Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 36
`Entered: February 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TCL CORPORATION, TCL COMMUNICATION TECHNOLOGY
`HOLDINGS, LTD., TCT MOBILE LIMITED, TCT MOBILE INC.,
`and TCT MOBILE (US), INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`
`
`Case IPR2015-01806
`Patent RE43,931 E
`____________
`
`
`
`
`Before PATRICK R. SCANLON, BARBARA A. BENOIT, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
` Paper 36
`Entered: February 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TCL CORPORATION, TCL COMMUNICATION TECHNOLOGY
`HOLDINGS, LTD., TCT MOBILE LIMITED, TCT MOBILE INC.,
`and TCT MOBILE (US), INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`
`
`Case IPR2015-01806
`Patent RE43,931 E
`____________
`
`
`
`
`Before PATRICK R. SCANLON, BARBARA A. BENOIT, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-01806
`Patent RE43,931 E
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`
`I. INTRODUCTION
`
`This inter partes review, instituted pursuant to 35 U.S.C. § 314,
`challenges the patentability of claims 58–69 of U.S. Patent No. RE43,931 E
`(Ex. 1001, “the ’931 patent” or “the challenged patent”), owned by
`Telefonaktiebolaget LM Ericsson (“Patent Owner”). We have jurisdiction
`under 35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35
`U.S.C. § 318(a) and 37 C.F.R. § 42.73. This Final Written Decision is
`issued concurrently with a Final Written Decision in IPR2015-01646, which
`also challenges the patentability of claims 58–69 of the ’931 patent.
`For the reasons discussed herein, Petitioner has shown by a
`preponderance of the evidence that claims 58–69 of the ’931 patent are
`unpatentable.
`
`A. Procedural History
`TCL Corporation, TCL Communication Technology Holdings, Ltd.,
`TCT Mobile Limited, TCT Mobile Inc., and TCT Mobile (US), Inc.
`(collectively, “Petitioner”) filed a Petition for inter partes review of
`claims 58–69 (“the challenged claims”) of the ’931 patent. Paper 1 (“Pet.”).
`We instituted an inter partes review of the challenged claims as unpatentable
`on certain grounds. Paper 8 (“Inst. Dec.”).
`Patent Owner filed a Patent Owner Response to the Petition
`(Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper 25, “Pet.
`Reply”). Petitioner relies on the Declarations of Andrew Wolfe, Ph.D.
`(Exhibits 1208 and 1211) in support of its contentions, and Patent Owner
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`relies on the Declaration of Jean Renard Ward (Exhibit 2057) in support of
`its contentions.
`An oral hearing was held on December 15, 2016. A transcript of the
`oral hearing is included in the record. Paper 35 (“Tr.”).
`
`B. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 1–2; Paper 4 (Patent Owner’s Related
`Matters). The parties indicate that the ’931 patent is at issue in Ericsson
`Inc. v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-cv-11 (E.D. Tex.).
`Pet. 1–2; Paper 4. In addition, the parties identify Ericsson Inc. v. TCL
`Commc’n Tech. Holdings, Ltd., No. 2:14-cv-667 (E.D. Tex.) and Ericsson
`Inc. v. Apple Inc., No. 2:15-cv-289 (E.D. Tex.) as related matters. Pet. 1–
`2; Paper 4.
`Claims of the ’931 patent also are subject to inter partes review in
`IPR2015-01602, IPR2015-01637, IPR2015-01641, IPR2015-01646,
`IPR2015-01674, IPR2015-01676, and IPR2015-01761. With particular
`regard to the claims at issue in this proceeding, Petitioner filed two
`Petitions for inter partes review of claims 58–69 of the ’931 patent, which
`were designated as IPR2015-01646 and IPR2015-01806, respectively. The
`Petition in IPR2015-01646 was filed August 3, 2015, whereas the Petition
`for this proceeding was filed August 28, 2015.
`Petitioner relies on U.S. Patent No. 5,892,475 (“Palatsi”) and U.S.
`Patent No. 4,566,001(“Moore”) in IPR2015-01674, IPR2015-01676,
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`IPR2015-01761, and IPR2015-01806. Paper 14 (“Consolidation Order”).
`Subsequent to institution of these inter partes reviews, and after conferring
`with the parties neither of whom opposed consolidation, we ordered an
`identical, consolidated patent owner response under 37 C.F.R. § 42.120 be
`filed in the record of these inter partes reviews involving assertions that
`various claims of the ’931 were unpatentable over Moore and Palatsi. Id.
`Similarly, we ordered Petitioner’s reply, if any, to be an identical,
`consolidated reply filed in each inter partes review. Id. We also expanded
`the permitted length to two-and-a-half times the length limit provided in 37
`C.F.R. § 42.24(b)(1) for both the patent owner response and petitioner’s
`reply. Id. In addition, we held a consolidated hearing for these four inter
`partes reviews. Tr. at 2:17–19.
`
`C. The ’931 Patent
`The ’931 patent is a reissue of U.S. Patent No. 6,278,888, which
`issued on August 21, 2001 from an application filed on July 25, 2000.
`Ex. 1001, [64]. The earliest effective filing date claimed by the ’931 patent
`is December 30, 1997. Id. at [63].
`
`1. The Written Description
`The ’931 patent identifies “the need for improved input devices for
`radiotelephones.” Id. at 1:66–67. The patent describes conventional
`approaches of using one or more keys to control the scrolling of graphical
`objects on the display or using “a wheel-like input device . . . mounted on
`the radiotelephone case that may be turned by a user to effect scrolling of
`graphical objects on the display.” Id. at 1:48–56. The patent indicates that
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`the use of “[k]eys for scrolling and invoking display selections . . . may
`consume valuable space on the keypad of the radiotelephone.” Id. at 1:60–
`63.
`
`The patent describes radiotelephones “in which control of a
`radiotelephone’s display and/or radiotelephone communications
`transceiver is effected using a contact-sensitive transducer such as a
`resistive or capacitive touch strip mounted on the radiotelephone.” Id. at
`2:9–13. Figures 1 and 2 of the ’931 patent are reproduced below:
`
`
`
`
`
`Figure 1 illustrates radiotelephone 100, and Figure 2 is a block diagram of
`the radiotelephone. Id. at 4:15–18. Radiotelephone 100 comprises
`housing 110, supporting display 120, and keys 130. Id. at 5:1–3. Mounted
`on a side surface of housing 110 is contact-sensitive transducer 150. Id. at
`5:10–11.
`As shown in Figure 2, “the contact-sensitive transducer 150
`produces an output signal 155 that characterizes contact of an object, such
`as a user’s finger 210, along an axis 150a of the transducer 150.” Id. at
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`5:22–25. Controller 220 selectively displays an image, such as one or
`more rows 240 of alphanumeric characters, on display 120 in response to
`output signal 155. Id. at 5:28–30. Controller 220 also controls
`radiotelephone communications transceiver 230 according to output signal
`155. Id. at 5:31–33.
`Alternatively, the contact-sensitive transducer can be mounted to the
`front face of the radiotelephone housing, as shown in Figure 11 reproduced
`below. Id. at 9:61–65, Fig. 11.
`
`
`As shown in Figure 11, radiotelephone 100ˈ includes horizontally-
`arranged contact-sensitive transducer 150c mounted on a front face of
`radiotelephone housing 110, near the display 120. The patent explains that
`the contact-sensitive transducer 150c can be used to control the display of
`objects on display 120 “based on contact of an object e.g., a finger or stylus,
`with the contact-sensitive transducer 150c.” Id. at 9:61–10:3.
`In addition, the patent describes an embodiment in which “the
`controller has a first mode wherein the controller is responsive to contact
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`with the contact-sensitive transducer and a second mode wherein the
`controller is unresponsive to contact with the contact-sensitive transducer.”
`Id. at 3:34–38. The controller is placed into the first or second mode in
`response to an input from a user. Id. at 3:38–41.
`
`2. Illustrative Claims
`The challenged claims were added during reissue. Of the challenged
`claims, claims 58 and 64 are independent and are illustrative of the claimed
`subject matter.
`58. An apparatus for providing user input to a hand-held
`electronic device, comprising:
`a housing for containing the electronics for performing the
`intended user functions of the device, said housing having a front
`surface, a rear surface and first and second side surfaces
`adjoining respective opposite sides of the front surface and
`extending from the respective opposite sides of the front surface
`to respective opposite sides of the rear surface, the housing
`configured to be held in a user’s hand such that the rear surface
`confronts the user’s palm;
`a display located on the front surface of the housing for
`displaying user-interface information for the electronic device,
`said information including an image of rows of menu selectable
`items;
`a contact-sensitive transducer, supported by the front
`surface of the housing, which produces an output signal that
`characterizes moving contact of an object along the contact-
`sensitive surface of the contact-sensitive transducer; and
`a controller, responsive
`to
`the output signal and
`operatively associated with the display, which scrolls displayed
`rows of said menu selectable items along an axis of the display
`based upon the output signal of the contact-sensitive transducer
`to enable selection of a particular item by the user to provide
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`input to the electronic device, the controller having a first mode
`wherein the controller is responsive to contact with the contact-
`sensitive transducer and a second mode wherein the controller is
`unresponsive to contact with the contact-sensitive transducer, the
`second mode being entered in response to an input from a user.
`Ex. 1001, 15:29–16:2.
`
`64. An apparatus, comprising:
`a housing having a front surface and a rear surface,
`the housing configured to be held in a user’s hand such
`that the rear surface confronts the user’s palm;
`a display, supported by the housing, that displays an
`image at a front surface of the housing;
`a contact-sensitive transducer, supported by a front
`surface of the housing, which produces an output signal
`that characterizes moving contact of an object along the
`contact-sensitive
`surface of
`the
`contact-sensitive
`transducer; and
`a controller, responsive to the output signal and
`operatively associated with the display which scrolls
`displayed rows along an axis of the display based on the
`output signal of the contact-sensitive transducer, the
`controller having a first mode wherein the controller is
`responsive to contact with the contact-sensitive transducer
`and a second mode wherein the controller is unresponsive
`to contact with the contact-sensitive transducer, the second
`mode being entered in response to user input.
`Ex. 1001, 16:17–37.
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`
`D. Instituted Ground of Unpatentability
`We instituted an inter partes review of the ’931 patent based on
`Petitioner’s asserted ground that claims 58–69 are unpatentable under
`35 U.S.C. § 1031 over Palatsi2 and Moore.3 Inst. Dec. 18.
`
`II. DISCUSSION
`
`A. Principles of Law Concerning Demonstrating Unpatentability
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
`Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
`
`1 Section 3(c) of the Leahy-Smith America Invents Act (“AIA”) amended
`35 U.S.C. § 103. Pub. L. No. 112-29, 125 Stat. 284, 287–288 (2011).
`Because the ’931 patent has a filing date before March 16, 2013 (effective
`date of section 3), the pre-AIA version of § 103 applies in this proceeding.
`See id., § 3(n)(1), 125 Stat. at 293.
`2 U.S. Patent No. 5,892,475, issued Apr. 6, 1999 (Ex. 1087, “Palatsi”).
`3 U.S. Patent No. 4,566,001, issued Jan. 21, 1986 (Ex. 1012, “Moore”).
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`review). Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`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; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious under § 103
`requires consideration of all four Graham factors, and it is error to reach a
`conclusion of obviousness until all those factors are considered.” Apple v.
`Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
`(citations omitted). “This requirement is in recognition of the fact that each
`of the Graham factors helps inform the ultimate obviousness determination.”
`Id.
`
`B. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. “The importance of resolving the level of ordinary skill in the art
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`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art at the time of the invention. In re GPAC,
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in
`determining the level of ordinary skill in the art include, but are not limited
`to, the types of problems encountered in the art, the sophistication of the
`technology, and educational level of active workers in the field. Id. In a
`given case, one or more factors may predominate. Id. Generally, it is easier
`to establish obviousness under a higher level of ordinary skill in the art.
`Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir.
`2011) (“A less sophisticated level of skill generally favors a determination of
`nonobviousness . . . while a higher level of skill favors the reverse.”).
`Relying on the testimony of Dr. Wolfe, Petitioner submits that a
`person of ordinary skill in the art “is someone with a bachelor’s degree in
`computer engineering, electrical engineering, or computer science, and two
`years of experience with touch-based user input systems or equivalent
`education and experience on December 30, 1997, the date to which the
`’931 patent claims priority.” Pet. 10 (citing Ex. 1208 ¶ 58). Patent Owner
`argues that Petitioner’s definition is erroneous because it lacks “specific
`experience with respect to the art of handheld radiotelephones, mobile
`phones, cell phones, or handheld devices,” to which the claims are
`directed. PO Resp. 22 (emphasis in original). Relying on the testimony of
`Mr. Ward, Patent Owner submits that a person of ordinary skill in the art is
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`in computer
`someone with a bachelor’s degree
`engineering, electrical engineering, or computer science,
`having multiple years of hands-on experience working
`with hand-held contact-sensitive user interface devices, or
`graphic user interfaces. [One of ordinary skill in the art]
`has direct knowledge of the types of contact-sensitive user
`interfaces used in mobile phones or handheld devices as of
`December 30, 1997 and understood the design and
`functional tradeoffs with regard to the physical constraints
`of a hand-held device.
`Id. at 21 (citing Ex. 2057 ¶ 22). Petitioner disagrees, arguing that Patent
`Owner’s reliance on the art of radiotelephones or handheld devices is not
`supported by the claim language and that Patent Owner’s definition differs
`from the definition provided by its declarant, Mr. Ward. Pet. Reply 45–46.
`We agree with Petitioner’s second point that Patent Owner has
`added “graphic user interfaces” “and understood the design and functional
`tradeoffs with regard to the physical constraints of a hand-held device” to
`Mr. Ward’s testimony. Rather, Mr. Ward opines that one of ordinary skill
`in the art “would probably have had a bachelor’s degree in electrical
`engineering or computer engineering, at least 2–3 years of hands-on
`experience working with hand held contact-sensitive user interface
`devices, and direct knowledge of the types of user interfaces used in
`mobile phones and handheld devices in 1997.” Ex. 2057 ¶ 22.
`In reaching this conclusion, Mr. Ward indicates he “considered the
`‘931 patent, the types of problems encountered in the art of handheld radio
`telephone devices and handheld devices, the prior art solutions to those
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`problems, and the educational level of workers active in the field.” Id. In
`contrast, Dr. Wolfe does not explain the basis for his opinion. 1208 ¶ 58.
`We determine that the level of ordinary skill proposed by Mr. Ward
`is consistent with the challenged patent and the asserted prior art, and we
`therefore adopt this definition of the level of ordinary skill in the art for the
`purposes of the analysis below. Our analysis would not differ, however, if
`we adopted Dr. Wolfe’s definition.
`
`C. Claim Construction
`In an inter partes review, the Board interprets claims in an unexpired
`patent using the “broadest reasonable construction in light of the
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of broadest reasonable construction standard). Consistent
`with the broadest reasonable construction standard, claim terms are
`presumed to have their ordinary and customary meaning as understood by
`one of ordinary skill in the art in the context of the entire patent disclosure at
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). 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). Moreover, limitations are not to be
`read from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993). In addition, the Board may not “construe claims
`during [an inter partes review] so broadly that its constructions are
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`unreasonable under general claim construction principles.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the
`challenged claims according to these principles.
`Prior to our Institution Decision, Petitioner proposed constructions for
`“contact-sensitive transducer . . . which produces an output signal.” Pet. 12–
`14. Patent Owner did not propose any express constructions or challenge
`Petitioner’s proposed construction. See generally PO Resp.; Paper 7 (Patent
`Owner’s Preliminary Response). In the Institution Decision, we determined
`that no claim term required express construction. Inst. Dec. 6. In its
`Response, Patent Owner indicates that it “generally agrees that the
`constructions proposed by [Petitioner] are in keeping with how a [person of
`ordinary skill in the art] would have understood those terms.” PO Resp. 23.
`We determine that no term in the challenged claims requires express
`construction for this Final Written Decision. See, e.g., Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
`need only be construed ‘to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`D. Asserted Ground of Unpatentability
`Petitioner contends that claims 58–69 of the ’931 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over Palatsi and Moore.
`Pet. 14–53. Petitioner provides analysis purportedly explaining how the
`combination would have conveyed to one of ordinary skill in the art the
`claim limitations and provides reasons why one of ordinary skill in the art
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`would have combined the teachings of the references. Id. Petitioner
`supports its contentions with citations to the references and with declaration
`testimony of Dr. Wolfe. Id.; Ex. 1208.
`Relying on the support of Mr. Ward, Patent Owner opposes
`Petitioner’s contentions. PO Resp. 1–2, 24–45 (citing Ex. 2057). In reply,
`Petitioner maintains, with further support of Dr. Wolfe, its position that
`claims 58–69 would have been obvious over Palatsi and Moore. Pet.
`Reply 1–31, 37–42 (citing Ex. 1211).
`We have reviewed the Petition, Patent Owner’s Response, and
`Petitioner’s Reply, as well as the relevant evidence discussed in those
`papers. For reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence the subject matter of claims 58–69 would
`have been obvious over Palatsi and Moore.
`
`1. Summary of Prior Art References
`a. Summary of Palatsi
`Palatsi issued April 6, 1999 from an application filed June 23, 1997.
`Ex. 1087, [22], [45]. Palatsi describes a need for portable, hand-held
`telephones to be smaller, which requires the size of the keypad on the
`device to be smaller. Id. at 1:21–24. As a result, the device may be less
`easy to use because the keys are small. Id. at 1:24–26. Figure 2 of Palatsi,
`reproduced below, depicts a portable telephone.
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`As shown in Figure 2, portable telephone 1 has antenna 2, keypad 7,
`display 8, and a volume control (not identified by a reference numeral). Id.
`at 2:17–26. Keypad 7 includes two “soft” keys 11, 12. Id. at 2:26. “The
`two soft keys are located close together to minimi[z]e finger movement.”
`Id. at 2:38–39. “The functions of the ‘soft’ keys vary from time to time.”
`Id. at 2:34–35. In one example, a user may press soft key 11 to move a
`displayed cursor to the first displayed menu item and then may press soft
`key 11 twice again to toggle between “off” and “on” to change the setting of
`the first displayed menu item. Id. at 3:20–26; Fig. 4. In another example,
`Palatsi describes using soft key 11 to scroll through menu items. Id. at 2:63–
`66, 3:34–42. Palatsi also indicates that keys can be replaced with touch
`sensors. Id. at 4:17–19 (“Rather than having one or more keys as the input
`means[,] the telephone could have, for example, one or more touch
`sensors.”). Palatsi also indicates that “[e]ach input device is preferably a
`binary input device having two states: actuated and not actuated.” Id. at
`4:21–23.
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`b. Summary of Moore
`Moore, titled “Touch Strip Input for Display Terminal,” issued
`January 21, 1986. Ex. 1012, [45], [54]. Moore describes a “display
`terminal” that includes “a position sensitive touch strip extending along an
`edge of the display screen,” the output of which is “dependent on the
`distance along the strip of the position touched by a terminal user.” Id. at
`1:42–48. Figure 1 of Moore, reproduced below, depicts a display terminal.
`
`
`As shown in Figure 1, the display terminal includes “a cathode ray tube
`(CRT) unit 10 with a rectangular screen 12” and keyboard 14. Id. at 2:15–
`19. Along respective adjacent edges of display screen 12 are two touch
`strips 16, 18. Id. at 2:20–26, 4:30–31. One touch strip is horizontal and
`the other vertical. Id. Each touch strip “has a voltage output which is
`representative of the distance along it at which it is touched.” Id. at 2:20–
`26. Moore also describes an alternative embodiment in which “a bank of
`such touch strips [is] mounted along each edge” of the display screen. Id.
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`at 4:33–34. In this embodiment “keys associated with the . . . keyboard
`must permit switching between different ones of the banks of strips.” Id. at
`4:34–36.
`Moore also describes that “soft keys . . . can be given any of a
`number of functional designations,” which can be “changed if and when
`desired during use.” Id. at 1:9–14. Soft keys are advantageous because
`they “limit the keyboard size.” Id. at 1:9–12. Moore indicates that “touch
`strips can be made to present a series of programmable or soft keys” that
`“can be used to provide a menu selection, scrolling and cursor generation
`and movement for work processing.”
`
`2. Petitioner’s Contentions: Independent Claim 58
`Relying on citations to the references and declaration testimony of
`Dr. Wolfe, Petitioner provides analysis purportedly explaining how the
`combination would have conveyed to one of ordinary skill in the art the
`limitations of independent claim 58. Pet. 22–40 (citing Ex. 1208).
`Petitioner, again relying on citations to the references and the declaration
`testimony of Dr. Wolfe, provides reasons why one of ordinary skill in the art
`would have combined the teachings of the references in the manner
`proposed by Petitioner. Id. at 18–22 (citing Ex. 1208).
`In general, Petitioner relies on Palatsi’s portable telephone for many
`of the apparatus elements (including a housing, a display located on the front
`surface of the housing, a controller operatively associated with the display,
`and soft keys for input) and further relies on “Moore’s touch strips as an
`alternative input method for improving Palatsi’s push-key user interface” for
`
`18
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`conveying “a contact-sensitive transducer” and “a controller” with a second
`mode, as recited in independent claim 58. Id. at 18; see also id. at 18–22.
`Petitioner’s specific contentions regarding elements of claim 58 are
`discussed below.
`
`a. Preamble
`Petitioner contends that Palatsi’s portable telephone is an
`apparatus. Pet. 22 (citing Ex. 1087, 2:17; Ex. 1208 ¶ 150).
`
`b. Housing
`Claim 58 recites “a housing for containing the electronics for
`performing the intended user functions of the device, said housing
`having a front surface, a rear surface and first and second side
`surfaces adjoining respective opposite edges of the front surface and
`extending from the respective opposite edges of the front surface to
`respective opposite edges of the rear surface, the housing configured
`to be held in a user’s hand such that the rear surface confronts the
`user’s palm.” Petitioner contends that Palatsi would have conveyed to
`one of ordinary skill in the art the recited housing. Id. at 23–25.
`Specifically, Petitioner contends that “Fig. 2 of Palatsi . . . illustrates
`the front surface of the portable telephone” and also would have
`conveyed to one of ordinary skill in the art “a housing [having] a front
`surface, a rear surface and first and second side surfaces adjoining
`respective opposite sides of the front surface and extending from the
`respective opposite sides of the front surface to respective opposite
`
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`sides of the rear surface,” as recited in claim 58. Id. at 24 (citing
`Ex. 1087, Fig. 2; Ex. 1208 ¶ 153).
`With regard to the limitation that “the housing configured to be held
`in a user’s hand such that the rear surface confronts the user’s palm” (“the
`handheld limitation”), Dr. Wolfe testifies that Palatsi’s Figure 2 and Palatsi’s
`teaching that “[t]here is a need for portable telephones (especially hand-
`portable telephones) to be smaller to make them more convenient to carry”
`would have conveyed to one of ordinary skill in the art the handheld
`limitation. Ex. 1208 ¶ 153 (citing Ex. 1087, 1:21–24, Fig. 2); see Pet. 24–25
`(citing Ex. 1087, 1:21–24; Ex. 1208 ¶ 153). Dr. Wolfe further testifies that
`Palatsi’s Figure 1 depicting a line drawn around illustrated electronic
`components identifies a housing wall that contains electronic components.
`Ex. 1208 ¶ 152 (citing Ex. 1087, 2:17–18, Fig. 1; Ex. 1208 ¶ 152).
`Dr. Wolfe also testifies that “[b]y virtue of the radiotelephone housing
`of Palatsi being small enough to be held in a user’s hand, a POSITA would
`have understood that the housing would be held with the rear surface
`confronting the palm of the user’s hand in order to interact with the keys
`and/or display on the front surface.” Ex. 1208 ¶ 155; see Pet. 23–24
`(discussing Ex. 1208 ¶¶ 152–53). Dr. Wolfe cites to other prior art
`references to further support his testimony. Ex. 1208 ¶ 154 (discussing
`Ex. 1035 (Nokia’s 1996 annual report illustrating various mobile telephones
`(similar to Palatsi’s mobile telephone) that are held in a user’s hand);
`Ex. 1010 (U.S. Patent 5,615,384 illustrating a mobile telephone similar to
`Palatsi’s mobile telephone)).
`
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`
`c. Display
`Claim 58 recites “a display located on the front surface of the
`housing for displaying user-interface information for the electronic
`devices, said information including an image of rows of menu
`selectable items.” For this limitation, Petitioner relies on Palatsi’s
`“portable telephone 1” shown in Figures 2–4 and Palatsi’s disclosure
`that “portable telephone 1 has . . . an LCD display 8.” Pet. 25–28
`(citing Ex. 1208 ¶¶ 156–59; Ex. 1087 2:24, 2:30–33, 2:35–59,
`Figs. 1–4). Petitioner, relying on Dr. Wolfe’s testimony, contends
`that Palatsi shows in Figures 3 and 4 a “scroll-and-select menu
`system,”4 which includes rows of menu selectable items on the
`display, as required by the claim. Id. at 27 (citing Ex. 1087, 2:40–59,
`Figs. 3–4; Ex. 1208 ¶ 159).
`
`d. Contact-Sensitive Transducer
`Claim 58 also recites “a contact-sensitive transducer, supported
`by the front-surface of the housing, which produces an output signal
`that characterizes moving contact of an object along the contact-
`sensitive surface of the contact-sensitive transducer.” Petitioner
`contends that Palatsi’s portable telephone, with Moore’s touch strips
`replacing Palatsi’s soft keys would have conveyed to one of ordinary
`skill in the art this limitation. Id. at 28–31 (citing Ex. 1208 ¶¶ 160–
`65); id. at 18–22.
`
`
`4 Palatsi explains that a scroll-and-select menu allows the user to scroll
`through menu items and then select the desired one. Ex. 1087, 2:41–43.
`21
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`
`Specifically, Petitioner relies on Palatsi’s telephone with soft
`keys and Moore’s teachings that (i) the voltage output of a position-
`sensitive touch strip is “representative of the distance along it at which
`it is touched” and (ii) “to cause scrolling of displayed text or graphics,
`‘the user merely strokes the touch strips along their length in the
`direction in which the displayed field is to move.’” Id. at 28 (quoting
`Ex. 1012, 2:24–26; citing Ex. 1208 ¶ 161); id. at 30 (quoting
`Ex. 1012, 4:20–29; citing Ex. 1208 ¶¶ 163–65). Petitioner, relying on
`Dr. Wolfe’s testimony, explains how the combination of Moore’s
`touch strips replacing Palatsi’s soft keys would have conveyed to one
`of ordinary skill in the art “the output signal of the contact-sensitive
`transducer ‘characterizing moving contact of an object along the
`contact-sensitive surface of the contact-sensitive transducer,’”
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