grounds of Unpatentability
We instituted an inter partes review of claims 1 and 3–14 on the
following grounds:
Claims Basis References
1, 3, 5, 6, 8–10, and 12 § 103(a) Pallakoff,1 Ishihara,2 and Martin3
4 § 103(a) Pallakoff, Ishihara, and Liebenow4
7 § 103(a) Pallakoff, Ishihara, and Armstrong5
11 § 103(a) Pallakoff, Ishihara, and Willner6
13 and 14 § 103(a) Pallakoff, Ishihara, and Hedberg7

II. ANALYSIS
A. Level of Skill of Person in the Art
We find that the level of ordinary skill in the art is reflected by the
prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
Oelrich, 579 F.2d 86, 91 (CCPA 1978).

1 Pallakoff, US 2002/0163504 A1, Pub. Nov. 7, 2002 (Ex. 1006).
2 Ishihara, JP 2002/77357, Pub. Mar. 15, 2002 (Ex. 1007).
3 Martin et al., US 6,563,487 B2, Iss. May 13, 2003 (Ex. 1009).
4 Liebenow et al., US 2002/0118175 A1, Pub. Aug. 29, 2002 (Ex. 1008).
5 Armstrong, US 6,469,691 B1, Iss. Oct. 22, 2002 (Ex. 1010).
6 Willner et al., US 5,874,906, Iss. Feb. 23, 1999 (Ex. 1011).
7 Hedberg, PCT WO 99/18495, Pub. Apr. 15, 1999 (Ex. 1012).
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B. Claim Interpretation
In an inter partes review, we construe claim terms in an unexpired
patent 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); see
also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (2016). Consistent with the broadest reasonable construction,
claim terms are presumed to have their ordinary and customary meaning as
understood by a person of ordinary skill in the art in the context of the entire
patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Also, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
specification.”). However, an inventor may provide a meaning for a term
that is different from its ordinary meaning by defining the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner proposes constructions for the following claim terms: “a
plurality of delineated active areas” (claim 1) and “substantially optimize a
biomechanical effect of the human user’s hand” (claim 1). Pet. 6–10. In our
Decision to Institute, we determined that it was not necessary to construe “a
plurality of delineated active areas” (claim 1) and agreed with Petitioner’s
construction for “substantially optimize a biomechanical effect of the human
user’s hand” (claim 1). Dec. 6–7. Neither party has indicated that our
determinations in that regard were improper and we do not perceive any
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reason or evidence that now compels any deviation from our initial
determinations. Accordingly, the following construction applies to this
Decision:
Claim Term Construction
substantially optimize a
biomechanical effect of the human
user’s hand
includes any configuration designed
to take advantage of any
biomechanical effect

C. Obviousness Over Pallakoff, Ishihara, and Martin
Petitioner contends that claims 1, 3, 5, 6, 8–10, and 12 are
unpatentable under 35 U.S.C. § 103 based on Pallakoff, Ishihara, and
Martin. Pet. 46. To support its contentions, Petitioner provides a detailed
showing, mapping limitations of claims 1, 3, 5, 6, 8–10, and 12 to structures
described by the prior art. Id. at 29–44, 46–50. Petitioner also relies upon
the Declaration of Dr. Gregory F. Welch (Ex. 1013) to support its position.8
Pallakoff describes an electronic hand-held device, such as personal
digital assistants (“PDAs”), hand-held computers, smart-phones, Web-
phones, pagers, instant-messaging devices, and input-devices connected to
field equipment, having multiple keys on its face (face-keys), and one or
more buttons on the side (“side-buttons” or “modifier buttons”). Ex. 1006,
¶¶ 1, 15, 16. Figure 1 of Pallakoff is reproduced below.

8 Patent Owner argues that the Board should give Dr. Welch’s testimony
little weight. PO Resp. 18–20. We are not persuaded by the arguments.
The evidence to which we are directed does not support the conclusion that
Dr. Welch is not a credible witness. See id.
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As shown in Figure 1 of Pallakoff, a cell phone handset 100 has a
display 107, a “Shift” side-button 101, a “2nd Letter” side-button 102, and a
“3rd Letter” side-button 103. Id. ¶ 17. Handset 100 also includes face-keys
such as 112 and 113. Id. ¶¶ 194, 198. A user types a character by pressing
one of the face-keys either alone or in combination with side-buttons for
typing different characters, either with one hand or in combination with the
left and right hand. Id. ¶¶ 1, 15, 16, 193.
Pallakoff further describes, in connection with the hand-held device, a
storage system for storing a plurality of software processes (applications),
and a processor for running software processes (applications). Id. ¶¶ 20, 24,
196, 199, 208.
Ishihara describes a hand-held electronic device such as a mobile
phone, with a display screen on the front surface and a touch panel switch 37
on the back surface. Ex. 1007, Abstract. The touch panel switch 37, located
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on the back of the mobile phone, is push-pressure operated to correspond to
the requisite position of the desired item among items displayed in the
display area 33, located on the front of the mobile phone. Id. ¶¶ 50–52.
Martin describes an electronic control device such as a game
controller, mouse, remote control device, or other type of device, coupled to
a host computer. Ex. 1009, Abstract. The control device includes a housing,
a direction pad, and a computer-controlled actuator. Id. Direction pad 18
can provide an output haptic feedback (e.g., force feedback or tactile
feedback) such as tactile sensations to the user who is contacting the
direction pad. Id. at 1:51–53, 4:50–52. In particular, using one or more
actuators and sensors coupled to the direction pad, a variety of force
sensations, such as jolts, vibrations, and textures can be output to the user
who is contacting the button. Id. at 4:60–65. Forces can be based on
position of the direction pad in a degree of freedom, and/or on the location
or state of a controlled object in the graphical environment of the host
computer, and/or independent of direction pad position or object state. Id. at
4:65–5:2.
Claim 1 requires a hand-held electronic device comprising a memory
configured to store a plurality of applications where each application is
associated with a set of functions and a processor configured to process a
selected one of the plurality of applications. Ex. 1001, 15:46–51. For these
limitations, Petitioner contends that Pallakoff discloses a hand-held device
(e.g., Fig. 1) including a memory for storing applications and a processor to
process the applications. Pet. 32; Ex. 1006, Abstract, ¶¶ 1, 4, 11, 20, 196.
As pointed out by Petitioner, Pallakoff describes a processor that runs email,
instant messaging, calculator, and web browsing applications. Pet. 29; Ex.
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1006 ¶¶ 24, 208. Petitioner further contends that each application is
associated with a set of functions. See, e.g., Pet. 29–30. We are persuaded
by Petitioner’s showing, and adopt it as our own, that Pallakoff discloses a
hand-held electronic device including a memory for storing applications and
a processor to process the applications, where each application is associated
with a set of functions.
Petitioner also contends that Pallakoff describes a first input assembly
having a plurality of input elements on a first surface (e.g., Pallakoff Fig. 1),
where at last one of the input elements is configured to map to one or more
input functions associated with one of the applications (e.g., for text
application, pressing the “2” key results in a lowercase a). Pet. 34–35; Ex.
1006 Abstract, ¶¶ 18 and 187. We are persuaded by Petitioner’s showing,
and adopt it as our own, that Pallakoff discloses a first input assembly as
claimed.
Claim 1 further recites a second input assembly having one or more
input elements on a second surface. Petitioner relies on Pallakoff’s modifier
buttons (e.g., Fig. 1, side buttons 101, 102, 103) to meet the one or more
input elements on a second surface of the second input assembly limitations.
Pet. 36. Moreover, Petitioner relies on Ishihara to meet the limitation that
one of those input elements (of the second input assembly — side buttons)
be a sensor pad as claimed. Id. at 38. Petitioner argues that a person having
ordinary skill in the art at the time of the invention would have appreciated
that Pallakoff’s side buttons could be implemented using the delineated
active areas taught by Ishihara and that doing so would improve Pallakoff’s
device in the same way as Ishihara’s device. Pet. 31 (citing Ex. 1013 ¶¶ 50–
56).
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Patent Owner argues that Pallakoff’s modifier buttons are not
configured to be selectively mapped to functions corresponding to the
selected one of the plurality of applications required by claim 1. PO
Resp. 28–30. In particular, Patent Owner argues that claim 1 requires the
input elements of the second input assembly to be mapped to application-
specific functions, foreclosing Pallakoff’s side buttons from meeting that
limitation because such side buttons operate the same way across
applications. Id. (citing Ex. 2007 ¶¶ 106–108). We disagree with Patent
Owner that claim 1 requires the second input elements to be mapped to
application-specific functions. There is nothing in the language of claim 1
that recites application-specific functions, or functions that must change
depending on the application. Moreover, Patent Owner does not direct us to
support in the Specification of the ’313 patent for its narrow construction of
claim 1 as requiring application-specific functions.
Claim 1 requires one (or more) input element (of the second input
assembly) be mapped to one (or more) input function(s) corresponding to the
selected application of the plurality of applications. Petitioner contends, and
we agree, that this limitation is met, for example, by the description in
Pallakoff of typing the “2” key with the “2nd Letter” modifier button (one
input of the second assembly) and the “Shift” modifier button (another input
of the second assembly), resulting in an uppercase “B” for the selected text
application. Pet. 36–37; Ex. 1006 ¶ 18. Claim 1 does not require that the
input element of the selected application, e.g., Pallakoff’s modifier buttons,
function differently with other applications as it does with the selected
application. In any event, Patent Owner does not address the description in
Pallakoff that appears to describe such application-specific functions, and
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that Petitioner relied upon in its Petition. See, e.g., Pet. 37–38; Ex. 1006
¶ 178 (describing that a device’s software can change the interpretation of
the pressing and releasing of keys, modifier buttons, and controls based on
context, and further describing this in the context of a web-based
application, email application, and text message application).
Patent Owner argues that Ishihara’s touchpad is not “configured to
selectively represent a plurality of delineated active areas” as required by
claim 1. PO Resp. 30–31. Patent Owner’s argument, however, is based on
construing the phrase to require a variety of different shapes and sizes of
areas that can be configured in software. Id. at 31. We are not persuaded
that we should construe the phrase so narrowly. First, the testimony to
which we are directed in support of the argument is inconsistent with the
argument. Indeed, Dr. MacLean testifies that “selectively represent” means
“selectively provide where those areas are” as a virtual, software construct;
or alternatively means “selectively render to the user where those areas are
defined in software.” Ex. 2007 ¶ 117. Dr. MacLean, however, does not
testify that “configured to selectively represent a plurality of delineated
active areas” requires a variety of different shapes and sizes of areas that can
be configured in software as Patent Owner argues in its Patent Owner
Response. PO Resp. 31. Moreover, the argument and Dr. MacLean’s
testimony are not commensurate in scope with the language of claim 1, are
conclusory, and are not supported by record evidence. Neither Patent Owner
nor Dr. MacLean directs attention to where in the Specification of the ’313
patent there is a definition for the disputed phrase or even support for the
narrow constructions advanced. Petitioner explains, and we agree, that
Ishihara describes a touch panel switch 37 (i.e., sensor pad) configured to
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selectively represent a plurality of delineated active areas (e.g., convex area
38) which are shown (represented) on display 33. Pet. 38–40; Ex. 1007
Abstract, ¶¶ 50, 57, 59, 61.
For claims 6 and 8–10, each of which depends either directly or
indirectly from claim 1, Petitioner relies on the combinations of Pallakoff
and Ishihara (claim 10) and Pallakoff, Ishihara, and Martin (claims 6, 8, and
9) to meet the additional limitations of claims 6 and 8–10. Pet. 42–43, 48–
50. We agree with Petitioner’s showing, which we adopt as our own, that
the combinations of Pallakoff and Ishihara (claim 10) and Pallakoff,
Ishihara, and Martin (claims 6, 8, and 9) disclose the additional limitations
of claims 6 and 8–10. Patent Owner does not argue these claims separately.
PO Resp. 31–34.
Claims 3, 5, and 12
Claim 3 depends from claim 1 and recites “wherein the processor
receives signals generated by the input elements of first or second input
assemblies when manipulated by the human user.” Ex. 1001, 16:15–18.
Petitioner contends that software on Pallakoff’s processor receives and
interprets signals generated by input elements when manipulated by the user,
directing attention to paragraphs 23 and 24 of Pallakoff. Pet. 41. Pallakoff
describes that when a user presses any given button or key, firmware on the
device sends a unique code corresponding to the pressed button or key to a
queue to be read by software running on the device. Ex. 1006 ¶ 23.
Software on the device continuously looks for new codes to appear in the
queue, reads those codes, and interprets them as typing. Id. ¶ 24. The
software can be implemented as part of the device’s firmware or can run on
a processor that also runs a high level operating system. Id. We are not
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persuaded by Patent Owner’s implicit argument that claim 3 requires a direct
connection between the processor and the input elements. PO Resp. 32
(“Pallokoff’s description makes clear that the codes are generated and sent
by ‘firmware,’ not by the input elements themselves.”). Nothing in claim 3
requires a direct connection between the input elements and the processor.
As long as the signals from the input elements are received by the processor,
it is of no moment that the same signals are first received by firmware or
software that runs on the processor.
Claim 5 depends directly from claim 1 and recites “wherein at least
one of the input elements of the second input assembly is a rotary sensor.”
Ex. 1001, 16:25–27. Petitioner contends that Pallakoff’s thumb-wheel for
any of 108, 208, 308, or 408 on the sides of Pallakoff’s handheld devices are
rotary sensors (input elements) of the second input assembly. Pet. 42.
Patent Owner agrees that Pallakoff’s thumb-wheel is a rotary sensor, but
argues that it would not have been obvious to locate the thumb-wheel on the
back of the handheld device—what Patent Owner contends Petitioner
designates as the second surface in its Petition. PO Resp. 32–33; Ex. 2007
¶ 121.
The argument is not persuasive because the Petition indicates that the
second surface could be the sides or back of the Pallakoff device, directing
attention to paragraph 196 of Pallakoff. Pet. 38. Patent Owner and Dr.
MacLean do not address Petitioner’s assertion that the second input
assembly, and second surface may be the side surface, as opposed to the
back surface. Moreover, Pallakoff itself would have conveyed to a person of
ordinary skill in the art at the time of the invention that the location of the
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face-keys and side-buttons may be arranged in different locations, including
on the sides or back of the handheld device. Ex. 1006 ¶¶ 196, 200, 323.
Claim 12 depends directly from claim 1 and recites “wherein the
processor is further configured to be communicatively coupled to a host
electronic device.” Ex. 1001, 16:62–64. Petitioner contends that Pallakoff
describes this feature by the description of a user being able to access email,
instant messaging, Web pages, remotely hosted applications, and other
services. Pet. 43; Ex. 1006 ¶¶ 196, 328.
Patent Owner directs attention to Figure 8 of the ’313 patent as
showing a host computer 824 accessible through a local area network 822
and argues that claim 12 requires a host computer connected through a local
area network. PO Resp. 34. We are not persuaded by Patent Owner’s
arguments (id.) because claim 12 does not recite that the processor is
communicatively coupled to a host device through a local area network or
that the host device be part of a local area network. Based on the record
before us, Petitioner has shown by a preponderance of the evidence that
Pallakoff describes claim 12 as explained above and Petitioner has not
rebutted sufficiently Petitioner’s showing.
We now address Petitioner’s reasons for combining Pallakoff,
Ishihara, and Martin (Pet. 31, 47–48) and Patent Owner’s arguments that the
references should not be combined. PO Resp. 20–28.
Petitioner provides reasons for combining Pallakoff and Ishihara by
explaining that a person having ordinary skill in the art at the time of the
invention would have incorporated Ishihara’s touch panel into Pallakoff’s
handheld device to improve similar devices in the same way. Pet. 31: Ex.
1013 ¶¶ 50–56. In support of that assertion, Dr. Welch testifies that a skilled
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artisan would have recognized that Ishihara would have improved the
Pallakoff handheld device in that positions of modifier buttons on the back
surface touch panel could be configured using software instead of requiring
the user to physically change the positions of the modifier buttons using
sliding panels. Ex. 1013 ¶ 54.
Petitioner provides reasons for combining Martin with Pallakoff and
Ishihara by explaining that a person having ordinary skill in the art at the
time of the invention would have recognized that a directional pad as taught
by Martin (for claim 6) was well known as an input element on handheld
devices and including one would have been obvious as a matter of design
choice. Pet. 47–48; Ex. 1013 ¶¶ 61–63. Petitioner also provides reasons for
combining Martin with Pallakoff and Ishihara by explaining that a person
having ordinary skill in the art at the time of the invention would have
realized the benefits of incorporating an actuator into the device of Pallakoff
to provide haptic feedback to a user (for claims 8 and 9). Id.
Patent Owner argues that the Petition points to no specific reason why
a person skilled in the art would want to combine Pallakoff and Ishihara. PO
Resp. 20–21. We disagree because the Petition does provide specific
reasons for making the combinations as discussed immediately above. Pet.
31, 47–48 (citing Ex. 1013 ¶¶ 50–56, 61–63).
Patent Owner also argues that Pallakoff teaches away from
implementing modifier buttons on the back of the hand held device because
Pallakoff does not describe the side buttons as being on the back. Id. at 21–
23. A reference does not teach away if it merely expresses a general
preference for an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed. In re
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Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We have considered Patent
Owner’s arguments and evidence to which we are directed and determine
that Patent Owner has not shown sufficiently that Pallakoff criticizes,
discredits, or otherwise discourages implementing the modifier buttons on
any surface of the handheld device, including the back surface. Moreover,
Pallakoff teaches that the location of the face-keys and side-buttons may be
arranged in different locations, including on the sides or back of the
handheld device. Ex. 1006 ¶¶ 196, 200, 323.
Patent Owner next argues that Ishihara’s touchpad could not be
substituted for Pallakoff’s modifier buttons and be able to perform the
operations required in Pallakoff because Ishihara’s touchpad would not
recognize two different areas being pressed simultaneously. PO Resp. 23–
24. Patent Owner’s arguments and evidence are based on incorporating
physically all technicalities of Ishihara with all technicalities of Pallakoff.
The test for obviousness is what the combined teachings of the references
would have suggested to a person of ordinary skill in the art, not whether
one reference may be bodily incorporated into the structure of another
reference. In re Keller, 642 F.2d 413 (CCPA 1981). For example, Patent
Owner and Dr. MacLean are of the apparent impression that the operation of
pressing two modifier buttons simultaneously as described in Pallakoff need
be maintained when combining Pallakoff with Ishihara. See, e.g., PO Resp.
23–24; Ex. 2007 ¶¶ 73, 74, 76. But that is not what the law requires, and in
any event, none of the claims require how input elements are selected or
operated by the user.
Patent Owner argues that locating Pallokoff’s modifier buttons on the
back of the handheld device as suggested by Ishihara would defeat
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Pallakoff’s goal of enabling fast typing. PO Resp. 24–26. Patent Owner’s
arguments are not persuasive. Patent Owner does not contend that the
combined teachings would not result in a working device, or that the
combination would be beyond the skill set of a person of ordinary skill in the
art. It is of no moment that the combination would result, in some aspects—
aspects not related to claimed features—to be inferior.
We also have considered Patent Owner’s arguments, and evidence in
support thereof, that it would not have been obvious to put Martin’s d-pad
on the back of Pallakoff’s back surface. PO Resp. 26–28. In particular,
Patent Owner argues that the favored location for a cursor control is on the
front surface, not on the back surface. Id.
We do not give much weight to the testimony to which we are
directed in support of the arguments presented at pages 26–28 of Patent
Owner’s Response, because such testimony is either conclusory or focused
on physically combining the references without consideration of the skill set
of a person of ordinary skill in the art. For example, Dr. MacLean opines
that because Martin’s directional pad (d-pad) is on the front of Martin’s
device, one would not put it on the back of Pallakoff’s device because it
would not be a simple substitution, and placing d-pads on back surfaces is
uncommon. Ex. 2003 ¶¶ 147–149. Neither Patent Owner nor Dr. MacLean
provide evidence in support of such statements. Dr. MacLean does not
explain why putting a d-pad on the back of a hand-held device as opposed to
on the front of such a device would be beyond the skill set of a person of
ordinary skill in the art. Moreover, Patent Owner (and Dr. MacLean) are of
the apparent perception that bodily incorporation is required to make a
substitution of one thing for the other. But that is not the case, as we have
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explained above. See Keller, 642 F.2d at 413. Here, the replacement of
Pallakoff’s cursor on the back of its device (or side) with a d-pad like the
one shown in Martin would have been obvious to a person of ordinary skill
in the art at the time of the invention. This is a matter of replacing one
known thing for another.
In summary, we have considered all of Patent Owner’s arguments and
are not persuaded by any of Patent Owner’s arguments that it would not
have been obvious to a person of ordinary skill in the art at the time of the
invention to combine Pallakoff, Ishihara, and Martin. Pallakoff describes a
hand-held device with input elements and an application as claimed.
Ishihara describes a sensor pad and Martin describes a directional pad and
actuators (vibratory units). We are persuaded by a preponderance of the
evidence that modifying the Pallakoff hand-held device to include
specifically a sensor pad, directional pad, and actuators would have been
within the level of a person of ordinary skill in the art. Moreover, as
explained by Petitioner, adding such features to the Pallakoff device would
have increased the functionality and desirability of the hand held device. A
person with ordinary skill in the art is “a person of ordinary creativity, not an
automaton,” and “in many cases . . . will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21.
D. Obviousness Over Pallakoff, Ishihara, and Liebenow
Petitioner contends that claim 4 is unpatentable under 35 U.S.C. § 103
based on Pallakoff, Ishihara, and Liebenow. Pet. 44. To support its
contentions, Petitioner provides a detailed showing mapping limitations of
claim 4 to structures described by Pallakoff, Ishihara, and Liebenow. Id. at
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44–46. Petitioner also relies upon the Declaration of Dr. Gregory F. Welch
(Ex. 1013) to support its position.
Liebenow describes an electronic hand-held information appliance
having a display disposed on a first surface and an input device disposed on
a second surface opposed to the first surface for inputting information. Ex.
1008, Abstract. Liebenow further describes, in connection with the hand-
held device, an input/output system 516 which may comprise one or more
controllers or adapters for providing interface functions between one or
more of I/O devices 518–522. Id. ¶¶ 62; Fig. 13.
Claim 4 depends directly from claim 1 and recites that the hand-held
device includes an input controller that receives signals generated by input
elements of the first or second input assemblies and converts the signals into
a form suitable to be interpreted by the processor. Ex. 1001, 16:19–24.
Petitioner relies on Liebenow for its description of input controllers
included in a hand-held device. Pet. 44–46. Petitioner concludes that one of
ordinary skill in the art would have recognized that the addition of an input
controller to the Pallakoff and Ishihara handheld device would have reduced
demands on the microprocessor and improve interactive responsiveness of
the device. Pet. 45; Ex. 1013 ¶¶ 34, 59.
Patent Owner argues that at the time of the invention, mobile phone
handsets typically did not include an input controller, but rather input
elements connected directly to a processor. PO Resp. 34–35. Patent Owner
contends that a person of ordinary skill in the art at the time of the invention
would not have looked at the PC-type hardware architecture of Liebenow’s
handheld device and been motivated to add such hardware to Pallakoff’s or
Ishihara’s mobile handset device. Id. at 35–36.
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We are not persuaded by these arguments because the claims are not
limited to a mobile phone device. Rather the claims are directed to handheld
devices in general. Accordingly, a person of ordinary skill in the art would
have considered the relevant teachings for all types of handheld devices.
Moreover, we are not persuaded by the arguments because the arguments are
again narrowly focused on combining the technicalities of the features of
one piece of prior art with the technicalities of another prior art reference.
We agree with Petitioner’s showing, and adopt it as our own, that
Liebenow in combination with Pallakoff and Ishihara discloses an input
controller as claimed in claim 4 and that adding an input controller to the
Pallakoff and Ishihara device would have been desirable for the reasons
provided by Petitioner.
E. Obviousness Over Pallakoff, Ishihara, and Armstrong
Petitioner contends that claim 7 is unpatentable under 35 U.S.C. § 103
based on Pallakoff, Ishihara, and Armstrong. Pet. 50–53. To support its
contentions, Petitioner provides a detailed showing mapping limitations of
claim 7 to structures described by the prior art. Id. Petitioner also relies
upon the Declaration of Dr. Gregory F. Welch (Ex. 1013) to support its
position.
Armstrong describes a handheld electronic device, such as a PDA,
with a display and a number of input elements for accepting user inputs. Ex.
1010, 2:5–15, 6:4–16. Armstrong further describes that the input element(s)
include a resilient dome cap(s) for providing tactile feedback to the finger
depressing the surface of the depressible surface. Id. at Abstract.
Claim 7 depends directly from claim 1 and recites that the hand-held
device includes at least one palpable detent associated with at least one of
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the input elements of the first or second input assemblies to provide tactile
feedback to the user. Ex. 1001, 16:31–36. Petitioner relies on Armstrong
for a description of an input element with a resilient dome cap. Pet. 51–52.
Petitioner concludes it would have been obvious to a person having ordinary
skill in the art to incorporate Armstrong’s input elements with resilient dome
cap to provide tactile feedback to a user. Id. at 52; Ex. 1013 ¶¶ 68, 69.
We agree with Petitioner’s showing, which we adopt as our own, that
Armstrong in combination with Pallakoff and Ishihara discloses at least one
palpable detent associated with at least one of the input elements as claimed
in claim 7 and that combining Armstrong with Pallakoff and Ishihara would
have been desirable for the reasons provided by Petitioner. Patent Owner
does not argue for the separate patentability of claim 7. PO Resp. 36.
F. Obviousness Over Pallakoff, Ishihara, and Willner
Petitioner contends that claim 11 is unpatentable under 35 U.S.C.
§ 103 over the combination of Pallakoff, Ishihara, and Willner. Pet. 53–56.
To support its contentions, Petitioner provides a detailed showing mapping
limitations of claim 11 to structures described by the prior art. Id. Petitioner
also relies upon the Declaration of Dr. Gregory F. Welch (Ex. 1013) to
support its position.
Willner describes a hand-held device with inputs for a variety of
applications including video games. Ex. 1011, 1:6–10, 3:44–67, Figs. 1 and
5. The front surface of the hand-held device includes a variety of input
elements including directional pads 110 and 112, which are mapped to game
functions related to directional input. Id. at 7:36–47; Fig. 2. The back
surface includes input elements such as switch pushbuttons 186, 188, 190,
192, 194, and 196 that are mapped to game functions such as weapon fire
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and game character maneuvers including jumping and flying. Id.
Claim 11 depends directly from claim 1 and recites that the selected
one of the plurality of applications is a game application and at least one of
the plurality of input elements of the first assembly and at least one of the
input elements of the second input assembly are each configured to map to
one or more game functions. Petitioner relies on Willner for at least its
description of a hand-held electronic device with input elements on the front,
and back surfaces of the hand-held device. Pet. 54–55. Petitioner concludes
it would have been obvious to a person having ordinary skill in the art to
have modified the Pallakoff hand-held device to execute game applications
as taught by Ishihara and Willner, and to have further included input
elements on the surfaces of the handheld device to correspond to specific
game functions. Pet. 55; Ex. 1013 ¶¶ 73, 74.
Patent Owner argues that Willner is not analogous art because it is
neither in the same field of endeavor as the ’313 patent nor reasonably
pertinent to the particular problem addressed by the ’313 inventors. PO
Resp. 3–14. We are not persuaded by Patent Owner’s arguments.
The test for determining whether a prior art reference constitutes
analogous art to the claimed invention is: (1) whether the prior art is from
the same field of endeavor, regardless of the problem addressed, or (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004).
Patent Owner conflates the two prong test, essentially only addressing
whether Willner is reasonably pertinent to the particular problem with which
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the inventors of the ’313 patent were involved. See, e.g., PO Resp. 9–10
(“The devices of Willner and the ’313 patent are in different product
categories . . . . [because the ’313 patent] addresses the problem of
controlling ‘game functions’ in an integrated, portable handheld electronic
device . . . . [and because] Willner addressed a different problem involving
different embodiments, functions, and structure.”); Ex. 2009 ¶ 103 (Mr. Lim
arriving at the field of endeavor for the prior art reference and the invention
by looking at the problems solved by each). Such a showing is insufficient,
because if the prior art reference is in the same field of endeavor, the test is
satisfied, regardless of whether the prior art reference addresses the same
problem identified by the inventors.
In determining the field of endeavor, we look to the ’313 patent’s
written description and claims, including the structure and function of the
invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
defining the field of invention, and in determining the relevance of Willner
to the obviousness inquiry, here a broad approach should be taken. Pet.
Reply 3–4. Indeed, the Supreme Court provided guidance in determining
the applicability of a reference’s teachings in an obviousness inquiry. In
KSR International Co. v. Teleflex Inc., the Court explained that if a feature
has been used to improve one device, and a person of ordinary skill in the art
would have recognized that it would improve a similar device in that field or
another, implementing that feature on the similar device is likely obvious.
550 U.S. 398, 417 (2007).
Here, the appropriate scope of the field of endeavor is hand-held
devices with one or more input elements. Ex. 1001, 1:5–11, claim 1.
Willner is within the field of endeavor because it describes hand-held
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electronic devices, such as game controllers, with one or more input
elements associated with various game controls. Ex. 1011, 1:5–10; 2:24–67.
Moreover, we disagree with Patent Owner that Willner is not within the
same field of endeavor as the ’313 patent because it is directed to peripheral
devices and not standalone devices. PO Resp. 11. Peripheral devices, such
as the described game controller in Willner, are within the field of endeavor
set forth in the ’313 patent, as it too covers peripheral type devices, such as
game controllers, remote controls, and bar code readers. Ex. 1001, 1:5–11.
Because we find that Willner is from the same field of endeavor as the
claimed invention and provides relevant teachings to a person of ordinary
skill in the art at the time of the invention, we need not consider Patent
Owner’s arguments regarding whether Willner is reasonably pertinent to the
particular problem with which the inventors are involved.
We have considered Patent Owner’s arguments that Willner does not
meet the limitations of claim 11 because Willner does not teach mapping
front and back surface input elements to game-application functions or teach
that manipulation of a second-surface input element causes a game function
mapped to a first-surface input element to change. PO Resp. 41–45. The
arguments are misplaced. In essence, Patent Owner argues that Willner
alone fails to disclose all of the limitations of claim 11. See, e.g., PO Resp.
43–44 (arguing that Willner does not teach game functions mapped to both
front and back surface input elements). However, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981)).
In this case, such arguments are not sufficient to rebut Petitioner’s showing
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that the combination of Pallakoff, Ishihara, and Willner describes all of the
claimed features of claim 11.
We also have considered Patent Owner’s arguments regarding why
there would be no reason to combine Pallakoff, Ishihara, and Willner. PO
Resp. 36–41. As explained above, Petitioner articulates a reasonable
rationale with supporting evidence for combining Pallakoff, Ishihara, and
Willner. We are not persuaded by Patent Owner’s arguments that because
Willner and Pallakoff are of different form factors, a person having ordinary
skill in the art would not look to Willner for teachings on how to modify
Pallakoff. Id. at 37–40. We have considered the evidence in support of
Patent Owner’s arguments, but do not give such evidence much weight
because the evidence is based on incorporating physically all technicalities
of Willner into Pallakoff. See, e.g., Ex. 2009 ¶¶ 101–104. The test for
obviousness is what the combined teachings of the references would have
suggested to a person of ordinary skill in the art, not whether one reference
may be bodily incorporated into the structure of another reference. Keller,
642 F.2d at 413.
Nor are we persuaded by Patent Owner’s arguments that Willner
teaches away from combining with Pallakoff because Willner, unlike
Pallakoff, does not take a chordal approach to minimizing the number of
keys on the handheld device. PO Resp. 40–41. We have considered Patent
Owner’s arguments and evidence to which we are directed and determine
that Patent Owner has not shown sufficiently that Willner criticizes,
discredits, or otherwise discourages implementing a gaming function on
Pallakoff’s handheld device.
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For all of the above reasons, we agree with Petitioner’s showing, and
adopt it as our own, that Willner in combination with Pallakoff and Ishihara
disclose the limitations of claim 11 and that including Willner’s gaming
function to the handheld device of Pallakoff, would have been desirable for
the reasons provided by Petitioner.
G. Obviousness Over Pallakoff, Ishihara, and Hedberg
Petitioner contends that claims 13 and 14 are unpatentable under
35 U.S.C. § 103 over the combination of Pallakoff, Ishihara, and Hedberg.
Pet. 56–59. To support its contentions, Petitioner provides a detailed
showing mapping limitations of claims 13 and 14 to the prior art. Id.
Petitioner also relies upon the Declaration of Dr. Gregory F. Welch (Ex.
1013) to support its position.
Hedberg describes a hand-held display device that includes control
buttons 3 on the display connected to control circuits and a gyroscope 6
incorporated in the display device and connected to the control circuits. Ex.
1012, Abstract. The display device is responsive to movements in the space
for displaying an image in different magnification and/or in different parts.
Id. Hedberg describes that an equilibrium of force accelerometer may be
used in place of the gyroscope. Id. at 3:26–32.
Claim 13 depends directly from claim 1 and recites that at least one of
the input elements of the second input assembly comprises an accelerometer.
Claim 14 depends directly from claim 1 and recites that at least one of the
input elements of the second input assembly comprises a gyroscope.
Petitioner relies on Hedberg for its description of a gyroscope or
accelerometer included in a hand-held device. Pet. 56–59. Petitioner
concludes that one of ordinary skill in the art would have recognized that the
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addition of a gyroscope and/or an accelerometer would have increased the
ability to control the Pallakoff hand-held device. Pet. 58; Ex. 1013 ¶¶ 77,
78.
Patent Owner argues that Hedberg is not analogous art because it is
neither in the same field of endeavor as the ’313 patent nor reasonably
pertinent to the particular problem addressed by the ’313 inventors. PO
Resp. 14–17, 45. We are not persuaded by Patent Owner’s arguments.
Patent Owner conflates the two prong analogous art test. In defining
the field of invention of the ’313 patent, Patent Owner looks to the problems
solved by the inventors and argues that the field of endeavor is ergonomic
and versatile data input on a hand-held device. Id. Such a showing is
insufficient to establish the field of endeavor. As explained above, we
determine that the field of endeavor is hand-held devices with one or more
input elements. Ex. 1001, 1:5–11, claim 1.
Patent Owner characterizes Hedberg as being in the field of viewing
or displaying systems. PO Resp. 15–16. But in arriving at that description,
Patent Owner too narrowly characterizes the Hedberg invention. Hedberg is
within the field of endeavor because it describes hand-held electronic
devices, with one or more input elements. Ex. 1012, Title, 6:34–7:7, 7:15–
20, Fig. 5, claim 1.
Because we find that Hedberg is within the same field of endeavor as
the claimed invention, we need not consider Patent Owner’s arguments
regarding whether Hedberg is reasonably pertinent to the particular problem
with which the inventors are involved. PO Resp. 16–17.
We agree with Petitioner’s showing, which we adopt as our own, that
Pallakoff and Ishihara in combination with Hedberg discloses a gyroscope or
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accelerometer as claimed in claims 13 and 14 and that adding a gyroscope or
accelerometer to the Pallakoff and Ishihara combination would have been
desirable for the reasons provided by Petitioner. Patent Owner does not
otherwise argue for the separate patentability of claims 13 and 14. PO
Resp. 45.
H. Objective Evidence of Nonobviousness
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Notwithstanding what the teachings of the prior art would have suggested to
a person of ordinary skill in the art at the time of the claimed invention, the
totality of evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the claimed invention would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471–1472 (Fed. Cir. 1984). Secondary considerations may
include any of the following: long-felt but unresolved needs, failure of
others, unexpected results, commercial success, copying, licensing, and
praise.
There must be a demonstrated “nexus” between the merits of the
claimed invention and the evidence of secondary considerations before that
evidence is accorded substantial weight in an obviousness determination.
Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
(Fed. Cir. 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996);
In re Fielder, 471 F.2d 640, 642 (CCPA 1973). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
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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). In the absence of an established
nexus with the claimed invention, secondary consideration factors such as
commercial success, satisfaction of a long-felt but unresolved need,
licensing and copying by others are not entitled to much, if any, weight and
generally have no bearing on the legal issue of obviousness. See In re
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
The burden of showing that there is a nexus lies with the Patent
Owner. See id.; see also In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Patent Owner argues that secondary considerations show that the ’313
patent claims are not obvious. PO Resp. 45–50. In particular, Patent Owner
argues that Petitioner has not pointed to a prior art reference meeting the
challenged claims. PO Resp. 46–47. Patent Owner’s argument is misplaced
insofar as an inquiry into secondary considerations is concerned, and in any
event, has been addressed. As explained above, Pallakoff in combination
with the other various secondary prior art references, meet the limitations of
the challenged claims.
Patent Owner also argues that both mixed-use hand-held game
devices and hand-held game devices utilizing touch technology failed prior
to the time of the invention of the ’313 patent. Id. at 49. In particular,
Patent Owner argues that in 2003, Nokia made a mobile phone hand-held
device with gaming capability, but the product was a failure. Id. Patent
Owner also argues that Sega and Tiger Games made devices that were either
not commercially released or were commercial failures. Id. (citing Ex. 2009
¶ 44). Patent Owner does not explain sufficiently why the products were
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commercial failures or why they were not released commercially, and in any
event, why such events are even relevant to the inquiry. The products were
made, thus, demonstrating that others were able to make the products and
did not fail trying to do so. That the products were not commercially
successful or were not released commercially has not been shown to be
particularly relevant to the secondary considerations inquiry.
Patent Owner also argues that it was not until after the claimed
invention that a hand-held gaming device with a touchscreen, the Nintendo
DS, was commercially successful. Id. at 49 (citing Ex. 2009 ¶ 45). To the
extent that Patent Owner is asserting copying, Patent Owner fails to show a
nexus between the claimed invention and the alleged copied device, the
Nintendo DS. Patent Owner has not presented sufficient evidence that the
Nintendo DS is a commercial embodiment of the invention disclosed in the
claims.
Conclusion
We have considered the entirety of the evidence before us, including
the evidence of obviousness and the evidence of failure of others and
commercial success submitted by Patent Owner as an indicia of
nonobviousness. On balance, the evidence of obviousness outweighs the
evidence of nonobviousness, with respect to the challenged claims. The
evidence of obviousness is strong and the evidence of nonobviousness is
weak, for the reasons discussed above. All of Patent Owner’s arguments
have been considered. Petitioner has proved, by a preponderance of the
evidence that claims 1, 3, 5, 6, 8–10, and 12 are unpatentable over Pallakoff,
Ishihara, and Martin; claim 4 is unpatentable over the combination of
Pallakoff, Ishihara, and Liebenow; claim 7 is unpatentable over Pallakoff,
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Ishihara, and Armstrong; claim 11 is unpatentable over Pallakoff, Ishihara,
and Willner; and claims 13 and 14 are unpatentable over Pallakoff, Ishihara,
and Hedberg.

III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 1, 3, 5, 6, 8–10, and 12 of the
’313 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
Pallakoff, Ishihara, and Martin; claim 4 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over Pallakoff, Ishihara, and Liebenow; claim 7 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Pallakoff, Ishihara,
and Armstrong; claim 11 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Pallakoff, Ishihara, and Willner; and claims 13 and 14 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Pallakoff, Ishihara,
and Hedberg.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1 and 3–14 of the ‘313 patent are held
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For Petitioner:
Eric Buresh
Abran Kean

eric.buresh@eriseip.com
abran.kean@eriseip.com

For Patent Owner:

Michael Mauriel
Robert Gilbertson
Sybil Dunlop
X. Kevin Zhao
Sherman Kahn

mmauriel@mkwllp.com
bgilbertson@greeneespel.com
sdunlop@greeneespel.com
kzhao@greeneespel.com
skahn@mkwllp.com