Paper No. 42
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PARROT S.A., PARROT DRONES S.A.S., and PARROT INC.,
`Petitioners
`
`v.
`
`QFO LABS, INC.,
`Patent Owner
`____________
`
`U.S. Patent No. 7,931,239
`
`“Homeostatic Flying Hovercraft”
`____________
`
`Inter Partes Review No. 2016-01550
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`PO’s Motion Fails to Meet its Burden ............................................................. 3
`
`A.
`
`B.
`
`C.
`
`PO’s Expert Testimony Should be Disregarded ................................... 4
`
`PO Addresses Only Prior Art Of Record .............................................. 5
`
`PO’s Discussion of Louvel, Thomas, and Kroo is Facially
`Deficient ................................................................................................ 6
`
`1.
`
`Louvel, Thomas, and Jimenez ..................................................... 7
`
`D.
`
`The Motion Fails to Identify All of the Prior Art Known to PO .......... 8
`
`III. Proposed Claim 11 is Not Patentably Distinct Over the Prior Art .................. 9
`
`A.
`
`Sato Expressly Discloses the Additional Limitations ......................... 10
`
`1.
`
`2.
`
`3.
`
`4.
`
`Overview of Sato ...................................................................... 10
`
`Sato Expressly Discloses Limitation 11b ................................. 11
`
`Sato Expressly Discloses Limitation 11c .................................. 14
`
`Sato Expressly Discloses Limitation 11f .................................. 14
`
`B. A POSA Would Have Been Motivated to Combine Sato with
`Louvel .................................................................................................. 15
`
`1.
`
`Nagamitsu Discloses the Additional Limitations ..................... 19
`
`(a) Overview of Nagamitsu .................................................. 19
`
`(b) Nagamitsu Expressly Discloses Limitation 11b ............. 19
`
`(c) Nagamitsu and Jimenez Expressly Disclose
`Limitation 11c ................................................................. 20
`
`(d) Nagamitsu Expressly Discloses Limitation 11f ............. 21
`
`(e) A POSA Would Have Been Motivated to Combine
`Nagamitsu, as modified by Jimenez, with Louvel ......... 22
`
`IV. Proposed Claim 11 is Unpatentable under 35 U.S.C. § 101 ......................... 24
`
`V.
`
`Claim 11 is Unpatentable Under the Doctrine of Double Patenting ............. 24
`
`VI. Conclusion ..................................................................................................... 25
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc.,
`IPR2014-00441, Paper 19 (P.T.A.B. Oct. 30, 2014) ............................................ 5
`
`Global Tel*Link Corp. v. Securus Techs., Inc.,
`IPR2015-01225, Paper 45 (P.T.A.B. Dec. 14, 2016) ................................ 4, 8, 25
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper 26 (P.T.A.B. June 11, 2013) .................................. 4, 6, 7
`
`Shelcor, Inc. v. Durham Indus., Inc.,
` 745 F.2d 621 (Fed. Cir. 1984) ...........................................................................24
`
`In re Van Ornum,
` 686 F.2d 937 (C.C.P.A. 1982) ...........................................................................24
`
`In re Vogel,
` 422 F.2d 438 (C.C.P.A. 1970) ...........................................................................24
`
`Int’l Flavors & Fragrances Inc. v. U.S. Dep’t of Agric.,
`IPR2013-00124, Paper 12 (P.T.A.B. May 20, 2014) .......................................1, 5
`
`Rules / Statutes
`
`35 U.S.C. § 101 ........................................................................................................24
`
`35 U.S.C. § 102(b) ...................................................................................................19
`
`37 C.F.R. § 42.20(c) ................................................................................................... 4
`
`
`
`
`
`ii
`
`

`

`LIST OF PETITIONERS’ EXHIBITS
`
`No.
`
`Description
`
`Ex. 1001
`
`U.S. Patent No. 7,931,239 to Pedersen et al.
`
`Ex. 1002
`
`File History of U.S. Patent No. 7,931,239
`
`Ex. 1003
`
`Declaration of Dr. Girish Chowdhary
`
`Ex. 1004
`
`U.S. Patent Application No. 2002/0104921 to Louvel
`
`Ex. 1005
`
`M. Gordon et al., “Rotorcraft Aerial Robot – Challenges and
`Solutions,” Georgia Institute of Technology, School of Aerospace
`Engineering (October 25-28, 1993)
`
`Ex. 1006
`
`U.S. Patent No. 5,128,671 to Thomas, Jr.
`
`Ex. 1007
`
`U.S. Patent Application No. 2002/0106966 to Jimenez et al.
`
`Ex. 1008
`
`U.S. Patent No. 6,847,865 to Carroll
`
`Ex. 1009
`
`U.S. Patent No. 6,588,701 to Yavnai
`
`Ex. 1010
`
`Declaration of Coral Sheldon-Hess
`
`Ex. 1011
`
`Printout of Website at http://www.aerialroboticscompetition.org/
`
`Ex. 1012
`
`Ex. 1013
`
`Printout of Website at
`http://www.aerialroboticscompetition.org/pastmissions.php
`
`Printout of Website at
`http://www.aviastar.org/helicopters_eng/bothezat.php
`
`Ex. 1014
`
`U.S. Provisional Patent Application No. 60/324,931
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Printout of Website at
`https://en.wikipedia.org/wiki/File:Lift_curve.svg
`
`Printout of Website at
`https://www.grc.nasa.gov/www/k-12/airplane/right2.html
`
`Printout of Website at
`http://www.aerialroboticscompetition.org/past_missions/
`pastmissionimages/mission3/robots2.png
`
`Ex. 1018
`
`Printout of Website at
`
`
`
`iii
`
`

`

`https://upload.wikimedia.org/wikipedia/commons/thumb/
`5/59/Quadrotorhover.svg/220px-Quadrotorhover.svg.png
`
`Gavrilets, Vladislav, Avionics systems development for small
`unmanned aircraft, Diss. Massachusetts Institute of Technology,
`1998.
`
`Weilenmann, Martin F., Urs Christen, and Hans P. Geering,
`“Robust helicopter position control at hover,” American Control
`Conference, 1994. Vol. 3. IEEE, 1994.
`
`Shim, David Hyunchul, Hyoun Jin Kim, and Shankar Sastry,
`“Hierarchical control system synthesis for rotorcraft-based
`unmanned aerial vehicles,” AIAA Guidance, Navigation and
`Control Conference. 2000.
`
`Shim, H., et al., “A comprehensive study of control design for an
`autonomous helicopter,” In: Proc. 37th IEEE Conf. on Decision
`and Control (CDC’98), 1998.
`
`Frazzoli, Emilio, Munther A. Dahleh, and Eric Feron, “Real-time
`motion planning for agile autonomous vehicles,” Journal of
`Guidance, Control, and Dynamics 25.1 (2002): 116-129 (Ex.
`1022).
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`U.S. Patent No. 3,053,480 to Vanderlip et al.
`
`Ex. 1025
`
`Declaration of Gregory C. Wyckoff in Support of Petitioners’
`Unopposed Motion for Pro Hac Vice Admission
`
`Ex. 1026
`
`Petition for Inter Partes Review in IPR2017-01400
`
`Ex. 1027
`
`Complaint and Jury Demand, filed on October 12, 2016 in Case
`No. 0:16-cv-03443-JRT-HB (D. Minn.)
`
`Ex. 1028
`
`U.S. Patent No. 5,590,062 to Nagamitsu et al.
`
`Ex. 1029
`
`I. Kroo et al., “Mesoscale Flight and Miniature Rotorcraft
`Development,” Stanford University, published in T.J. Mueller ,
`“Fixed and Flapping Wing Aerodynamics for Micro Air Vehicle
`Applications, Progress in Astronautics and Aeronautics,” pp. 503-
`
`
`
`iv
`
`

`

`517 (2002) (“Kroo”)
`
`Ex. 1030
`
`Second Declaration of Dr. Girish Chowdhary
`
`Ex. 1031
`
`U.S. Patent No. 6,122,960 to Hutchings et al.
`
`Ex. 1032
`
`U.S. Patent No. 6,220,545 to Fenny et al.
`
`Ex. 1033
`
`U.S. Patent No. 9,073,532 to Pedersen et al.
`
`Ex. 1034
`
`Ex. 1035
`
`Excerpt from Oxford Living Dictionary Online at
`https://en.oxforddictionaries.com/definition/orientation
`
`Deposition Transcript of John Condon, Wednesday, August 9,
`2017 for Case Nos. IPR2016-01550 and IPR2016-01559
`
`Ex. 1036
`
`U.S. Patent No. 8,089,225 to Goossen
`
`
`
`v
`
`

`

`I.
`
`Introduction
`
`Patent Owner QFO Labs, Inc.’s (“PO”) contingent motion to amend should
`
`be denied for at least three reasons: (i) it fails to carry PO’s burden of proof by
`
`addressing the prior art in a conclusory fashion, (ii) it does not demonstrate
`
`patentability over the prior art that it does identify by name and (iii) it does not
`
`establish that the proposed claim is “patentably distinct” from related patents in the
`
`same family. Each of these deficiencies is independently fatal.
`
`First, PO’s motion conveys a deep misunderstanding of the burden required
`
`to carry a motion to amend and does not comply with the Board’s rules. This
`
`Board’s Conduct of Proceedings warned that addressing only the prior art of
`
`record was insufficient to carry a motion to amend. Indeed, one of the very few
`
`“informative” decisions issued by the Board specifically requires that a motion to
`
`amend discuss the “prior art in general,” and prohibits summarily addressing prior
`
`art references. See Int’l Flavors & Fragrances Inc. v. U.S. Dep’t of Agric.,
`
`IPR2013-00124, Paper 12 at 11 (P.T.A.B. May 20, 2014) (emphasis added).
`
`PO ignores both of these instructions and contorts its “burden of proof” into
`
`a “burden of production,” akin to its “duty of candor” during prosecution.
`
`Applying this improper standard, PO repeatedly refers to unnamed prior art cited
`
`during prosecution and in IPR petitions against its patents. While PO does identify
`
`a handful of these references by name, it fails to address their substance. Rather,
`
`
`
`1
`
`

`

`PO relies exclusively on the allowance of a sibling patent, U.S. Patent No.
`
`9,645,580, to supposedly establish prima facie patentability over the references.
`
`Thus, PO fails to offer any meaningful discussion of the prior art. Indeed,
`
`PO fails to identify the closest prior art; affirmatively state that it identified all
`
`known prior art; or discuss what experience and knowledge a person of ordinary
`
`skill in the art (“POSA”) would have carried. Moreover, PO fails to even pay lip
`
`service to the amended dependent claims, providing no discussion at all. In short,
`
`PO ignored practically all guidance that this Board has given on what should be
`
`addressed in a motion to amend. On this basis alone, the motion should be denied.
`
`Second, even when PO does summarily address the prior art, PO’s motion
`
`fails to demonstrate that the amended claim is patentable over the prior art. In
`
`particular, the controller-related limitations that PO seeks to add are expressly
`
`disclosed by the Sato and Nagamitsu prior art references. PO does not attempt to
`
`dispute the disclosure of Sato. Instead, PO argues that it cannot be combined with
`
`other references because Sato allegedly teaches against the “use of gravity.” This
`
`argument is not only illogical on its face, but is also flatly contradicted by Sato.
`
`Indeed, the very portions of Sato that PO cites undermine its position. Likewise,
`
`PO is well aware that Sato expressly discloses the “positioned in” limitation that it
`
`seeks to add. Petitioners raised this issue in co-pending IPR2017-01400 (“the
`
`’1400 proceeding”), yet PO made no attempt to discuss that disclosure in Sato.
`
`
`
`2
`
`

`

`Third, the proposed claims are unpatentable as duplicative of existing claims
`
`in the same family, and PO cannot file a terminal disclaimer here. Because PO
`
`failed to meet its burden and because its claims are unpatentable – due to prior art,
`
`written description, and redundancy – its motion should be denied.
`
`Accordingly, because PO has failed to meet its burden and because its
`
`claims are unpatentable – both over the prior art and as duplicative – its motion to
`
`amend should be denied.
`
`II.
`
`PO’s Motion Fails to Meet its Burden1
`
`At the outset, PO’s motion should be denied because it applies an entirely
`
`incorrect burden. PO states throughout its motion that it applied a “burden of
`
`production,” which it analogizes to the “duty of candor.” (Mot. at 17,19; 24). This
`
`is not a fleeting technical misstatement. PO doubles down on its misinterpretation
`
`and, as discussed below, attempts to satisfy its burden by simply listing a handful
`
`of prior art references – without discussion.
`
`This barebones listing entirely misses the mark. A patent owner is, “in all
`
`circumstances, required to make a showing of patentable distinction over the prior
`
`
`1 PO will likely attempt to remedy the deficiencies identified in this section in
`
`reply. This would be improper – as set forth in this section, it was PO’s
`
`affirmative duty to establish patentability of its claims. Having failed to do so, it
`
`cannot set forth its affirmative case on Reply.
`
`
`
`3
`
`

`

`art.” Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 6
`
`(P.T.A.B. June 11, 2013); 37 C.F.R. § 42.20(c). To meet this burden, a PO must
`
`“come forward with technical facts and reasoning about those [added] feature(s) . .
`
`. sufficient to persuade the Board that the proposed substitute claim is
`
`patentable.” Id., at 7 (emphasis added). Thus, the “burden is not on the petitioner
`
`to show unpatentability, but on the patent owner.” Id. In this case, PO turns this
`
`burden on its head, and contorts its obligation into a mere “burden of production.”
`
`In other words, PO attempts to place the burden on Petitioner to explain why the
`
`references fail to render the claims unpatentable. This is simply incorrect. And
`
`PO’s misreading of Global Tel-Link does not change this fact. That case merely
`
`identifies the scope of the “prior art of record,” and it does not purport to define the
`
`scope of PO’s burden.
`
`Thus, because PO applied an incorrect burden, its Motion should be denied
`
`on this basis alone.
`
`A.
`
`PO’s Expert Testimony Should be Disregarded
`
`As preliminary issue, PO’s expert declaration should be given little, if any,
`
`weight. Mr. Condon is an original founder of PO QFO Labs, Inc. and currently
`
`serves as its Chief Technology Officer. Ex. 2013, ¶¶5-6. He also maintains a
`
`“significant equity interest” in the company. Id. He admitted during his deposition
`
`that he was testifying pursuant to his “fiduciary duty” to the company. Ex. 1035,
`
`
`
`4
`
`

`

`70:3-9. He further conceded that he has a financial incentive to maintain the ’239
`
`patent’s validity. Id., 71:19-25. His declaration sets forth a (conclusory) opinion
`
`on written description support for claim 11, yet provides no analysis, and, when
`
`pressed at his deposition, could not even remember ever having seen claim 11. Id.,
`
`126:3-19.
`
`B.
`
`PO Addresses Only Prior Art Of Record
`
`PO’s motion also fails because it addresses only the prior art of record cited
`
`against the original claims. As the Board has found, “[e]xplaining patentability
`
`over references applied by the Petitioner against the original patent claims is not
`
`the main event.” Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc.,
`
`IPR2014-00441, Paper 19 at 4 (P.T.A.B. Oct. 30, 2014) (emphasis added); Int’l
`
`Flavors, IPR2013-00124, Paper 12 at 11 (“Distinguishing the proposed claims
`
`only from the prior art references applied to the original patent claims is
`
`insufficient to demonstrate patentability over prior art.”) (emphasis added).
`
`
`
`PO substantively addresses only five references in its motion – Louvel,
`
`Thomas, Jimenez, Kroo, and Sato. All but Sato were cited against the original
`
`claims in this petition, whereas Sato was cited against the original claims in the
`
`petition pending in IPR2017-01400.2 PO failed to identify a single additional
`
`reference, outside of those that have already been cited in IPR proceedings. By
`
`
`2 Petitioner has moved to join the petition in IPR2017-01089 to this petition.
`
`
`
`5
`
`

`

`doing so, PO failed to follow even the most basic guidance given by the Board – it
`
`failed to identify the “closest” prior art or the specific knowledge that a POSA
`
`would have had related to the added limitations. Indeed, PO fails to even identify
`
`which of the references it identifies qualify as prior art, stating that the “additional”
`
`references it cites “may qualify as potential prior art.” (Mot. at 20).
`
`PO’s refusal to identify any art beyond those references cited against its
`
`patents – or even take a stance on what constitutes prior art – falls far short of its
`
`burden to prove patentability of its proposed claim. It is PO’s burden to
`
`demonstrate the patentability of the claims in view of the prior art in general, and
`
`should at least include “[s]ome representation . . . about the specific technical
`
`disclosure of the closest prior art known to the PO.” Idle Free, IPR2012-00027,
`
`Paper 26 at 7. Indeed, the PO is “expected to set forth what is does know . . .
`
`regarding each feature it relies and focuses on for establishing patentability of its
`
`proposed substitute claims.” Id., Paper 66 at 33 (emphasis added). Without that
`
`level of detail, PO’s motion to amend fails to “set forth a prima facie case for the
`
`relief requested [and] satisfy[] its burden of proof.” Id., at 37-38. As in Idle Free,
`
`PO has failed to specifically address any art other than those already cited against
`
`the original claims. On that basis alone, its motion to amend should be denied.
`
`C.
`
`PO’s Discussion of Louvel, Thomas, and Kroo is Facially Deficient
`
`
`
`6
`
`

`

`Even where PO provided some substantive description of the prior art, those
`
`descriptions are shallow and conclusory. They certainly do not meet the stringent
`
`burden of proof required to demonstrate patentability.
`
`1.
`
`Louvel, Thomas, and Jimenez
`
`PO’s “analysis” of Louvel, Thomas, and Jimenez spans all of two pages, of
`
`which half a page is devoted to a quote from the ’580 prosecution history. PO cites
`
`the prosecution history of the ’580 patent because, in that case, the Examiner
`
`allowed the pending claims over Louvel, Thomas, and Jimenez. Specifically, the
`
`PTO concluded that, with respect to the ’580 patent, the “presently presented
`
`claims are distinguishable from the combination of Louvel, Thomas, and Jimenez
`
`provided by the PTAB panel in its initial determination of certain claims in patent
`
`7931239.” (Mot. at 19). Based on that statement, PO summarily concludes that
`
`the Examiner’s Reasons for Allowance should “be more than sufficient” to meet
`
`its burden of “production.” Id. (emphasis added).
`
`PO’s reliance on the ’580 patent’s Reasons for Allowance is devoid of any
`
`substantive analysis, and is exactly the type of conclusory statement this Board has
`
`found to be insufficient. Idle Free, Paper 26 at 8 (“A mere conclusory statement
`
`by counsel . . . to the effect that one ore more added features are not described in
`
`any prior art . . . is on its face inadequate.”) (emphasis added). PO, for example,
`
`provides no technical analysis describing the alleged differences between these
`
`
`
`7
`
`

`

`references and the proposed claims, nor does it explain which of the references are
`
`the closest prior-art references, or how one of ordinary skill in the art would have
`
`understood their disclosures. Even more fatal, PO provides no analysis of the
`
`claims at issue in the ’580 patent, and does not explain why the Examiner’s
`
`rationale in that case should apply here. PO is likely silent on that issue because, if
`
`the claims in the ’580 patent are so similar to the proposed amended claim, as PO
`
`suggests, then the new claim should be rejected on the basis of double patenting.3
`
`D. The Motion Fails to Identify All of the Prior Art Known to PO
`
`PO impermissibly limits knowledge of the prior art to an unspecified time
`
`period during prosecution of the ’580 patent. (Mot. at. 17) (“All of the material
`
`prior art known at the time to Patentee was presented as prior art of record in the
`
`prosecution of the ’580 patent.”). The last-filed IDS in the ’580 patent prosecution
`
`was submitted in March of 2017. Thus, at best, PO has only committed to
`
`identifying “all” art of which it is aware up to March of this year. PO’s brief
`
`contains no other affirmative statement that it has identified “all” of the art of
`
`
`3 A motion to amend does not reopen prosecution. See, e.g., Global Tel*Link
`
`Corp. v. Securus Techs., Inc., IPR2015-01225, Paper 45 at 3 (P.T.A.B. Dec. 14,
`
`2016). Thus, if proposed claim 11 is an obvious variant over the ’580 claims, PO
`
`cannot circumvent that rejection by filing a terminal disclaimer here, and the
`
`claims should be rejected.
`
`
`
`8
`
`

`

`which it is aware to date, including art that it may have become aware of after the
`
`’580 patent issued. On this basis alone, PO’s motion is deficient, fails to comply
`
`with the Board’s rules, and should be denied.
`
`III. Proposed Claim 11 is Not Patentably Distinct Over the Prior Art
`
`As PO’s motion to amend is conditional, it will only be considered if the
`
`Board determines that the unamended limitations in original claim 10 are
`
`unpatentable. As set forth in the Petition, Petitioner relied on Louvel, in view of
`
`Thomas and Jimenez to disclose the original limitations. In its motion, PO does
`
`not argue that any of the original claim limitations establish patentability over this
`
`prior art. Rather, PO only suggests that the additional controller-related limitations
`
`are distinguishable from the prior art. However, as explained below, the added
`
`controller-related limitation is disclosed by Louvel in view of either Sato or U.S.
`
`Patent No. 5,590,062 to Nagamitsu.
`
`For purposes of brevity, Petitioner will not re-address the positions related to
`
`the original claims, and identifies the portions of those references that disclose the
`
`unamended claim limitations in the following chart;4 the sections that are
`
`highlighted are described in more detail in the following sections, as they were not
`
`explicitly presented in the Petition:
`
`
`4 Petitioner provides rationale for combining these references in the below
`
`sections.
`
`
`
`9
`
`

`

`Proposed Claim 11
`
`Claim Prior art
`
`11a
`
`Louvel: ¶¶ 29-30,38
`
`11b
`
`Sato: Fig. 13; 5:9-17; Fig. 9; 2:42-43; 6:35-39; 6:55-67; 7:28-35
`
`Nagamitsu: Fig. 4; 12:4-30; 15:25-46; 16:26-54
`
`11c
`
`Sata: 5:9-17; 6:12-31; 6:32-39; 6:55-67; 7:29-35; 9:66-10:10; 4:61-5:4;
`radio signal - 4:13-17
`
`Nagamitsu: 8:10-30; 12:10-30; 15:25-46.
`
`Jimenez: Abstract ; ¶¶ 24, 25, 31, 25
`
`11d
`
`Louvel ¶¶ 42-44, 91
`
`11e
`
`Louvel ¶¶ 90, 98
`
`11f
`
`Sato: 5:9-17; 4:42-47; 6:28-31; 7:18-60
`
`Nagamitsu: Fig. 9, 15:25-52, 16:26-64
`
`A.
`
`Sato Expressly Discloses the Additional Limitations
`
`1. Overview of Sato
`
`Sato discloses a wireless, handheld controller that can be used, for example,
`
`to control video games (e.g., Ex. 2015, Fig. 13):
`
`
`
`10
`
`

`

`
`
`Sato’s wireless hand-held controller senses the directions in which the user
`
`moves the device (by sensing acceleration against a gravitational reference), and
`
`transmits these movements as “command codes” that can be used in a variety of
`
`applications, including video games (e.g., id., 4:22-28).
`
`2.
`
`Sato Expressly Discloses Limitation 11b
`
`Sato’s wireless handheld controller includes three accelerometers, one for
`
`each of the x, y, and z directions. Sato therefore discloses an RC controller that is
`
`used to sense “at least a two dimensional, two-axis sensed orientation handheld
`
`structure by dynamically sensing a gravitational reference” (e.g., Ex. 2015, Fig. 8)
`
`because accelerometers function by sensing acceleration relative to gravity:
`
`
`
`11
`
`

`

`
`
`See also Ex. 2015, 7:28-35 (“three acceleration sensors for generating three-
`
`dimensional displacement information in x, y, z directions are constituted as the
`
`input apparatus for use on so-called virtual reality equipment to convert motions of
`
`the operator hand holding the input apparatus into information of movements in x,
`
`y, z directions.”). Sato further expressly discloses “dynamically” sensing a
`
`gravitational reference. It discloses the use of three acceleration sensors, each of
`
`which dynamically measure acceleration against a gravitational reference. Ex.
`
`2015, 6:18-31, Fig. 8; Ex. 1030, ¶¶10, 41-42. And last, Sato discloses sensing a
`
`“relative tilt” of the handheld structure with respect to the gravitational reference.
`
`Ex. 2015, 6:18-31, 6:35-39 (“Also, a tilt sensor 12 may be used for physical
`
`displacement detecting means as shown in Fig. 9. In this case, a predetermined
`
`code is generated based on a tilt of the remote commander 10 in a vertical
`
`direction –y detected by the tilt sensor 12.”) (emphasis added); Ex. 1030, ¶42.
`
`Sato thus discloses each aspect of limitation 11b.
`
`
`
`12
`
`

`

`PO argues that Sato “teaches away” because Sato teaches that “gravity is
`
`something to be avoided and the tilt or angles of the controller relative to gravity
`
`are things to be ignored.” (Mot. at 22-23.) This argument demonstrates a
`
`profound misunderstanding of the teachings of Sato. As noted above, Sato
`
`repeatedly teaches that the controller detects movements relative to the direction of
`
`gravity. Ex. 2015, 1:62-65; 6:18-31; Fig. 8. PO relies on a statement in Sato that
`
`the controller is able detect movements even when the operator does hold the
`
`controller perfectly level. (Mot. at 23.) The implementation of this feature is
`
`described in column 7, lines 1-15. As an initial matter, this embodiment of the
`
`Sato controller uses gyroscopes as opposed to accelerometers for the embodiment
`
`used to mimic movements in three dimensional space. Compare Ex. 2015, 7:1-15
`
`with 7:28-35. In any event, the embodiment relied on by PO explicitly states that
`
`the gyroscopes are allowed to “float” relative to gravity, thereby allowing the
`
`sensors to always point in a constant direction relative to gravity:
`
`
`
`
`
`
`
`
`
`13
`
`
`
`

`

`The reference direction is measured in this embodiment using the sensed,
`
`downward gravity vector. Ex. 1030, ¶44. This is yet another way in which Sato
`
`senses “at least a two dimensional” orientation of the device using a “dynamic
`
`gravitational” reference (Ex. 2015, Fig. 11; 7:1-15). Far from ignoring the effects
`
`of gravity, this disclosure shows that the Sato controller always determines a
`
`gravitational reference by which to measure orientation and tilt.
`
`3.
`
`Sato Expressly Discloses Limitation 11c
`
`Sato expressly discloses communicating a desired orientation by radio
`
`frequency (Ex. 2015, 8:5-15 (“in the form of a radio signal”)). This information
`
`includes “command codes” that are include the desired orientation of the device
`
`being controlled—the command codes include information based on the sensed
`
`orientation of the wireless, handheld controller. Id., 6:28-39 (“[A]s a result, a
`
`predetermined command code is obtained in correspondence with a vertical,
`
`horizontal, or back and forth movement performed by the operator on the remote
`
`commander. . . . In this case, a predetermined code is generated based on a tilt of
`
`the remote commander.”); see also id., 6:55-67; 7:29-35; 9:66-10:10; 4:61-5:4; Ex.
`
`1030, ¶47. Sato thus discloses each element of limitation 11c.
`
`4.
`
`Sato Expressly Discloses Limitation 11f
`
`Sato further discloses that, on a “moment-to-moment basis, said actual
`
`orientation of said flying hovercraft mimics said sensed orientation of said
`
`
`
`14
`
`

`

`handheld structure of said RC controller,” as required by limitation 11f. As
`
`already discussed above, Sato discloses a three-axis, wireless, handheld controller
`
`that dynamically detects gravity and tilt. Sato further discloses that the inputs from
`
`the controllers can be used “to convert motions of the operator hand holding the
`
`input apparatus into information of movements in x, y, z directions.” Ex. 2015,
`
`7:31-33. Using a hand as an example, Sato explains that “[b]ased on the input
`
`information, a simulation of a hand for example is displayed on the screen.” Id.,
`
`7:33-35. Sato thus discloses that, on a moment-to-moment basis, the actual
`
`orientation of the device being controlled mimics the handheld controller. Ex.
`
`1030, ¶52.
`
`B. A POSA Would Have Been Motivated to Combine Sato with
`Louvel
`
`Not only does Sato disclose the additional claim elements – limitations 11b,
`
`c, and f – but a POSA would also have been motivated to combine Sato with
`
`Louvel for at least the following reasons:
`
`Louvel and Sato are in the same field of endeavor: Louvel relates to an
`
`aircraft, which can be remotely controlled in any direction in space. Ex. 1004, ¶7.
`
`And, as discussed above, Sato relates to a controller that can control a variety of
`
`devices, such as a computer (Ex. 2015, 5:62-6:11); video games (id., 7:18-27); and
`
`even a virtual reality system (id., 7:28-34). Indeed, as the Board has previously
`
`found, a handheld controller for a computer “logically would have commended
`
`
`
`15
`
`

`

`itself to one of ordinary skill in the art considering any need or problem known in
`
`the field of remote control aircraft, especially one with a joystick such as Louvel.”
`
`(Paper No. 18 at p. 26).
`
`Louvel and Sato address the same problem: Louvel and Sato address
`
`maintaining proper orientation of an object. Indeed, Louvel describes being “able
`
`to perform stationary flight” and “perform controlled displacements in any of the
`
`three directions in space.” Ex. 1004, ¶¶ 1,7. Sato similarly discloses a device that
`
`performs controlled displacements in any of the three directions in space. Ex.
`
`2015, 6:18-31; see also Ex. 1030, ¶56.
`
`Replacing Louvel’s controller with Sato’s controller would have been a
`
`simple, predictable substitution of one known element for another: Given the
`
`advantages of Sato’s controller, it would have been obvious to a POSA to replace
`
`the control mechanism disclosed in Louvel with Sato’s controller. Louvel discloses
`
`a remote control for sending multi-dimensional orientation information to the
`
`flying structure. Ex. 1004, Fig. 5B; ¶¶50-53; Ex. 2015, 2:4-13. Moreover, the use
`
`of Sato’s battery-operated controller would have led to many well-known and
`
`appreciated benefits, including portability, freedom of movement, and the ability to
`
`operate in fields far away from power sources – one of the prime areas a toy
`
`airplane would be used. Moreover, Sato’s controller provides a “remarkably
`
`
`
`16
`
`

`

`enhanced” human interface which is, of course, a desirable trait for a toy airplane
`
`controller. Ex. 2015, 5:9-13; see also Ex. 1030, ¶57.
`
`Replacing Louvel’s controller with Sato’s controller would have
`
`constituted the use of a predictable, known technique: Replacing Louvel’s
`
`controller with Sato’s would improve the device by allowing for more user-
`
`friendly and accurate control. Moreover, controllers such as Sato’s were well
`
`known in the art. The use of a battery-operated controller that used a gravitational
`
`reference was nothing more than a known technique to control a device. Ex. 1030,
`
`¶58.
`
`It would have been “obvious to try” replacing Louvel’s controller with
`
`Sato’s: There are a finite number of ways to remotely control an object.
`
`Moreover, Louvel and Sato disclose similar control, e.g., sensor-based control.
`
`And given the advantages of the Sato handling mechanism, e.g., improved
`
`accuracy, it would have been obvious to try using the software of Sato in the
`
`handling unit of Louvel. Ex. 1030, ¶59.
`
`A POSA would have had a reasonable expectation of success when
`
`combining Louvel and Sato: Both Louvel and Sato deal with remotely controlling
`
`objects. Given that Sato discloses the use of control software in this context (to
`
`remotely control an object), a POSA would have had a reasonable expectation of
`
`
`
`17
`
`

`

`success when combining Louvel and Sato use an RF transceiver for communicating
`
`between an aircraft and a controller. Ex. 1030, ¶60.
`
`PO argues that Sato “teaches away” from an “RC controller determines a
`
`gravitational reference.” (Mot. at 22.) To support its position, PO argues that Sato
`
`discloses that “gravity is something to be avoided.” (Id. at 23.) Not only is this
`
`argument logically deficient on its face – as gravity is somewhat difficult to avoid
`
`in any application – but it completely mischaracterizes Sato. PO bases its
`
`“gravity” argument on one quote from Sato, which states that the angle at which
`
`the device is held “does not affect the position specifying information to be output
`
`because the floating detecting means is always held in a constant orientation
`
`relative to the gravity direction.” (Id. at 2