Paper No. 26
`
`Trials@uspto.gov
`Filed: April 18, 2016
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASUSTEK COMPUTER INC. and
` ASUS COMPUTER INTERNATIONAL,
`Petitioner,
`
`v.
`
`EXOTABLET, LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-00046
`Patent 7,477,919 B2
` ____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37 C.F.R. § 42.73
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`BACKGROUND
`On April 23, 2015, we instituted an inter partes review of claims 1–4, 6–7,
`14, and 19 of U.S. Patent No. 7,477,919 B2 (“the ’919 Patent”). Paper 6, 25
`(“Dec. to Inst.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
`issued pursuant to 35 U.S.C. § 318(a). We base our decision on the preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the
`arguments of the parties and the supporting evidence, we conclude, that claims 1–
`4, 6–7, 14, and 19 are unpatentable.
`THE ’919 PATENT
`The ’919 Patent addresses the need for a portable wireless device that
`permits instant communication and remote access to information, is sufficiently
`small and lightweight to be carried around conveniently by a user on a routine
`basis, permits the user to enter information such as a web site address or an e-mail
`message to control the device to browse the web or send e-mail messages (or to
`view web pages and e-mail messages), and permits the user to access information
`stored on a remote computer. Ex. 1001, col. 1, ll. 57–67. Figure 1 of the ’919
`Patent illustrates the claimed input/output device.
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`Figure 1 of the ’919 Patent
`As shown above, the ’919 Patent discloses an input/output device that has a
`phone port for connecting to a cell or other portable phone. Id. at col. 2, ll. 1–2.
`The device has input components, such as a keyboard, and output components,
`such as a screen, that are easier for a person to use than the small keypad and
`screen available on a cell phone. Id. at col. 2, ll. 3–9. Signals representing
`information or commands a user supplies with the input components are sent via
`the phone port to the phone, which transmits wireless signals to the intended
`destination device. Id. at col. 2, ll. 10–13. The phone also receives wireless
`signals that are sent through the phone port of the input/output device to be
`displayed as text or images on the screen. Id. at col. 2, ll. 13–16.
`The input/output device generally has a housing that houses (i) the input
`components, e.g., a microphone or keyboard, (ii) the output components, e.g., a
`screen or speaker, (iii) a data storage device, e.g., a hard drive that can store a
`browser, email, and wireless application protocol, (iv) a processor, and (v) a phone
`interface having a support member for the portable phone and the phone port. Id.
`at col. 2, ll. 17–26. A modem also can be provided for use with a portable phone
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`that does not have one. Id. at col. 2, ll. 21–22. A user engaged in a conversation
`on a portable phone can insert the phone into the phone interface on the device to
`bring up a web page or view other data on its display screen and use the keyboard
`or another input component to enter data, such as a website address, email
`messages, personal information for making online purchases, a file location on a
`remote computer, or control functions. Id. at col. 4, ll. 36–57. The phone
`transmits wireless signals representing the data to the intended destination and
`receives wireless signals that are communicated to the device, which processes the
`signals to display text and images or to provide audible output. Id. at col. 4, l. 57–
`col. 5, l. 5. The device can be provided with minimum functionality to perform
`input/output operations, or can be provided with additional functionalities, e.g.,
`browser functionality, a video card, additional storage drives, a scanner, a printer,
`and Bluetooth functionality. Id. at col. 6, ll. 7–24, 28–35. The device can be
`powered, e.g., by photovoltaic cells, or by a 120/240V line source through a
`detachable power cord. Id. at col. 6, ll. 25–28.
`The ’919 Patent describes a first exemplary embodiment in which the
`housing has the shape and size of a portable computer and a support member is
`formed by (i) a frame, e.g., a solid, perforated or lattice frame that may be elastic to
`fit different sized phones, having a bottom or side wall with the port disposed
`thereon pivotally mounted to the housing so that the frame pivots into and out of
`the housing opening, or (ii) a slot formed in the base housing section, or (iii) a slot
`formed in the pivotal housing section, or (iv) a base plate slidably attached to the
`housing at an opening so that the base plate slides into and out of the housing, or a
`retractable arm attached to the housing so that the arm slides out of the opening to
`laterally support the phone, or (v) a base plate pivotally mounted to the housing at
`an opening so that the base plate pivots into and out of the housing, or a pivotably
`
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`retractable arm attached to the housing at an opening so that the arm pivots. Id. at
`col. 2, ll. 30–59.
`The ’919 Patent discloses a second exemplary embodiment in which the slot
`has a channel for receiving the portable phone, with the support member formed by
`one of the walls defining the slot or channel. Id. at col. 2, ll. 60–64. A third
`exemplary embodiment, similar to the second, includes an adapter sleeve that
`receives and holds the phone so that the phone can be slid into and out of the
`sleeve and slot as desired. Id. at col. 2, l. 64–col. 3, l. 3.
`SOLE CLAIM AT ISSUE
`We instituted trial on certain of Petitioner’s challenges to claims 1–4, 6–7,
`14, and 19 of the ’919 Patent. Dec. to Inst. 25. The Patent Owner Response
`addressed only Petitioner’s challenge to claim 7. Paper 17, 10–51 (“PO Resp.”).
`At oral hearing, Patent Owner agreed that it is not challenging Petitioner’s
`assertions as to any of the challenged claims other than claim 7. Paper 24, 44:12–
`45:3. We have reviewed the Petition and the evidence cited therein, and are
`persuaded that for each ground on which we instituted trial of claims 1–4, 6, 14,
`and 19, Petitioner has established by a preponderance of the evidence that the
`corresponding claims are unpatentable. See Dec. to Inst. 9–25.
`Claim 7, the only remaining claim, depends from claim 1 and is reproduced
`below, showing [in brackets] the elements of claim 1 incorporated into the claim:
`
`
`7. The mobile telephone input output device of claim 1 [An
`input/output device for a mobile telephone providing
`a handheld, wirelessly portable, enhanced user interface for
`the mobile telephone having a display screen, comprising:
`a housing sized and configured to be conveniently carried
`by hand;
`
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`an electronic display screen mounted to or enclosed in the
`housing that is larger than the display screen on the
`mobile telephone;
`a user operable input device mounted to or enclosed in the
`housing for receiving user commands for controlling
`the mobile telephone while the input/output device is
`handheld and wirelessly portable;
`a cradle mounted to or enclosed in the housing configured
`for physically receiving and holding the mobile
`telephone;
`a communication port mounted to or enclosed in the
`housing for communicating with the mobile telephone
`when the mobile telephone is held by the cradle;
`wherein the input/output device is configured to physically
`hold and transport the mobile telephone while the
`input/output device is handheld, the input device is
`used to control the mobile telephone, and the enlarged
`display screen displays information supplied by the
`mobile telephone; and
`wherein the mobile telephone input/output device holding
`the mobile telephone is configured to be conveniently
`operated while handheld and used as an integrated
`wireless communication device in which the mobile
`telephone engages in wireless communications while
`the input/output device operates as a handheld,
`wirelessly portable, enhanced user interface for the
`mobile telephone];
`wherein the cradle defines a channel for receiving the
`mobile telephone in a position in which the display
`screen for the mobile telephone is concealed by the
`input/output device.
`
`
`CLAIM CONSTRUCTION
`We interpret claims of an unexpired patent using the broadest reasonable
`construction in light of the specification of the patent in which they appear. See 37
`C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed.
`
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`Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890
`(2016). In applying a broadest reasonable construction, claim terms generally 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. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Concealed
`In our Decision to Institute, we adopted Petitioner’s proposed construction
`that “concealed,” as used in claim 7, means hidden from view.1 Dec. to Inst. 9.
`Although Patent Owner does not offer an explicit construction for the term
`concealed, Patent Owner implies that it requires the mobile phone be placed into
`the claimed input/output device in an orientation that precludes performing voice
`call functions with the phone. PO Resp. 8–10.
`Claim 7 recites a structure in which “the cradle defines a channel for
`receiving the mobile telephone in a position in which the display screen for the
`mobile telephone is concealed by the input/output device.” Emphasis added. As
`Petitioner notes, the term concealed is not used in the Specification of the ’919
`Patent outside of the claims. Pet. 11. Citing the Declaration of its witness, Dr.
`Dean Sirovica, Patent Owner contends that in claim 7, “[t]he concealment is both
`visual and functional” because in the ’919 Patent, the input/output is unified and
`brought to a single interface presented to the user. PO Resp. 5 (citing Ex. 2003,
`Declaration of Dr. Dean Sirovica (“Sirovica Decl.”) ¶ 18). In support of its
`functional concealment argument, Patent Owner argues that the Specification
`
`
`1 We also interpreted the claim terms “cradle,” “channel,” and “power source.”
`Dec. to Inst. 7–9. The parties do not dispute these interpretations in their Patent
`Owner Response and Petitioner’s Reply. We do not perceive any reason or
`evidence that now compels any deviation from these interpretations. Accordingly,
`we adopt our previous analysis for purposes of this Decision.
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`discloses two embodiments of the claimed input/output device as having a housing
`with input and output components that can include a microphone and a speaker,
`thus allowing the input/output device to perform voice call functions. Id. at 5–7.
`In view of these disclosures, Patent Owner argues that the telephone’s display
`screen is concealed because the mobile telephone, including its voice calling
`functionality, is being controlled by the device. Id. at 8–9.
`The descriptions cited by Patent Owner do not support its implicit
`construction of “concealed” in claim 7 because they do not describe the presence
`of a microphone and a speaker in the device as pertinent to the input/output device
`concealing the display screen of the mobile telephone, as recited in claim 7. The
`passage at column 4, lines 44–50, cited by Patent Owner discloses only that a user
`engaged in a phone conversation can insert his phone into the phone interface to
`bring up a web page or view data on the display screen and, when desired, remove
`the phone from the interface and “resume[] using the phone as a conventional
`portable phone.” Ex. 1001, col. 4, ll. 44–50 (emphasis added). The passage at
`column 9, lines 49–53, also cited by Patent Owner, similarly discloses that “when
`the phone is inserted into the input/output device, the phone provides connectivity
`to the device by functioning as a modem and/or wireless communications device
`providing real time communications capabilities with other communications
`devices,” and that when the user slides the phone out of the input/output device,
`the phone “resumes operation as a conventional portable phone.” Id. at col. 9, ll.
`55–56 (emphasis added); see also id. at col. 3, ll. 17–19 (“When the user removes
`the phone from the device, the phone then returns to functioning as a conventional
`portable phone.” (emphasis added)). These portions suggest that the phone is used
`for voice call functions before and after it is connected to the input/output device,
`but not during the time it is connected.
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`The positon of the antenna on the left side of the phone in Figure 1 of the
`’919 Patent appears to suggest a configuration in which phone 32 is placed into
`interface 24 in such a manner that the mobile phone display screen faces the back
`of the input/output device. Ex. 1001, Fig. 1. However, the accompanying
`description states only that the phone is inserted into engagement with interface 24
`and device 10 communicates with portable phone via port 28. Id. at col. 4, ll. 36–
`50. The Specification does not describe port 28 as being positioned relative to the
`corresponding port on the phone, so as to require that the phone face a direction
`that conceals any particular functionality of the phone. Even if Figure 1 is read to
`imply that, when placed in the cradle, the entire front face of the phone, including
`both its display and keypad are concealed, there is no discussion in the ’919 Patent
`concerning the actual placement of port 28 that connects to the phone. Depending
`upon the relative positon of the phone port and the port of the input/output device,
`the mobile phone could face the opposite direction from that implied by Figure 1,
`with functional operation buttons on the mobile phone facing outward. For
`example, Petitioner argues that Figure 6, when viewed in conjunction with Figure
`1, shows the front face of the mobile phone facing outward from the input/output
`device, such that it would in fact be accessible to the user. Paper 19, 4 (“Reply”).
`Most important to our construction, however, is that the relevant language of
`claim 7 requires only that the display screen is concealed. More specifically, claim
`7 does not recite that the display screen is concealed to prevent operation of any
`particular function, nor does claim 7 recite that the mobile phone keypad or any
`functional buttons on the face of the mobile phone be concealed by the
`input/output device. The relevant language of claim 7 requires only that the
`input/output device receive the mobile phone in such a manner that the mobile
`phone display screen is concealed. As the claim explicitly recites that the mobile
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`phone display screen is concealed by the input/output device, we do not read into
`claim 7 a limitation requiring that any other part or functionality be concealed by
`the input/output device. For purposes of this Decision, we interpret “concealed” to
`mean hidden from view from all perspectives. See Tr. 6:16–9:18, 32:23–33:14.
`ANALYSIS OF PRIOR ART CHALLENGES
`Introduction
`As previously discussed, claim 7 depends from claim 1 and recites the
`additional limitation “wherein the cradle defines a channel for receiving the mobile
`telephone in a position in which the display screen for the mobile telephone is
`concealed by the input/output device.” In view of Patent Owner’s concessions
`with respect to claim 1, we address only the challenges to claim 7 as (1) obvious
`over Barvesten2 and (2) obvious over the combination of Kahn3 and Kumar.4
`A fundamental premise of Patent Owner’s argument, that we address further
`in the context of each challenge, is that there is no reason to modify a prior art
`reference where the modification would render the disclosed device inoperative for
`its intended purpose. PO Resp. 26 (citing In re Gordon, 733 F.2d 900, 902 (Fed.
`Cir. 1984). Patent Owner contends, generally, that in the combination of
`references together, the phone is flipped over and that it is undisputed the
`combination device will not work for its intended purpose, i.e., to make a phone
`call. Tr. 21:3–7. Patent Owner supports this assertion with testimony from Dr.
`Sirovica stating that both Barvesten and Kahn seek to preserve and enhance the
`normal use of the mobile telephone. PO Resp. 10 (citing Sirovica Decl. ¶ 19).
`
`
`2 U.S. Patent No. 6,714,802 B1 (filed Sept. 21, 2000, issued Mar. 30, 2004)
`(Ex. 1002).
`3 U.S. Patent No. 6,505,055 B1 (filed May 1, 1998, issued Jan. 7, 2003) (Ex.
`1003).
`4 WO 00/60450 (publ. Oct. 12, 2000) (Ex. 1005).
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`Patent Owner contends that Barvesten and Kahn’s accessory devices do not have a
`speaker or microphone and rely upon the mobile telephone itself to conduct a voice
`call. Id.
`In Gordon, a claimed blood filtering device provided an inlet at the bottom,
`allowing blood to follow a spiral path to the top, where bubbles vented out a gas
`vent and an outlet at the bottom. Gordon, 733 F.2d at 900–901. In contrast, the
`sole reference, a gravity assist liquid strainer for removing dirt and water from
`gasoline, provided an inlet and outlet for the filtered gasoline at the top of the
`device and undesired water was drained using a pet-cock at the bottom. Id. The
`court found no motivation to modify the prior art apparatus by turning it upside
`down to have both the inlet and outlet valve at the bottom, because that would have
`rendered it inoperable for its intended purpose by trapping gasoline to be filtered in
`a pocket, while the water the reference seeks to separate would flow freely out of
`the outlet. Id. at 902. As discussed further herein, however, the devices described
`in the references asserted in this case are not rendered inoperable (by Petitioner’s
`proposed modifications/combinations) for their intended purpose of providing an
`enhanced user interface; nor do the proposed modifications/combinations disable
`the phones they are used with from making a voice call. In each case, the phone is
`intended to be attached to the input/output device to provide an enhanced user
`interface and can be detached to make voice calls as well. This is also a feature of
`the device recited in claim 7 of the ’919 Patent, which does not require voice call
`capability.
`Patent Owner argues that the input/output device in the ’919 Patent, in
`addition to having a second display and second keyboard, has a second microphone
`and second speaker, so that it can be used to replace the voice call functions of the
`mobile telephone. PO Resp. 10. According to Patent Owner, this is in contrast to
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`Barvesten and Kahn, in which the accessory devices rely upon and require the
`mobile telephone to conduct a voice telephone call. Id.
`The input/output device in the ’919 Patent cannot conduct a voice call, or
`perform any other wireless communication, without the mobile telephone. Indeed,
`Patent Owner made this specific argument at the hearing arguing that “[c]laim 7
`requires the two combined. It requires the phone in a cradle in a slot, connected to
`an I/O device.” Tr. 24:4–7. In the input/output device of the ’919 Patent or the
`accessory devices in any of the references on which we instituted trial for claim 7,
`the mobile telephone is required to provide wireless communication. Thus, Patent
`Owner’s argument distills to its contention that voice call functionality is a
`requirement of the input/output device recited in claim 7. It is not.
`Patent Owner reads into claim 7 limitations that are not present. Although
`claim 7 incorporates the limitations of claim 1, neither claim 1 nor claim 7 recites a
`microphone, a speaker, or voice call functionality. Petitioner notes that Patent
`Owner’s witness, Dr. Sirovica, conceded that neither a microphone nor a speaker is
`recited in claim 7 and that he was reading these features into claim 7 from the
`Specification. Reply 5–6 (citing Ex. 1017, Deposition Testimony of Dr. Dean
`Sirovica, 75:5–77:5 (“Sirovica Tr.”)).
`Claim 7 incorporates the structure recited in claim 1. Claim 1 recites a hand
`sized housing, electronic display screen, user operable input device, cradle, and
`communications port. Claim 1 also recites two “wherein” clauses. The first
`“wherein” clause recites the device “is configured to physically hold and transport
`the mobile telephone while the input/output device is handheld, the input device is
`used to control the mobile telephone, and the enlarged display screen displays
`information supplied by the mobile telephone.” The second “wherein” clause
`recites that the handheld device is “used as an integrated wireless communication
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`device in which the mobile telephone engages in wireless communications while
`the input/output device operates as a handheld, wirelessly portable, enhanced user
`interface for the mobile telephone.” The third “wherein” clause recites that the
`“cradle defines a channel for receiving the mobile telephone in a position in which
`the display screen for the mobile telephone is concealed by the input/output
`device.” None of these limitations recites a microphone, speaker, or any particular
`type of wireless voice or data communications. With a mobile phone inserted, the
`input/output device can be used to “control” the mobile telephone and “display”
`information supplied by the mobile telephone. The mobile telephone engages in
`“wireless communications” that are not enumerated in the claim, while the
`input/output device operates as a handheld, wirelessly portable enhanced user
`interface for the mobile telephone. There is no requirement in the claim that the
`“wireless communications” be voice call functionality (as opposed to, for example,
`data communications), or any other functionality of the device or the phone.
`Obviousness Over Barvesten
`Petitioner presents two independent explanations of why claim 7 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Barvesten. As discussed
`below, we find that Petitioner has demonstrated by a preponderance of the
`evidence that claim 7 is unpatentable under its theory regarding modifying
`Barvesten.
`1. Motivation to Modify Barvesten
`Barvesten discloses an accessory device with a connector into which a
`known portable communications apparatus, such as a radio phone or GSM
`telephone, can be inserted. Ex. 1002, col. 3, ll. 29–34; col. 4, ll. 1–6.
`Figures 1 and 2 of Barvesten are shown side-by-side below. Figure 1 of
`Barvesten illustrates an orientation in which display screen 13 and numeric keys 16
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`of the phone face the user. Figure 2 illustrates an orientation in which the device is
`flipped over, so that the display screen and numeric keys of the phone do not face
`the user.
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`Figures 1 and 2 of Barvesten
`As shown in Figure 2 above, Barvesten’s accessory device 2 includes
`QWERTY keypad 22, cursor navigation keys 35–38, and large display 32. Id. at
`col. 4, ll. 13–18. The QWERTY keypad, navigation keys and large display are
`contained in a housing having first and second portions 20 and 30, respectively,
`coupled by hinge mechanism 44, so that second portion 30 of the housing, is
`foldable between an open and closed position. Id. at col. 4, ll. 7–10, 18–20.
`Petitioner contends that the purpose of Barvesten’s accessory device is to
`provide an improved user interface for accessing accessory functionality provided
`by the central controller and man-machine interface of the mobile telephone. Pet.
`14 (citing Ex. 1002, col. 6, ll. 16–20). Citing the supporting testimony of its
`Declarant, Dr. William Alberth, Petitioner argues that it would have been an
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`obvious design choice to modify Barvesten to flip the mobile phone in the channel
`such that its display screen would not face outward. Id. at 31 (citing Ex. 1013 ¶
`48). Petitioner notes that such an arrangement is shown in Kumar (Ex. 1005, Fig.
`1), but does not cite Kumar as part of this challenge. Id.
`Patent Owner argues that a person of ordinary skill would not have been
`motivated to modify Barvesten, and that Barvesten teaches away from making
`Petitioner’s alleged design choice modification. PO Resp. 2. According to Patent
`Owner, Petitioner’s proposed modification is contrary to the design modality of
`Barvesten, which is preserving and enhancing the “normal” function of the mobile
`telephone. Id. We agree with Petitioner that Patent Owner’s design modality
`argument is flawed. Reply 3–6. As discussed above, claim 7 is broadly worded to
`recite an input/output device in which “the mobile telephone engages in wireless
`communications while the input/output device operates as a handheld, wirelessly
`portable, enhanced user interface for the mobile telephone.” Emphasis added. See
`also Ex. 1001, col. 3, ll. 4–17 (describing the advantages of the invention). Thus,
`the design goals and intended use of Barvesten overlap those of the invention
`recited in claim 7.
`Patent Owner further contends that, even if Barvesten were modified, such
`modification would yield a device that is inoperable, i.e., a device that could not
`initiate, receive, or conduct a voice call. PO Resp. 2.
`Patent Owner contends that Barvesten primarily is drawn to an accessory
`device that makes text communication easier due to the accessory device’s display
`screen being larger than that of the phone it accessorizes. Id. at 12 (citing Ex.
`1002, col. 2, ll. 44–48). The cited portion of Barvesten actually says:
`it is an object of the present invention to provide an
`accessory device, which will make it easier for a user of a
`mobile telephone to input text into the telephone, without
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`having to rely solely on the ordinary numeric telephone
`keypad thereof.
`Ex. 1002, col. 2, ll. 44–48 (emphasis added). Barvesten further distinguishes the
`modes of operation stating:
`the portable communication apparatus shall appear in a
`compact size, having a low weight and a low power
`consumption, in situations where the user is only
`interested in normal telephony services (communication
`of speech). On the other hand, in situations where more
`advanced features than normal speech communication are
`required (such as text processing or presentation of
`graphic
`information),
`the portable communication
`apparatus shall provide a user interface, which is better
`for these services.
`Id. at col. 2, ll. 51–60 (emphasis added). Barvesten further describes its intended
`use as follows:
`the accessory device 2 of the preferred embodiment is
`intended to provide an improved user interface for
`accessing functionality provided by the central controller
`and man-machine interface of the mobile telephone 1.
`However, the controller 410 of the accessory device 2 may
`also be arranged to provide additional functionality, which
`is not included in the standard man-machine interface of
`the mobile telephone 1.
`Id. at col. 6, ll. 16–23 (emphasis added).
`Although nowhere in this description does Barvesten explicitly discuss the
`voice capabilities of the phone as being part of the intended use of the accessory,
`Barvesten does identify as an objective a device that has “low weight and a low
`power consumption, in situations where the user is only interested in normal
`telephony services (communication of speech).” Id. at col. 2, ll. 53–55. This
`objective, however, only requires low weight and power, and does not require the
`accessory device to provide voice call functionality that is already available from
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`the mobile phone. Barvesten’s intended use is to provide a user interface that is
`“better” for “more advanced features than normal speech communication[s] . . .
`(such as text processing or presentation of graphic information).” Id. at col. 2, ll.
`56–60.
`Petitioner contends it would have been an obvious design choice to flip the
`phone in Barvesten’s cradle, such that the display screen does not face outward
`from the rear of the accessory. Pet. 31–32.5 As Petitioner notes, Patent Owner
`acknowledges there were reasons why a person of ordinary skill would consider
`flipping the phone to conceal the display screen, for example, to prevent scratching
`the display screen. Reply 10–11 (citing PO Resp. 9, Sirovica Tr. 80:2–81:17,
`86:14–87:1).
`Patent Owner contends that by flipping the display screen, Barvesten could
`not be used as intended because it could not be operated for communication of
`speech, i.e., making a voice call. PO Resp. 25–26. Thus, Patent Owner argues, a
`person of ordinary skill would not have been motivated to make such a design
`choice. Id. Petitioner responds that, even with the phone flipped over, it would
`still have been possible to use the Barvesten phone in a conventional way to make
`voice calls by taking it out of the sleeve. Reply 13. Patent Owner counters that by
`taking the mobile phone out of the sleeve, “[y]ou no longer have the claimed
`combination.” Tr. 24:3–6 (statement by counsel for Patent Owner). However, as
`discussed above, although claim 7 recites “wireless communications,” claim 7 does
`not require voice call capability.
`
`
`5 Although not part of this ground, Petitioner also cited related prior art by Kumar
`(Ex. 1005), which we discuss further in this Decision, as illustrating a docking
`display for a mobile phone in which the display screen is entirely concealed by the
`docking display. Pet. 32.
`
`
`
`17
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`

`
`IPR2015-00046
`Patent 7,477,919 B2
`
`
`Patent Owner attempts to distinguish Barvesten because, even though
`Barvesten provides the same feature as that explicitly recited in claim 7, i.e., an
`enhanced user interface, Barvesten suggests an additional intended purpose, i.e.,
`voice communication. However, as previously discussed, Barvesten’s intended
`use is to provide a user interface “where more advanced features than normal
`speech communication are required.” Ex. 1002, col. 2, ll. 56–57. Thus, we do not
`find that modifying Barvesten to conceal the mobile phone display screen, for
`example by flipping the phone in the slot, would render Barvesten inoperative for
`its intended purpose. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016)
`(Board properly found that one of ordinary skill would have been motivated to
`pursue the desirable properties taught by one reference, even if that meant forgoing
`the benefit taught by another).
` Petitioner also notes that this is exactly how the ’919 Patent works. Reply
`13. The ’919 Patent does not describe making calls using the I/O device, but
`instead, discusses using the microphone to incorporate voice recognition into the
`device. Ex. 1001, col. 5, l. 66–col. 6, l. 1. The ’919 Patent further states that when
`desired the user simply removes the phone from the interface and resumes using
`the phone in the conventional manner. Id. at col. 3, ll. 17–19, col. 4, ll. 48–50, col.
`9, ll. 49–60.
`The question before us is whether one of ordinary skill would have been
`motivated to flip the mobile phone in Barvesten to conceal the display screen in a
`device that provides wireless communications. Barvesten discloses the advantages
`to enhancing the display screen, which is a feature recited in claim 7. Petitioner’s
`arguments that one of ordinary skill would have been motivated to protect the
`display screen from damage and that flipping the phone in the Barvesten cradle
`would have provided this advantage are persuasive. Reply 10–11. As discussed
`
`
`
`18
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`

`