IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`Attorney Docket No.: 30146-0017IP1
`
`In re Patent of: Singh et al.
`U.S. Pat. No.: 6,400,376 B1
`Issue Date:
`June 4, 2002
`Appl. Serial No.: 09/217,400
`Filing Date: Dec. 21, 1998
`Title: DISPLAY CONTROL FOR HAND-HELD DATA PROCESSING DEVICE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 6,400,376 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8 ................................. 2
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 2
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 3
`D. Service Information .................................................................................. 3
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................ 3
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............ 3
`SUMMARY OF THE ’376 PATENT .......................................................... 5
`A. Brief Description ....................................................................................... 5
`B. Summary of the Original Prosecution .................................................... 6
`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ................................ 7
`
`V.
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’376 PATENT IS UNPATENTABLE ................. 9
`
`A. Ground 1 [DeLorme in view of Yano] sets forth a reasonable
`likelihood to prevail on at least one of Claims 16 and 28 ................... 11
`B. Ground 2 [DeLorme in view of Yano and Allard] sets forth a
`reasonable likelihood to prevail on at least one of Claims 17
`and 29-31 ................................................................................................. 18
`C. Ground 3 [Needham] sets forth a reasonable likelihood to
`prevail on at least one of Claims 16 and 28 .......................................... 22
`D. Ground 4 [Obviousness based on Needham] sets forth a
`reasonable likelihood to prevail on at least one of Claims 16
`and 28 ....................................................................................................... 25
`E. Ground 5 [Needham in view of Allard] sets forth a reasonable
`likelihood to prevail on at least one of Claims 17 and 29-31 .............. 27
`VIII. [GROUND 1 CLAIM CHART] – Obviousness of claims 16 and 28
`under § 103 over DeLorme in view of Yano.............................................. 30
`
`i
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`

`
`IX.
`
`X.
`
`XI.
`
`[GROUND 2 CLAIM CHART] – Obviousness of claims 17 and
`29-31 under § 103 over DeLorme in view of Yano and Allard ............... 37
`
`[GROUND 3 CLAIM CHART] – Anticipation of claims 16 and 28
`under § 102(b) by Needham ........................................................................ 41
`
`[GROUND 5 CLAIM CHART] – Obviousness of claims 17 and
`29-31 under § 103 over Needham in view of Allard ................................. 45
`
`XII. CONCLUSION ............................................................................................ 48
`
`
`
`ii
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`

`
`EXHIBITS
`
`APPLE1001
`
`U.S. Pat. No. 6,400,376 to Singh et al. (“the ’376 patent”)
`
`APPLE1002
`
`Prosecution History of the ‘376 patent (Serial No. 09/217,400)
`
`APPLE1003
`
`Declaration of Dr. Gregory Welch
`
`APPLE1004
`
`U.S. Pat. No. 6,321,158 to DeLorme et al. (“DeLorme”)
`
`APPLE1005
`
`U.S. Pat. No. 5,731,979 to Yano et al. (“Yano”)
`
`APPLE1006
`
`U.S. Pat. No. 5,615,384 to Allard et al. (“Allard”)
`
`APPLE1007
`
`U.S. Pat. No. 5,623,589 to Needham et al. (“Needham”)
`
`APPLE1008
`
`Patent Owner’s Infringement Contentions for Ericsson Inc. et al
`v. Apple, Inc., Case No. 2:15-cv-289-JRG (E.D. Tex.)
`
`
`
`iii
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`

`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) under 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 16-17 and 28-31 of U.S. Patent
`
`6,400,376 (“the ’376 patent”). The ’376 patent purports to describe an improve-
`
`ment to touch screen computing devices, and more specifically to presentation and
`
`navigation of information that has been divided into sub-pages. Ex. 1001 at 5:26-
`
`43; 7:1-55. The ‘376 patent describes presenting information as a “virtual page”
`
`that is too large to display all at once on a display screen of a touch screen compu-
`
`ting device. Id. at 2:12-29. The virtual page is divided into sub-pages, with por-
`
`tions of two or more of the sub-pages displayed on the screen. Id. at 7:1-16. When
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`a user touches one of the sub-pages displayed on the touch screen, all or a portion
`
`of the selected sub-page is displayed on the touch screen. Id. at 7:17-55.
`
`But the subject matter of claims 16-17 and 28-31 was not new. To the con-
`
`trary, the ’376 patent was granted without full consideration to the more pertinent
`
`body of applicable prior art. For example, the DeLorme reference (Ex. 1004) dis-
`
`closes the exact limitation that was identified during prosecution of the ‘376 as
`
`missing from the prior art, namely, “sensing a touch input in an area of said display
`
`screen where one of said subpages is displayed.” Ex. 1002 at 160 (emphasis origi-
`
`nal). Specifically, Delorme discloses displaying a map divided into “tiles” or
`
`“quadrangles” on a touch screen and “panning or shifting to recenter the map dis-
`
`1
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`

`
`play” to a portion of the map touched by the user. Ex. 1004 at 60:66-61:5; 21:33-
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`34; 49:37-39. DeLorme is not alone, as Yano (Ex. 1005), Needham (Ex. 1007),
`
`and other references cited herein likewise disclose a similar traditional functionali-
`
`ty in which a user touches one of the sub-pages of a virtual page so as to display a
`
`predetermined portion of the selected sub-page.
`
`In sum, if the Office had been aware of DeLorme, Yano, Needham, and the
`
`other references/evidence cited herein, claims 16-17 and 28-31 of the ’376 patent
`
`never would have issued. Petitioner therefore requests the Board to institute inter
`
`partes review of claims 16-17 and 28-31 on the grounds set forth below.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc. is the real party-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The Patent Owner filed complaints in the Eastern District of Texas alleging
`
`infringement of the ’376 patent on February 26, 2015 against Apple Inc. (Case No.
`
`2:15-cv-289-JRG). Ericsson and Apple are involved in multiple patent cases in the
`
`U.S. and Europe. In the U.S., there are two cases pending in the U.S. International
`
`Trade Commission, one in the Northern District of California, and eight in the
`
`Eastern District of Texas. In those cases, Ericsson has asserted more than forty pa-
`
`tents and over six hundred claims. Ericsson also has pending patent cases against
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`Apple in the United Kingdom, Germany, and the Netherlands, where Ericsson has
`
`2
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`

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`asserted thirteen EP patents.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Michael T. Hawkins, Reg. No. 57,867
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-337-2569 / Fax 612-288-9696
`
`BACK-UP COUNSEL
`Patrick J. Bisenius, Reg. No. 63,893
`Tel: 612-766-2048 / Fax 612-288-9696
`Stuart A. Nelson, Reg. No. 63,947
`Tel: 612-337-2538
`Christopher O. Green, Reg. No. 52,964
`Tel: 404-724-2777
`Ruffin Cordell, Reg. No. 33,487
`Tel: 202-626-6449
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR30146-0017IP1@fr.com
`
`(referencing No. 30146-0017IP1 and cc’ing hawkins@fr.com, bisenius@fr.com,
`
`snelson@fr.com, cgreen@fr.com, and cordell@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
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`the petition fee set in 37 C.F.R. § 42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’376 patent is available for IPR and that Petition-
`
`er is not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`3
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`

`
`Petitioner requests IPR of claims 16-17 and 28-31 of the ’376 patent on the
`
`grounds listed in the table below. In support, this Petition includes claim charts in
`
`Sections VIII-XI and a supporting declaration of Dr. Gregory Welch (Ex. 1003).
`
`Basis for Rejection
`Ground Claims
`Ground 1 16, 28 Obvious under § 103 based upon U.S. Pat. No.
`
`6,321,158 to DeLorme et al. (“DeLorme”) in view of
`
`U.S. Pat. No. 5,731,979 to Yano et al. (“Yano”)
`
`Ground 2 17, 29-
`
`Obvious under § 103 based upon DeLorme in view of
`
`31
`
`Yano and U.S. Pat. No. 5,615,384 to Allard et al. (“Al-
`
`lard”)
`
`Ground 3 16, 28 Anticipated under § 102(b) by U.S. Pat. No. 5,623,589 to
`
`Needham et al. (“Needham”)
`
`Ground 4 16, 28 Obvious under § 103 based upon Needham
`
`Ground 5 17, 29-
`
`Obvious under § 103 based upon Needham in view of
`
`31
`
`Allard
`
`DeLorme qualifies as prior art under at least 35 U.S.C. § 102(e), having a
`
`filing date before Dec. 21 1998, the filing date of the ’376 patent. Yano qualifies
`
`as prior art under at least 35 U.S.C. §§ 102(a) and 102(e), having issued prior to
`
`Dec. 21 1998. Allard and Needham qualify as prior art under at least 35 U.S.C. §
`
`102(b), having issued more than a year prior to Dec. 21 1998. None of the cited
`
`references were considered by the Examiner during prosecution.
`
`4
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`

`
`V.
`
`SUMMARY OF THE ’376 PATENT
`A. Brief Description
`The ’376 patent indicates that “[d]evices which display different virtual pag-
`
`es of data . . . are, of course, well known” and that “many such small devices” in-
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`clude “touch-sensitive or touch-responsive display screens which sense when a
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`certain area of the screen is touched.” Ex. 1001 at 1:11-13; 1:46-50. The ’376 pa-
`
`tent further recognizes that these prior art touch screen devices perform commands
`
`or otherwise respond “based on the area of the screen which is touched.” Id. at
`
`1:46-50. The ’376 patent alleges that the “limitation on the size of the screen” of
`
`these prior art devices made it “difficult if not often impossible to show an entire
`
`virtual page on the screen” or to “provide adequate and reliable user control of the
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`many desired functions of the device.” Id. at 1:61-2:7. The ’376 patent’s attempted
`
`solution to this problem is to provide the virtual page as “a number of sub-pages”
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`and “to display the entirety (or a selected portion) of a sub-page responsive to
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`touching by a user of a touch responsive area 26 in which a portion of that sub-
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`page is then displayed.” Id. at 7:1-21. As described below, this supposed im-
`
`provement over known touch screen devices was far from being innovative in
`
`1998, for there were several earlier publications that taught this functionality of di-
`
`viding a virtual page into segments and displaying all or a portion of a selected
`
`segment.
`
`5
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`

`
`While the two challenged independent claims (16 and 28) include nominally
`
`different recitations, each includes a recitation of “sensing a touch input in an area
`
`of said display screen where one of said subpages is displayed.” For example,
`
`claim 28 recites a generic “display device” having a “touch sensitive display
`
`screen” and a “display controller” before going on to recite the exact same method
`
`steps recited by claim 16.
`
`B. Summary of the Original Prosecution
`The ’376 patent was filed on Dec. 21, 1998 and does not claim priority to
`
`another application. Original claims 17 and 29 (which issued as independent
`
`claims 16 and 28) were added by an amendment filed July 2, 2001. These claims
`
`and their respective dependent claims were allowed after only a single office action
`
`when the applicant argued that the cited primary reference “discloses a display sys-
`
`tem using a first portion of the computer display to display object information and
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`a separate portion of the display to show a navigation map with explicitly drawn
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`scroll buttons” rather than the claimed “sensing touch input in an area of said dis-
`
`play screen where one of said subpages is displayed.” Ex. 1002 at p. 160 (emphasis
`
`original). The Examiner reiterated this point by stating in the reasons for allow-
`
`ance that the “prior art of record does not teach a data storage device including:
`
`identifying a selected sub-page by sensing a touch input in an area of said display
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`screen where one of said sub-pages is displayed.” Id. at p. 169. As described in
`
`6
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`

`
`more detail below, the cited references in this Petition not only show that this func-
`
`tionality was indeed known in the prior art, but in fact disclose all elements of the
`
`challenged claims.
`
`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`For the purposes of IPR only, Petitioner submits that the terms of the ’376
`
`patent are to be given their broadest reasonable interpretation as understood by one
`
`of ordinary skill in the art in view of the specification of the ’376 patent in accord-
`
`ance with 37 CFR §§ 42.100(b) and 104(b)(3); see also In re Cuozzo Speed Tech-
`
`nologies, LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015). The Federal Circuit has rec-
`
`ognized that the “broadest reasonable interpretation” standard used in this proceed-
`
`ing is fundamentally different from the claim construction standard that applies in
`
`litigation. Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x 864, 869 (Fed.
`
`Cir. 2014). As such, Petitioner offers no position on the proper claim construction
`
`for any purpose outside the instant IPR, including for the purposes of litigation.
`
`The broadest reasonable constructions below should also be understood as not
`
`waiving any arguments concerning indefiniteness or claim scope that may be
`
`raised in any litigation, which requires different construction standards. Also, for
`
`purposes of this IPR only, Petitioner submits that all claim terms should be given
`
`their plain meaning under the proper broadest reasonable construction standard,
`
`and provides the following specific constructions for terms where the broadest rea-
`
`7
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`

`
`sonable interpretation may not be entirely clear or where the applicant attempted to
`
`provide its own lexicographic definition:
`
` “a virtual page” (claims 16, 17, 28, 29) – a two dimensional representa-
`
`tion of data and/or program commands. Ex. 1003 at ¶ 22. This definition of the
`
`term “a virtual page” is provided as a lexicographic definition in the specification
`
`of the ’376 patent, which recites “[a] ‘virtual page’ as used herein refers to a two
`
`dimensional representation of data and/or program commands.” Ex. 1001 at 1:11-
`
`20; Ex. 1003 at ¶ 22. This text in the ’376 patent goes on to state an optional ar-
`
`rangement in which “the two dimensions may be greater than the size of the por-
`
`tion of the screen available to display [the virtual page] so that only a portion of
`
`such data/command representation is visible in a display screen at a given time. Ex.
`
`1001 at 1:11-23. This meaning of the term “a virtual page” is also consistent with
`
`the Patent Owner’s contention that this term includes a digital book having multi-
`
`ple pages, a PDF or other text file having multiple pages, or a collection of multi-
`
`ple images (Ex. 1008 at pp. 15-19).
`
`“a composite of two or more subpages” (claims 16, 28) – two or more
`
`identifiable sections of the virtual page. Ex. 1003 at ¶ 23. Under the broadest rea-
`
`sonable interpretation standard, this meaning is consistent with examples in the
`
`specification of the ’376 patent (Ex. 1001 at 7:1-21) and with the Patent Owner’s
`
`contention that this term includes two or more pages of a digital book, two or more
`
`8
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`

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`pages of a PDF or other text file, portions of two or more webpages displayed on a
`
`screen, portions of two or more windows displayed on a screen, or a collection of
`
`two or more images (Ex. 1008 at pp. 19-39).
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’376 PATENT IS UNPATENTABLE
`
`As detailed below, each of claims 16-17 and 28-31 of the ’376 patent are an-
`
`ticipated or rendered obvious by at least two different references or combinations
`
`of references (Grounds 1-5). Each of the Grounds independently shows a reasona-
`
`ble likelihood that one or more claims of the ’376 patent are unpatentable. The
`
`Grounds are not cumulative or redundant. In addition to the fact that some
`
`Grounds are based upon different statutory reasons for invalidity (anticipation un-
`
`der § 102(b) vs. obviousness under § 103), they rely upon different combinations
`
`of references that individually assert unique benefits to the user and that address
`
`the claims in different ways. See Ex. 1003 at ¶¶ 24-93.
`
`For example, DeLorme, on which Grounds 1-2 are based, describes an elec-
`
`tronic “integrated routing/mapping information system” implemented on a portable
`
`device. Ex. 1004 at 4:21-22. DeLorme’s mapping device divides larger electronic
`
`maps into “discrete, identifiable, adjacent and related map tiles, quads, grids, [or]
`
`frames” that includes improved map interaction including allowing users to pan
`
`through different tiles of the map display, using touch inputs, to cause the dis-
`
`played portion of the map to shift to display a selected map tile. Id. at 60:59-65;
`
`9
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`

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`26:16-33. For example, “[t]he user can pan or move laterally within a map scale
`
`and/or magnitude on the PDA display, for example, by touching the screen that re-
`
`centers on the geographic point touched by the PDA user.” Id. at 26:16-19.
`
`By contrast, Needham, on which Grounds 3-5 are based, describes a virtual
`
`newspaper that displays portions of different related articles, and responds to user
`
`selection of a displayed article portion by displaying additional portions of the se-
`
`lected article. Ex. 1007 at 4:62-67; 5:7-24; 1:64-2:8. By selecting a portion of an
`
`article displayed on the virtual newspaper page, the user causes the selected article
`
`to expand to display additional portions of the story. Id. at 5:37-49. Needham is
`
`not redundant with DeLorme in that DeLorme focuses on an improved map display
`
`for a portable device including improved controls for panning a map while Need-
`
`ham focuses on displaying text, images, and video news content on an easy to nav-
`
`igate virtual newspaper page. Thus, both DeLorme and Needham explicitly dis-
`
`close all (or nearly all) elements of independent claims 16 and 28 as described be-
`
`low, yet DeLorme provides a more detailed teaching on the prior art knowledge of
`
`improvements in panning in response to touch inputs, while Needham provides a
`
`more detailed teaching on the state of the prior art for dividing a virtual page into
`
`different sections and expanding the sections in response to touch input. Each of
`
`Grounds 1-5 differ in the type of prior art publications (§102(e) vs. § 102(b)) and
`
`in the way in which they address the claim elements, including different approach-
`
`10
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`

`
`es to addressing the dependent claims, as detailed below.
`
`A. Ground 1 [DeLorme in view of Yano] sets forth a reasonable likelihood
`to prevail on at least one of Claims 16 and 28
`
`Referring to Ground 1 (charted below), claims 16 and 28 are rendered obvi-
`
`ous by DeLorme in view of Yano. For example, even though, under the broadest
`
`reasonable interpretation, the preamble is not a limitation and merely provides a
`
`recitation of intended use, to the extent that the preamble is considered limiting,
`
`DeLorme discloses controlling a touch sensitive display screen to display a virtual
`
`page that is larger than the display screen. Ex. 1003 at ¶¶ 24-26; 29-30. DeLorme
`
`discloses an electronic “integrated routing/mapping information system” imple-
`
`mented on a hand-held touch screen device that allows a user to “touch[], tap[], or
`
`slid[e] on the screen with a stylus.” Ex. 1004 at 4:21-22; 12:26-30. DeLorme’s vir-
`
`tual maps are divided into “discrete, identifiable, adjacent and related map tiles,
`
`quads, grids, [or] frames.” Id. at 60:59-65. This division of the map into “tiles” or
`
`“quadrangles” allows display of “small quadrangular units” of the map, rather than
`
`the entire map. Id. at 60:66-61:5; see also 61:21-23. Fig. 5B shows an example
`
`display screen showing adjacent map tiles, including partial tiles displayed along
`
`the edges of the display screen:
`
`11
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`

`
`Partial map tile adjacent to other
`map tiles
`
`
`
`Ex. 1004 at FIG. 5B; 61:21-32; Ex. 1003 at ¶¶ 25-26; 29-31.
`
`A user can select a particular map tile “by touching the screen” which causes
`
`the mapping device of DeLorme to recenter the map display “on the geographic
`
`point touched by the PDA user.” Id. at 26:16-19; see also 21:33-34 (“[t]ap the map
`
`. . . to pan/recenter to different areas.”); 16:51-61. The evidence here shows that a
`
`person of ordinary skill in the art at the relevant time (“POSITA”) would have rec-
`
`ognized from DeLorme’s teaching that the entire display of DeLorme’s device is a
`
`touch screen, and therefore that all of the tiles displayed in FIG. 5B, above (and in
`
`FIGs. 5, 5A, and 5C) are overlaid by the touch screen and associated with a touch
`
`sensitive portion of the touch screen. Ex. 1003 at ¶ 26. Thus, according to De-
`
`Lorme’s teachings and because DeLorme’s entire screen is a touch screen, the user
`
`can select any displayed map tile to cause the display to recenter on the selected
`
`12
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`

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`tile. Id. This includes functionality to allow a user to select a “geographic point”
`
`located in a partially displayed tile (as shown along the edges in FIG. 5B above) to
`
`cause the selected tile to be fully displayed in the center of the map display. Ex.
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`1004 at 26:16-19; Ex. 1003 at ¶¶ 26, 33-35; 41.
`
`Regarding the claimed “display controller” as recited by claim 28, DeLorme
`
`expressly teaches that the touch screen display is part of the “handheld or palmtop
`
`personal organizer PC” (also referred to as a “PDA”), and the evidence here shows
`
`that such a PDA was equipped with a controller so that the “’touch-screens’ can be
`
`actuated at particular points and/or series of points by touching, tapping, or sliding
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`on the screen.” Ex. 1003 at ¶ 44; Ex. 1004 at 8:29-31; 5:64-65; 12:7-29. The con-
`
`troller in DeLorme’s PDA device also controls other “touch screen operations” de-
`
`scribed throughout DeLorme’s specification. See, e.g., Ex. 1004 at 12:44-55
`
`(“well-known in the art of programming such devices”); see also Ex. 1005 1:19-23
`
`(describing a traditional “display controller 22”); Ex. 1003 at ¶¶ 44-45.
`
`To the extent that the claim elements of “identifying a selected subpage by
`
`sensing a touch input in an area of said display screen where one of said subpages
`
`is displayed” and “displaying a predetermined portion of said selected subpage in
`
`response to said touch input” are not explicitly described by DeLorme, the evi-
`
`dence here shows that such elements were commonly implemented in similar prior
`
`art systems. Ex. 1003 at ¶¶ 27, 36, 42. For example, Yano discloses a similar mo-
`
`13
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`

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`bile device for “displaying a map image in fixed mode in which the center of the
`
`map image shows a touched position of a touch screen.” Ex. 1005 at 2:32-34
`
`(emphasis added); 9:21-23; Ex. 1003 at ¶¶ 27, 36, 42. Yano’s map display device
`
`includes a “display controller 22 for performing a display controlling operation on
`
`the CRT display 11.” Ex. 1005 1:19-23. Yano’s map display can operate in a
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`“scroll mode in which the center of the map image constantly shows the current
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`position of the vehicle and the map image is scrolled as the vehicle travels” and a
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`“fixed mode in which the center of the map image shows the touched position on
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`the map image” touched by the user. Ex. 1005 at 3:55-67. Yano discloses that
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`“when the user touches a part of the screen apart from the center . . . the single map
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`image is scrolled so that the part of the map image, which corresponds to the
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`touched part of the touch pane, is displayed at the center of the screen . . . [e]ach
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`time the user touches a part of the screen apart from the center, the single map im-
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`age is scrolled.” Id. at 13:62-14:2 (emphasis added). Yano further discloses using
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`a grid to identify a touched location on the displayed map:
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`Yano’s map image
`grid coordinates
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`Ex. 1005 at FIG. 11; 2:32-34; 9:21-23; Ex. 1003 at ¶¶ 27, 36.
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`14
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`Furthermore, the evidence here shows that a POSITA would have under-
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`stood that in applying Yano’s suggestion (re-centering a map display to a touched
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`portion of a display pane) to DeLorme’s portable mapping device, the resulting de-
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`vice would predictably include identifying the selected grid/quadrangle in response
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`to the user touch. Ex. 1003 at ¶ 36. Indeed, DeLorme discloses a process for identi-
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`fying which tiles are to be displayed based on proximity to a selected location (e.g.,
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`a location selected to cause the display to “pan/recenter to different areas”). Ex.
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`1004 at 65:31-48; Ex. 1003 at ¶ 35. This identification process includes identifying
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`“grids comprise quadrangular units of geographic data stored, retrieved and pro-
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`cessed relative to particular geographic coordinates” based on proximity to a se-
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`lected location or “current node.” Ex. 1004 at 65:31-48. Thus, the evidence here
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`shows that, prior to the relatively late date of December 1998, a POSITA would
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`have recognized that DeLorme’s teaching of identifying tiles to display based on
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`an indicated “current node” would be predictably implemented in combination
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`with Yano’s suggestion for recentering a map display to a touched location of the
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`display. Ex. 1003 at ¶¶ 35-40.
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`Multiple reasons would have prompted a person of ordinary skill in the art
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`(“POSITA”) to implement, on DeLorme’s handheld mapping device, these tradi-
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`tional forms of detecting a touch input and recentering a display to the selected lo-
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`cation (as suggested by Yano). First, a POSITA would have been prompted to do
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`15
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`

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`so because, this functionality of Yano “makes it possible to easily utilize a part ex-
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`cept the center of the touch panel for the purpose of scrolling [(panning)] the map
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`image” and therefore avoids “a button switch” for panning that “needs space and
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`therefore limits the system configuration.” Ex. 1003 at ¶ 37 (providing reasons
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`that a POSITA would have been prompted to modify the mapping device of De-
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`Lorme to “pan/recenter to different areas” in response to a touch input to identify
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`and recenter the display on the selected location, as suggested by Yano); Ex. 1005
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`at 15:56-58; 2:1-4.
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`Second, a POSITA would have been prompted to modify DeLorme’s system
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`to incorporate these traditional forms of recentering a map display in response to
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`touch input (as suggested by Yano) because, as Yano teaches, such functionality
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`“offers many advantageous effects [including] . . . . if the user touches a part ex-
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`cept the center of the touch panel, the display unit can be switched . . . to fixed
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`mode in which the single map image, the center of which is coincident with the
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`touched part of the map image, is displayed on the screen.” Ex. 1003 at ¶ 38; Ex.
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`1005 at 15:34-55.
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`Third, a POSITA would have been prompted to modify DeLorme’s system
`
`to incorporate this functionality suggested by Yano because DeLorme explicitly
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`contemplates allowing a user to “[t]ap the map . . . to pan/recenter to different are-
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`as” and Yano discloses a specific and advantageous manner of accomplishing the
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`16
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`function of detecting the location of the user’s touch input and recentering the map
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`display. Ex. 1003 at ¶ 39; Ex. 1004 at 21:33-34; Ex. 1005 at 2:32-45; 9:21-23;
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`13:62-14:2.
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`Fourth, a POSITA would have been prompted to modify DeLorme’s system
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`to incorporate Yano’s disclosure of recentering a map display in response to a
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`touch input because doing so would be merely the application of a known tech-
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`nique (e.g., panning a displayed image in response to detecting a touch input on a
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`touch screen) to a known device (e.g., DeLorme’s touch screen mapping device)
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`ready for improvement to yield predictable results. Ex. 1003 at ¶ 40. Indeed,
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`“when a patent ‘simply arranges old elements with each performing the same func-
`
`tion it had been known to perform’ and yields no more than one would expect from
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`such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 417 (2007). Here, both DeLorme and Yano disclose portable touch
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`screen devices for displaying and manipulating map displays, and a POSITA
`
`would have recognized that applying Yano’s suggestions to DeLorme’s system
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`would have led to predictable results without significantly altering or hindering the
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`functions performed by the system of DeLorme. Ex. 1003 at ¶ 40.
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`For at least these reasons and the additional evidence in the Welch Declara-
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`tion, the resulting combination of DeLorme and Yano would provide all elements
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`of independent claims 16 and 28, thereby establishing a reasonable likelihood to
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`17
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`prevail on at least one claim of the ’376 patent. The details set forth in the chart be-
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`low for Ground 1 and in the Welch Declaration show that claims 16 and 28 of the
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`’376 patent are unpatentable under 35 U.S.C. § 103. Ex. 1003 at ¶¶ 24-50.
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`B. Ground 2 [DeLorme in view of Yano and Allard] sets forth a reasonable
`likelihood to prevail on at least one of Claims 17 and 29-31
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`Referring to Ground 2 (charted below), claims 17 and 29-31 are rendered
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`obvious by DeLorme in view of Yano and Allard. Ex. 1003 at ¶¶ 51-64. For ex-
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`ample, Yano, as explained in Ground 1, discloses a map display device having a
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`“scroll mode in which the center of the map image constantly shows the current
`
`position of the vehicle and the map image is scrolled as the vehicle travels” and a
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`“fixed mode in which the center of the map image shows the touched position on
`
`the map image” touched by the user. Ex. 1005 at 3:55-67. Yano further discloses
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`“an indicated position detecting unit for generating a signal which indicates a posi-
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`tion on the display responsive to a touch operation of a user.” Id. at 2:43-45. When
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`operating in the fixed mode, Yano’s display screen will pan across the displayed
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`virtual map in response to the signal indicating the position on the display that the
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`user touched. Id. at 3:55-67; 2:43-45; see also id. at 13:62-14:2; Ex. 1003 at ¶¶ 27;
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`36; 42; 51; 53.
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`To the extent that DeLorme and Yano do not disclose that the particular
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`“mode” in which a map image is panned in response to touch input is a “panning
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`mode,” such an element was commonly implemented in similar prior art systems.
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`18
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`Ex. 1003 at ¶¶ 51; 54-55. For example, Allard discloses a “mobile, handheld per-
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`sonal communicator having a small touchscreen display actuated in response to be-
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`ing touched by a user's finger” with “improved” pan functions that is similar to the
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`touch screen devices of DeLorme and Yano. Ex. 1006 at 2:25-28. Allard’s im-
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`proved pan functions include providing a “pan mode of operation” in response to a
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`user selection of a “pan tool” icon displayed on the touch screen. Id. at 7:16-19; see
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`also claim 7. FIG. 4 of Allard shows the control icons 146, including the panning
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`control for entering the pan mode:
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`Panning control for
`entering the pan
`mode
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`Ex. 1006 at FIG. 4.
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`
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`Also, FIG. 7 of Allard shows the steps taken by Allard’s touch screen device
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`to enter the pan mode and pan in response to user touch input:
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`19
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`
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`Id. at FIG. 7. Allard further discloses that when the touch screen is touched (such
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`as when the Pan tool displayed in FIG. 4 above is selected) the device generates “a
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`digital signal representing the X, Y coordinates of the overlay location being
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`pressed.” Id. at 5:1-6; Ex. 1003 at ¶¶ 55; 60; 62; 64. This signal generated when
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`the user touches the touch screen at the location of the P