UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`INTELLECTUAL INTEGRITY, LLC,
`Petitioner,
`
`v.
`
`APPLE INC.,
`Patent Owner/Assignee.
`
`
`
`IPR No.: IPR2016-00500
`Patent No. 7,864,163
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,864,163
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`Filed on behalf of Petitioner By:
`
`Ronald W. Burns (Reg. No. 44,044)
`15139 Woodbluff Dr.
`Frisco, TX 75035
`(972) 632-9009
`rwburns@intellectualintegrity.net
`
`
`
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. MANDATORY NOTICES ........................................................................... 2
`A. Real Parties in Interest ........................................................................ 2
`B. Related Matters ................................................................................... 3
`C. Counsel and Service Information ........................................................ 3
`D. Certification of Service on Patent Owner/Assignee ........................... 3
`III. NOTICE OF FEES PAID ............................................................................. 4
`IV. CERTIFICATION OF GROUNDS FOR STANDING ................................ 4
`PRECISE RELIEF REQUESTED ................................................................ 5
`V.
`VI. RELEVANT INFORMATION CONCERNING THE ‘163 PATENT ........ 5
`A. Background of the ‘163 Patent ............................................................ 5
`B. Person of Ordinary Skill in the Art ..................................................... 6
`VII. CLAIM CONSTRUCTION .......................................................................... 7
`A. “box[es] of content” (Claims 2, 50, 52) .............................................. 8
`B. “structured electronic document” (Claims 2, 50, 52) .......................... 9
`C. “gesture” (Claims 2, 50, 52) ................................................................ 9
`INVALIDITY OR
`VIII. DETAILED ANALYSIS OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 2, 50, and 52 .................................... 10
`A. Ground 1: Claims 2, 50, and 52 of the ‘163 Patent are Anticipated
`Under 35 U.S.C. § 102(b) by Harada (Ex. 1009) .............................. 10
`1. Harada Anticipates Claim 2 of the ‘163 Patent Under §102(b)
`................................................................................................ 13
`2. Harada Anticipates Claim 50 of the ‘163 Patent Under §102(b)
`................................................................................................ 18
`
`ii
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`

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`3. Harada Anticipates Claim 52 of the ‘163 Patent Under §102(b)
`................................................................................................ 21
`
`IX. CONCLUSION ...................................................................................... 22
`
`APPENDICES:
` Appendix A: Listing of Exhibits.
` Appendix B: Copies of Exhibits 1001 – 1010.
`
`
`
`
`
`
`
`iii
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`

`
`I.
`
`INTRODUCTION
`
`This petition (“Petition”) challenges the validity of Claims 2, 50, and 52 of
`
`U.S. Patent No. 7,864,163 (“the `163 Patent”) (Ex 1001). Claims 2, 50, and 52
`
`(“the challenged claims”) recite variations of elements for a portable electronic
`
`device having a touch screen display, and method/means for enlargement and
`
`centering of content on the touch screen responsive to a gesture performed.
`
`Independent Claim 2 recites a method comprising: at a portable electronic
`
`device with a touch screen display; displaying at least a portion of a structured
`
`electronic document on the touch screen display, wherein the structured electronic
`
`document comprises a plurality of boxes of content; detecting a first gesture at a
`
`location on the displayed portion of the structured electronic document;
`
`determining a first box in the plurality of boxes at the location of the first gesture;
`
`enlarging and translating the structured electronic document so that the first box is
`
`substantially centered on the touch screen display; while the first box is enlarged, a
`
`second gesture is detected on a second box other than the first box; and in response
`
`to detecting the second gesture, the structured electronic document is translated so
`
`that the second box is substantially centered on the touch screen display. (Id.:
`
`Claim 2). Independent Claims 50 and 52 recite devices performing the method of
`
`Claim 2, in means plus function forms. (Id.: Claims 50, 52).
`
`1
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`

`
`The method and devices of the challenged claims were not novel as of
`
`September 6, 2006 – the earliest of the `163 Patent’s alleged priority dates. The art
`
`of that time was replete with: touch-screen user interfaces; structured electronic
`
`documents comprising “boxes of content”; and graphically centering and enlarging
`
`content on a touch screen responsive to gestures performed on the touch screen.
`
`When the challenged claims are properly scrutinized against the prior art, it
`
`becomes clear that all elements of the challenged claims are anticipated by the art
`
`as it was well known at that time.
`
`As shown in detail, infra, the challenged claims of the `163 Patent recite
`
`subject matter that is fully anticipated by the prior art. This Petition shows –
`
`compellingly – that the challenged claims are invalid and/or unpatentable over the
`
`prior art, under 35 U.S.C. § 102.
`
`II. MANDATORY NOTICES
`
`A. Real Parties-in-Interest
`
`Intellectual Integrity, LLC (“I2” or “Petitioner”) – a Texas limited liability
`
`company having its principal place of business at 2591 Dallas Parkway, Suite 300,
`
`Frisco, Texas 75034 – is a real party in interest. I2 is owned and operated by
`
`Ronald W. Burns, an individual residing in Frisco, Texas – the sole proprietor, and
`
`sole/managing member, of I2. Individual Ronald W. Burns declares that no other
`
`parties are funding this Petition, nor participating in any manner in this Petition.
`
`2
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`

`
`This statement is being made with the knowledge that willful false statements are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001.
`
`B. Related Matters
`
`Petitioner finds no currently pending inter partes reviews of the `163 Patent.
`
`To the best of Petitioner’s knowledge based upon publicly available information,
`
`only two related litigation matters have involved the `163 Patent, as listed below:
`
`Case No.
`5-11-cv-01846
`
`2013-1129
`
`Name
`Apple Inc. v. Samsung Electronics Co., Ltd., et
`al.
`Apple Inc. v. Samsung Electronics Co., Ltd.
`
`Jurisdiction
`N.D. Cal.
`
`Fed. Cir.
`
`C. Counsel and Service Information
`
`Petitioner consents to service by email at: admin@intellectualintegrity.net.
`
`Petitioner appoints and designates counsel as follows:
`
`Lead Counsel
`Ronald W. Burns (Reg. No. 44044)
`15139 Woodbluff Dr.
`Frisco, TX 75035
`(972) 632-9909
`rwburns@intellectualintegrity.net
`
`Back-up Counsel
`Kenneth Emanuelson (Reg. No. 46684)
`Ross IP Group PLLC
`1700 Pacific Avenue, Suite 3750
`Dallas, TX 75201
`(469) 363-5808
`kemanuelson@rossipg.com
`
`
`D. Certification of Service on Patent Owner/Assignee
`
`Petitioner certifies that it served a courtesy copy of this Petition, and all
`
`Appendices (Appx. A, B) and Exhibits (Ex. 1001-1010) of this Petition, deposited
`
`3
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`with Federal Express on January 23, 2016 for delivery no later than 12:00 p.m.
`
`(Pacific Standard Time) on January 25, 2016 to the following entities:
`
`Apple
`c/o Morrison & Foerster LLP
`425 Market Street
`San Francisco, California 94105-2485
`
`and
`
`Apple, Inc.,
`Attention: Chief IP Counsel
`1 Infinite Loop
`Cupertino, California 95014.
`
`
`Once Petitioner receives verification of successful delivery, it will file a
`
`supplemental Certification of Service.
`
`III. NOTICE OF FEES PAID
`
`All required fees are submitted herewith, from Petitioner’s Deposit Account.
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies that the `163 Patent is available for inter partes review.
`
`As of the filing of this Petition, Petitioner has not filed a civil action challenging
`
`the validity of a claim of the `163 Patent. Neither the Petitioner, nor any privy of
`
`the Petitioner has ever been served with a complaint alleging infringement of the
`
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``163 Patent. Neither the Petitioner, nor any privy of the Petitioner, is barred or
`
`estopped from challenging the claims on the grounds identified in this Petition.
`
`V. PRECISE RELIEF REQUESTED
`
`The relief requested is cancelation of the challenged claims, as follows:
`
`Ground
`1
`
`
`
`Prior Art and/or Reference(s)
`Harada (Ex. 1009)
`
`Claims
`2, 50, 52
`
`Basis
`§ 102(b)
`
`VI. RELEVANT INFORMATION CONCERNING THE `163 PATENT
`
`A. Background of the `163 Patent
`
`The `163 Patent issued on January 4, 2011 from U.S. Patent Application No.
`
`11/850,013 (“the `013 App”), which was filed on September 4, 2007. The `013
`
`App claims priority from: Provisional Application No. 60/937,933, filed June 29,
`
`2007; Provisional Application No. 60/946,715, filed June 27, 2007 (“the ‘715
`
`Provisional”) (Ex. 1002); Provisional Application No. 60/879,469, filed January
`
`8, 2007; Provisional Application No. 60/879,253, filed January 7, 2007; and
`
`Provisional Application No. 60/824,769, filed September 6, 2006. The `163 Patent
`
`explicitly incorporates all four of these Provisional Applications by reference (Ex.
`
`1001: Col. 1, lines 8-17).
`
`The `163 Patent also explicitly incorporates by reference: U.S. Patent
`
`Application No. 10/188,182, filed Jul. 1, 2002; U.S. Patent Application No.
`
`5
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`

`
`10/722,948, filed Nov. 25, 2003; U.S. Patent Application No. 10/643,256, filed
`
`Aug. 18, 2003; U.S. Patent Application No. 10/654,108, filed Sep. 2, 2003; U.S.
`
`Patent Application No. 10/840,862, filed May 6, 2004; U.S. Patent Application No.
`
`10/903,964, filed Jul. 30, 2004 (“the ‘964 App”); U.S. Patent Application No.
`
`11/038,590, filed Jan. 18, 2005; U.S. Patent Application No. 11/057,050, filed Feb.
`
`11, 2005; U.S. Provisional Application No. 60/658,777, filed Mar. 4, 2005; U.S.
`
`Patent Application No. 11/367,749, filed Mar. 3, 2006; and U.S. Provisional
`
`Application No. 60/947,155, filed Jun. 29, 2007. (Ex. 1001: Col. 1, lines 18-41).
`
`B.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art in the field of the `163 Patent would
`
`have been someone with a general background in human-computer interaction
`
`(“HCI”). More specifically, a person of ordinary skill in the art in the field would
`
`have been someone with a working knowledge of user interface design and
`
`graphical user interfaces (“GUI”) for portable electronic devices. The `163 Patent
`
`confirms this in its description of the Background of the claimed invention (Id. at
`
`Col. 1, line 52 – Col. 2, line 37). The person would have gained this knowledge
`
`through an undergraduate B.S. degree in computer engineering or a comparable
`
`field (e.g., software engineering, software design), in combination with training or
`
`several years of work-related experience with designing user interfaces for mobile
`
`computing and/or communication devices. Advanced degrees in these fields may
`
`6
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`

`
`have required less experience to attain an ordinary level of skill. The Sutcliffe (Ex.
`
`1003), Beaudouin-Lafon (Ex. 1004), Todd (Ex. 1005); Shneiderman (Ex. 1006),
`
`and Whitten (Ex. 1007) references – each considered individually, or as a
`
`collective whole – provide a useful framework for understanding the state of
`
`ordinary skill in the art at that time.
`
`VII. CLAIM CONSTRUCTION
`
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 C.F.R. § 42.100(b)
`
`A proper construction of claim terms is essential to accurately analyzing the
`
`validity of the challenged claims. In order to properly determine the broadest
`
`reasonable construction of the claims supported by the specification, substantial
`
`and thorough analysis of certain claim terms is required. Only after such thorough
`
`analysis can the validity – or invalidity – of the challenged claims be properly
`
`determined.
`
`Petitioner’s position concerning the scope and/or construction of claims and
`
`claim terms is not to be taken as a concession regarding the appropriate scope to be
`
`given to the items listed below, or any other claim terms, in matter before an
`
`adjudicative body having different claim interpretation standards than the Patent
`
`Trial and Appeal Board.
`
`7
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`

`
`A.
`
`“box[es] of content” (Claims 2, 50, 52)
`
`The specification of the `163 Patent does not explicitly define “box[es] of
`
`content” as it is used within the context of the challenged claims. The `163 Patent
`
`does disclose “block(s) of content” and provide examples of content that may be
`
`within such a “block” – images, text, graphics or inline multimedia (Ex. 1001: Col.
`
`2, lines 12-24; Col. 16, lines 27-29; Col. 18, lines 44-50; Figs. 5A, 5C). The `163
`
`Patent incorporates the specification of the ‘715 Provisional, which is entitled
`
`“Portable Electronic Device, Method, and Graphical User Interface for Displaying
`
`Structured Electronic Documents.” The ‘715 Provisional provides no definition
`
`for “boxes of content” – it also refers to “blocks” of content and identifies such
`
`content as “multimedia content” (Ex. 1002: ¶¶ 0007, 0014, 0090-0095). The
`
`specification of the `163 Patent then goes on to disclose that a block may
`
`“correspond[s] to a render node that is: a replaced inline; a block; an inline block;
`
`or an inline table” (Ex. 1001: Col. 17, lines 38-40). Thus, a block corresponds to
`
`some multimedia content – which may include images, text, graphics or inline
`
`multimedia.
`
`Accordingly, under the broadest reasonable construction, the term “box[es]
`
`of content” from Claims 2, 50 and 52 should be construed as “block[s]
`
`corresponding to multimedia content.”
`
`
`
`8
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`
`B.
`
` “structured electronic document” (Claims 2, 50, 52)
`
`Again, the specification of the `163 Patent does not explicitly define
`
`“structured electronic document.” The `163 Patent does provide examples of a
`
`structured electronic document: 1) a web page, comprising a plurality of boxes of
`
`content (Id.: Col. 2, lines 12-24; Col. 16, lines 27-29; Col. 18, lines 44-50); and 2)
`
`an HTML or XML document (Col. 18, lines 50-52). As noted above, the `163
`
`Patent incorporates the specification of the ‘715 Provisional, which also does not
`
`explicitly define “structured electronic document.” The embodiments disclosed
`
`are simply browser-compatible electronic documents.
`
`Accordingly, under
`
`the broadest reasonable construction,
`
`the
`
`term
`
`“structured electronic document” from Claims 2, 50 and 52 should be construed as
`
`“a browser compatible electronic document.”
`
`C.
`
`“gesture” (Claims 2, 50, 52)
`
`The `163 Patent does not identify an explicit, generally applicable definition
`
`of “gesture.” Although “gesture” is not explicitly defined, a number of examples
`
`are disclosed. The `163 Patent generally refers to “gestures” in relation to finger-
`
`based contact with a touch screen, as a means of input for the electronic device
`
`(Id.: Col. 8, lines 36-47; Col. 17, line 20 – Col. 18, line 30). The specification
`
`provides illustrative examples of such finger-based inputs, including: one or more
`
`taps, one or more swipes (left, right, upward and/or downward), and/or a rolling of
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`9
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`

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`a finger (right to left, left to right, upward and/or downward) that has made contact
`
`with the device (Col. 14, lines 18-36). Those finger-based inputs are generally
`
`disclosed with respect to user interaction with a touch screen user interface (Col.
`
`14, lines 18-36; Col. 14, line 65 - Col. 15, line 14; Col. 17, lines 1-35). The `163
`
`Patent also notes that a stylus may be used to interact with a touch screen user
`
`interface (Col. 8, lines 38-40; Col. 19, lines 6-10). Considered as a whole, the
`
`disclosures relating to gestures generally refer to touch based interaction with a
`
`touch screen user interface.
`
`
`
`Accordingly, under the broadest reasonable construction, the term “gesture”
`
`from Claims 2, 50 and 52 should be construed as “touch interaction with a touch
`
`screen user interface.”
`
`VIII. DETAILED ANALYSIS OF GROUNDS FOR INVALIDITY OR
`UNPATENTABILITY OF CLAIMS 2, 50, and 52
`
`A. Ground 1: Claims 2, 50 and 52 of the ‘163 Patent are Anticipated Under
`35 U.S.C. § 102(b) by Harada (Ex. 10089).
`
`The Harada reference is a paper that was presented and published no later
`
`than June 11, 2004 (Ex. 1008: p.1). Harada is prior art under 35 U.S.C. § 102(b).
`
`Harada discloses browser style user interfaces for touchscreen handheld
`
`devices, such as PDAs, cellular phones, and digital cameras (Id. at pp. 1, 3). The
`
`Harada interface discloses the organization of, and access to, image files within a
`
`browser style structure (Id.). Multiple images are displayed in block form on the
`
`10
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`

`
`Harada interface (Id.: Fig. 2; p.3, Col. 1). Harada discloses that tapping on any
`
`one of the images displayed will result in that image being enlarged, and displayed
`
`at the center of the interface (Id.: p.3, Col. 1; Fig. 3). Harada discloses that – in
`
`addition to the enlarged and centered image – four other smaller block form images
`
`are also displayed on the interface (Id.). Harada discloses that tapping any of the
`
`four replaces the enlarged photo with an enlargement of the tapped photo (Id.).
`
`Harada discloses that these operations were implemented and operated on a
`
`Hewlett Packard H5500 Pocket PC (Id. at p.5, Col. 1). The specification sheet for
`
`a Hewlett Packard H5500 Pocket PC (the “HP H5500”) – which is dated August
`
`19, 2005 – indicates that the device includes a touch-sensitive display for stylus or
`
`fingertip (Ex. 1009: p.4).
`
`Although the Harada disclosure does not rely upon them, there are a number
`
`of features of the HP H5500 that are nevertheless inherently disclosed in Harada.
`
`The HP H5500 is pre-loaded (in ROM) with the HP iPAQ Image Viewer
`
`application (Id. at p.5). Also, the HP 5500 has Microsoft Windows Mobile 2003 as
`
`its operating system, which includes Internet Explorer and Pictures applications.
`
`(Id. at p.6). The User’s Guide for the HP H5500 – which is dated May 2003 –
`
`discloses features of the iPAQ Image Viewer application, including resizing
`
`images to screen size:
`
`
`
`11
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`

`
`
`
`
`
`(Ex. 1010: p. 4-10). With this application, a user is presented with a thumbnail
`
`view of the image, which may then be changed to full screen view by double-
`
`tapping on the thumbnail:
`
`12
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`

`
`(Id. at p. 4-12). The HP H5500 specification sheet and User’s Guide are both prior
`
`art under 35 U.S.C. § 102(b).
`
` 1. Harada Anticipates Claim 2 of the ‘163 Patent Under §102(b).
`
`Claim 2 of the ‘163 Patent recites a “computer-implemented method,
`
`comprising: at a portable electronic device with a touch screen display.” Harada
`
`discloses a computer-implemented method operated at a portable electronic device
`
`having a
`
`touch screen display.
`
` As
`
`identified above, Harada discloses
`
`implementing its interface on a HP H5500 – which is both a computer and a
`
`portable electronic device with a touch screen display.
`
`Harada therefore anticipates this portion of Claim 2.
`
`Claim 2 next recites “displaying at least a portion of a structured electronic
`
`document on the touch screen display, wherein the structured electronic document
`
`comprises a plurality of boxes of content.” Properly construed (per §VII, supra),
`
`this term should be read as “displaying at least a portion of a browser compatible
`
`electronic document on the touch screen display, wherein the browser compatible
`
`electronic document comprises a plurality of blocks corresponding to multimedia
`
`content.”
`
`Harada discloses displaying, on a touch screen display, at least a portion of
`
`a browser compatible electronic document. Figure 2 of Harada is shown as:
`
`
`
`13
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`
`
`
`(Ex. 1008: p.3). Figure 2 discloses a browser page, displayed upon a touch screen
`
`display, having a plurality of blocks corresponding to multimedia content. Each
`
`block in the plurality of blocks has image or graphic content.
`
`Harada therefore anticipates this portion of Claim 2.
`
`Claim 2 next recites “detecting a first gesture at a location on the displayed
`
`portion of the structured electronic document; determining a first box in the
`
`plurality of boxes at the location of the first gesture.” Properly construed (per
`
`14
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`

`
`§VII, supra), this term should be read as “detecting a first touch interaction with a
`
`touch screen user interface at a location on the displayed portion of the browser
`
`compatible electronic document on the touch screen display; determining a first
`
`block in the blocks corresponding to multimedia content at the location of the first
`
`touch interaction with the touch screen user interface.”
`
`As previously discussed, Harada discloses that “tapping on one of the
`
`photos in the grid” will result in the enlargement of that photo (Id. at p.3). The
`
`disclosure in Harada that tapping on one of the plurality of photos in the grid
`
`causes the enlargement of that photo therefore inherently discloses: 1) detecting a
`
`first gesture at a location on the displayed portion – which is tapping on one of the
`
`photos in the displayed grid; and 2) determining a first box at the location of the
`
`first gesture – the photo in the grid that was tapped is the photo that is enlarged.
`
`Harada therefore anticipates this portion of Claim 2.
`
`Claim 2 next recites “enlarging and translating the structured electronic
`
`document so that the first box is substantially centered on the touch screen
`
`display.” Properly construed (per §VII, supra), this term should be read as
`
`“enlarging and translating the browser compatible electronic document so that the
`
`first block is substantially centered on the touch screen display.”
`
`15
`
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`
`

`
`Harada discloses this, in its entirety, in Figure 3 and its description of
`
`Figure 3:
`
`
`
`(Id. at Fig. 3). Harada discloses that the photo from the grid that was tapped is
`
`enlarged and centered upon the display screen. Photos from the grid that surround
`
`the tapped photo are displayed at the edge of the interface, still in thumbnail form
`
`(Id. at p.3).
`
`Harada therefore anticipates this portion of Claim 2.
`
`16
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`

`
`Claim 2 next recites “while the first box is enlarged, a second gesture is
`
`detected on a second box other than the first box; and in response to detecting the
`
`second gesture, the structured electronic document is translated so that the second
`
`box is substantially centered on the touch screen display.” Properly construed (per
`
`§VII, supra), this term should be read as “while the first block is enlarged, a
`
`second touch interaction with the touch screen user interface is detected on a
`
`second block other than the first block; and in response to detecting the second
`
`touch interaction with the touch screen user interface, the browser compatible
`
`electronic document is translated so that the second block is substantially centered
`
`on the touch screen display.”
`
`As noted above, Harada discloses that “other photos appear in a row at the
`
`top … [t]apping any of the four replaces the enlarged photo with an enlargement of
`
`the tapped photo. The context changes accordingly.” Harada therefore discloses
`
`detecting a second touch interaction with the touch screen user interface on a
`
`second image, other than the first, while the first image is enlarged; and, in
`
`response to the second touch interaction with the touch screen user interface,
`
`translating the screen such that the second image is centered and enlarged.
`
`Harada therefore anticipates this portion of Claim 2.
`
`Harada anticipates all properly construed elements of Claim 2. Harada thus
`
`fully anticipates Claim 2 and renders it invalid under §102(b).
`
`17
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`
`2.
`
`Harada Anticipates Claim 50 of the ‘163 Patent Under §102(b).
`
`Although Claim 50 of the ‘163 Patent is directed toward a portable
`
`electronic device, it recites the same essential elements as Claim 2. The only
`
`difference in the two claims is that Claim 50 is recited in the context of a device
`
`performing the method of Claim 2.
`
`Claim 50 begins by reciting a “A portable electronic device, comprising: a
`
`touch screen display; one or more processors; memory.”
`
`As previously noted, Harada discloses that its teachings were implemented
`
`and operated on a HP H5500 (Id. at p.5, Col. 1). The specification sheet for the HP
`
`H5500 discloses that the device is a portable electronic device, having a touch
`
`screen display, a processor, and memory (Ex. 1009: pp. 1, 3-4).
`
`Harada therefore anticipates this portion of Claim 50.
`
`Claim 50 next recites that the portable electronic device comprises “one or
`
`more programs, wherein the one or more programs are stored in the memory and
`
`configured to be executed by the one or more processors, the one or more
`
`programs including.”
`
`Harada discloses that its teachings were implemented and operated on the
`
`HP H5500. The HP H5500 specification sheet discloses that the device has one or
`
`more programs stored in its memory and configured to be executed by the
`
`processor (Id.: pp. 5-6). The HP H5500 operates using the Microsoft Windows
`
`18
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`Mobile 2003 operating system, and includes a large number of operating system
`
`applications (Id.at p.6). The HP H5500 also includes the HP Exclusive
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`Applications, stored on the device “in ROM” (Id.at p.5). Harada further discloses
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`implementing – on the HP H5500 – “two browser interfaces: the traditional
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`Baseline browser, and a novel Timeline browser (TL)” (Ex. 1008: p. 2, Col. 2).
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`Harada therefore anticipates this portion of Claim 50.
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`Claim 50 next recites that the portable electronic device comprises “[one or
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`more programs including:] instructions for displaying at least a portion of a
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`structured electronic document on the touch screen display, wherein the structured
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`electronic document comprises a plurality of boxes of content.” The specification
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`of the `163 Patent does not explicitly define “instructions for” as it is used within
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`the context of this claim – but does state that “identified modules and applications
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`correspond to a set of instructions for performing one or more functions described
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`above” (Ex. 1001: Col. 13, lines 55-57). Thus, this element of Claim 50 is in
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`means-plus-function format, as are the remaining elements of Claim 50. These
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`elements are therefore governed by 35 U.S.C. § 112. The function here is
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`“displaying at least a portion of a structured electronic document … comprises a
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`plurality of boxes of content.” The structure, material or acts found in the
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`specification to support this function are: programs, procedures, or modules (Id.:
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`Col. 13, lines 57-60).
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`19
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`

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`Harada discloses this function – “displaying at least a portion of a structured
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`electronic document on the touch screen display, wherein the structured electronic
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`document comprises a plurality of boxes of content” – as explained in the analysis
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`of Claim 2, above. Harada also discloses the program, procedure or module
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`supporting or performing this function – the “two browser interfaces” (Ex. 1008:
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`pp. 2-3; Figs. 1-3).
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`Harada therefore anticipates this portion of Claim 50.
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`Claim 50 next recites “instructions for instructions for detecting a first
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`gesture at a location on the displayed portion of the structured electronic
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`document.”
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`Harada discloses this function – “detecting a first gesture at a location on
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`the displayed portion of the structured electronic document” – as explained in the
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`analysis of Claim 2, above. Harada also discloses the program, procedure or
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`module supporting or performing this function, as noted above.
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`Harada therefore anticipates this portion of Claim 50.
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`Like the two recitations above, the remaining elements of Claim 50 are
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`simply restatements of the corresponding elements in Claim 2, preceded by
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`“instructions for.” As is the case with the two recitations above, and as discussed
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`in detail with respect to Claim 2, Harada discloses each of the remaining recited
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`functions, and the supporting/performing program for each.
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`20
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`Harada anticipates all recited elements of Claim 50. Harada thus fully
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`anticipates Claim 50 and renders it invalid under §102(b).
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`3.
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`Harada Anticipates Claim 52 of the ‘163 Patent Under §102(b).
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`Claim 52 of the ‘163 Patent is slight variation of Claim 50, reciting all of the
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`same essential elements as Claim 50 – varying only in its actual use of “means for”
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`language. Claim 52 begins by reciting a “portable electronic device with a touch
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`screen display, comprising …”
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`As previously noted, Harada discloses a portable electronic device with a
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`touch screen display. Harada therefore anticipates this portion of Claim 52.
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`Claim 52 next recites each of the required elements of Claim 2 in means plus
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`function format. As discussed with respect to Claim 50, above, the means
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`disclosed within the ‘163 Patent is a program, procedure or module supporting or
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`performing each function.
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`As detailed above, with respect to Claims 2 and 50, Harada discloses each
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`of the functions required by Claim 52, and the means for supporting or performing
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`those functions.
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`Harada therefore anticipates all recited elements of Claim 52, and thus fully
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`anticipates Claim 52 and renders it invalid under §102(b).
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`21
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`IX. CONCLUSION
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`This Petition presents compelling evidence that the challenged claims recite
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`unpatentable subject matter. Based upon this evidence, there is a reasonable
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`likelihood that Petitioner would prevail with respect to some, if not all, challenged
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`claims. Petitioner therefore respectfully requests institution of an inter partes
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`review, and cancelation of Claims 2, 50, and 52 of the ‘163 Patent.
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`Respectfully Submitted on behalf of
`Petitioner Intellectual Integrity, LLC,
`
`
`
` By: /s/ Ronald W. Burns
`
`Ronald W. Burns
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`USPTO Reg. No. 44044
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`Intellectual Integrity, LLC
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`2591 Dallas Parkway, Suite 300
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`Frisco, Texas 75034
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`Phone: 972-632-9009
`
`rwburns@intellectualintegrity.net
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