Trials@uspto.gov
`571-272-7822
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`
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` Paper 7
` Entered: August 18, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`U.S. PHILIPS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00856
`Patent 5,910,797
`____________
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.108
`
`
`
`
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`IPR2017-00856
`Patent 5,910,797
`
`I. INTRODUCTION
`A. Background
`HTC Corporation and HTC America, Inc. (“Petitioner”) filed a
`
`Petition (Paper 2, “Pet.”) for inter partes review of claims 1, 4, 6–9, and 11,
`(“the challenged claims”) of U.S. Patent No. 5,910,797 (“the ’797 Patent”).
`See 35 U.S.C. §§ 311–312. U.S. Philips Corporation (“Patent Owner”)
`timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An
`inter partes review may not be instituted unless it is determined that “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`
`After considering the Petition and the Preliminary Response, for the
`reasons discussed below, we do not institute an inter partes review.
`
`B. Related Matters
`The parties indicate the ’797 Patent is asserted in the following
`
`proceedings (Pet. 2–3; Paper 3, 1–2):
`Koninklijke Philips N.V. v. ASUSTek Computer Inc., No. 1-15-cv-
`01125 (D. Del.);
`Koninklijke Philips N.V. v. HTC Corp., 1:15-cv-01126 (D. Del.);
`Koninklijke Philips N.V. v. Visual Land Inc., No. 1-15-cv-01127
`(D. Del.);
`Koninklijke Philips N.V. v. Southern Telecom, Inc., No. 1-15-cv-
`01128 (D. Del);
`
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`IPR2017-00856
`Patent 5,910,797
`Koninklijke Philips N.V. v. Digital Prods. Int’l, Inc., No. 1-15-cv-
`01129 (D. Del.);
`Koninklijke Philips N.V. v. Double Power Tech., Inc., No. 1-15-
`cv-01130 (D. Del.);
`Koninklijke Philips N.V. v. Yifang USA Inc. d/b/a E-Fun, Inc., No. 1-
`15-cv-01131 (D. Del.); and
`Koninklijke Philips N.V. v. Acer Inc., No. 1-15-cv-01170 (D. Del).
`
`C. The ’797 Patent (Ex. 1001)
`The ’797 Patent discloses a portable apparatus having an integrated
`screen for displaying one or more objects, a gravitation controlled sensor for
`measuring the spatial orientation of the apparatus, and a programmed data
`processor for, under control of a predetermined range of spatial orientations,
`imparting a non-stationary motion pattern to a selection of displayed objects
`based on the sensor data. See Ex. 1001, Abstract.
`Figure 1 of the ’797 Patent is reproduced below:
`
`Figure 1 depicts the apparatus including housing 20, data
`microprocessor 22, display screen 24, gravitation-controlled detectors 34,
`36, 38, and 40, and keys 26, 28, and 30. See Ex. 1001, 2:42–45, 56–60.
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`IPR2017-00856
`Patent 5,910,797
`Gravitation-controlled detectors 34, 36, 38, 40, singly or collectively
`measure a spatial orientation around an axis that is perpendicular to the
`plane of Figure 1. See id. at 2:56–60.
`Figure 4, of the ’797 Patent is reproduced below:
`
`
` Figure 4 depicts “various motion characteristics realizable with the
`invention.” Ex. 1001, 4:1–2. The horizontal axis shows the inclination
`angle α and the vertical axis shows the pseudo force exerted on the object.
`See id. at 4:2–4. “Such a force if steady, in combination with a pseudo mass
`of the object, would result in a uniform acceleration.” Id. at 4:4–6. For
`example, curve 64 provides a constant force that would make the object
`“fall” under constant acceleration, and curve 66 would make the object “fly
`like a balloon.” See id. at 4:6–9. Curves 60 and 62 provide other examples
`of motion characteristics. See id. at 4:9–11.
`
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`IPR2017-00856
`Patent 5,910,797
`Figure 5 of the ’797 Patent is reproduced below:
`
`
`Figure 5 depicts “a flow chart for use with the invention, such as in a
`manipulatory game.” Ex. 1001, 4:15–16. The game is started in block 100,
`and in block 102 the object to be moved is created. See id. at 4:16–19. In
`block 104, the existence of non-zero inclination or a non-zero change of
`inclination is sensed. See id. at 4:21–23. “If yes, in block [106] the motion
`is amended.”1 Id. at 4:23–24. “If the inclination is steady, the motion
`remains uniform.” Id. at 4:25–26. If, in block 108, an occurrence of an
`incident is detected, such as a collision with a constraint, appropriate action
`is taken in block 110. See id. at 4:26–28. If an occurrence of an incident is
`not detected in block 108, the process proceeds to block 112 to detect a
`termination situation. See id. at 4:31–33.
`
`
`1 Patent Owner’s reference to block 104 instead of block 106 in this passage
`appears to be a typographical error.
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`IPR2017-00856
`Patent 5,910,797
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 11 are independent, with
`
`claims 4 and 6–9 dependent from claim 1. Claim 1 is illustrative and
`reproduced below (punctuation added for enhanced readability):
`1. A manipulatable apparatus having data processing means and
`screen means for displaying one or more graphical or other
`objects presented by said data processing means, a gravitation-
`controlled sensor[,] integrated with said screen means and
`feeding said data processing means[,] for measuring an
`acceleration of said screen means induced by user manipulation
`of the screen means, wherein said data processing means have
`programmed calculating means for[,] under control of a screen
`motion sensed by said sensing means[,] imparting an
`acceleration based motion pattern to a predetermined selection
`among said objects.
`Id. at 4:41–51.
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the following claims of the
`’797 Patent on the following grounds and prior art (Pet. 1, 30–68):
`Claims
`Statutory Basis Reference(s)
`1, 6, 8, 9, 11
`§ 103
`Tsukamoto2
`Tsukamoto and
`1, 6, 8, 9, 11
`§ 103
`LaBiche3
`1, 4, 6, 7, 11
`§ 103
`Onozawa4
`The Petition also relies on the Declaration of Kenneth Parulski (Ex. 1003).
`
`
`2 Ex. 1005, Japan Patent Application H6-4208, published Jan. 14, 1994
`(“Tsukamoto”).
`3 Ex. 1006, US Patent 4,839,838, issued Jun. 13, 1989 (“LaBiche”).
`4 Ex. 1007, Japan Patent Application H6-289802, published Oct. 18, 1994
`(“Onozawa”).
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`IPR2017-00856
`Patent 5,910,797
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`II. ANALYSIS
`Claims of an unexpired patent that will not expire before issuance of a
`final written decision are interpreted using the broadest reasonable
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Petitioner and Patent Owner agree that the ’797 Patent expired and is,
`therefore, subject to a district court-type claim construction. Pet. 6; Prelim.
`Resp. 12–13 (both citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012); Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc); Chi Mei Innolux v. SEL, Case IPR2013-00065, slip op. at 10 (PTAB
`April 30, 2013) (Paper 11)). Because the ’797 Patent has expired, we need
`not apply the broadest reasonable construction; instead, we may apply a
`district court-type claim construction, and we do so here. See 37 C.F.R.
`§ 42.100(b). Thus, we construe the claims in accordance with their ordinary
`and customary meanings, as would be understood by a person of ordinary
`skill in the art, in the context of the ’797 Patent Specification. See generally
`Phillips, 415 F.3d at 1312–14.
`
`Independent claim 1 recites, “said data processing means have
`programmed calculating means for under control of a screen motion sensed
`by said sensing means imparting an acceleration based motion pattern to a
`predetermined selection among said objects.” Independent claim 11
`includes a similar recitation. When a claim uses the phrase “means for”
`there is a presumption that 35 U.S.C. § 112 ¶ 6 applies. See Personalized
`Media Commc’ns, LLC v. Int’l Trade Comm., 161 F.3d 696, 703–04 (Fed.
`Cir. 1998) (cited with approval in Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1348 (Fed. Cir. 2015) (en banc)). Petitioner asserts that § 112 ¶ 6
`
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`IPR2017-00856
`Patent 5,910,797
`applies to several claim phrases of claims 1 and 11. See Pet. 24–28. As
`stated in 35 U.S.C. § 112 ¶ 6:
`An element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the
`recital of structure, material, or acts in support thereof, and such
`claim shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents
`thereof.
`Construing a means-plus-function claim term is a two-step process.
`
`First, the claimed function must be identified, followed by a determination
`of what structure, if any, disclosed in the specification corresponds to the
`claimed function. See Williamson v. Citrix, 792 F.3d at 1351 (citing Noah
`Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012).
`Our rules governing petitions for inter partes review state that the
`petition must set forth:
`How the challenged claim is to be construed. Where the claim
`to be construed contains a means-plus-function or step plus-
`function limitation, as permitted under 35 U.S.C. § 112 [¶ 6],
`the construction of the claim must identify the specific portions
`of the specification that describe the structure, material, or acts
`corresponding to each claimed function.
`37 C.F.R. § 42.104(b)(3).
`If the scope and meaning of the challenged claims cannot be
`determined without speculation, the differences between the claimed
`invention and the prior art cannot be ascertained. BlackBerry Corp. v.
`MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 8, 20 (PTAB
`Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA
`1962) and reasoning that “the prior art grounds of unpatentability must fall,
`pro forma, because [the grounds] are based on speculative assumption as to
`
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`IPR2017-00856
`Patent 5,910,797
`the meaning of the claims.”). Stated in other terms, “[w]ithout ascertaining
`the proper claim scope, we cannot conduct a necessary factual inquiry for
`determining obviousness—ascertaining differences between the claimed
`subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966)). The Board has terminated proceedings or
`denied institution of inter partes review when the scope of the challenged
`claims could not be determined without speculation. See, e.g., BlackBerry,
`slip op. at 13–14; Facebook, Inc. v. TLI Commc’ns LLC, Case IPR2014-
`00566, slip op. at 9–12 (PTAB Sept. 15, 2014) (Paper 14); Space
`Exploration Techs. Corp. v. Blue Origin LLC, Case IPR2014-01378, slip op.
`at 7–9 (PTAB Mar. 3, 2015) (Paper 6); Micron Tech., Inc., v. Innovative
`Memory Sys., Inc. Case IPR2016–00324, slip op. 9–20 (PTAB June 13,
`2016) (Paper 11).
`As stated briefly above, Petitioner asserts that § 112 ¶ 6 applies to
`claims 1 and 11. In particular, Petitioner contends that the “data processing
`means” and the “programmed calculating means,” are each means-plus-
`function limitations. See Pet. 24, 26. Petitioner asserts the proposed
`function for the “programmed calculating means” is “under control of a
`screen motion sensed by sensing means in a manipulatable apparatus,
`imparting an acceleration based motion pattern to a predetermined selection
`among objects displayed on a screen means.” Pet. 26 (quoting Ex. 1003
`¶ 99; citing Ex. 1001, 4:48–51; Ex. 1003 ¶ 100). Petitioner also contends,
`“imparting an acceleration based motion pattern to a predetermined selection
`among said objects” is one of several proposed functions for the “data
`processing means.” Id. at 24 (quoting Ex. 1003 ¶ 94; citing Ex. 1001, 4:41–
`
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`IPR2017-00856
`Patent 5,910,797
`51). Petitioner asserts that the following descriptions in the ’797 Patent
`“may recite structure”:
`“The apparatus has a programmed data processor for under
`control of a predetermined range of spatial orientations
`imparting a non-stationary motion pattern to a predetermined
`selection among the objects.” Ex. 1001 Abstract. “FIG. 1
`shows an apparatus diagram according to the invention. The
`apparatus comprises a housing 20, data microprocessor 22,
`display screen 24 …” Ex. 1001 2:42–44, Fig. 1, Ref. 22.
`“[T]he apparatus has gravitation-controlled detectors 34, 36, 38,
`40 that singly or collectively measure a spatial orientation
`around an axis that is perpendicular to the plane of the Figure.”
`Ex. 1001 2:57–60. Gravitation-controlled detectors 34, 36, 38,
`40 provide data to the microprocessor 22, as shown by the
`arrows connecting these elements. Ex. 1001 Fig. 1. “The
`above configuration can operate in a way that has been widely
`practised for handheld calculators, handheld game-oriented
`devices, or so-called Personal Digital Assistants.” Ex. 1001
`2:50–53. “FIG. 5 is a flow chart for use with the invention,
`such as in a manipulatory game” which includes steps
`performed by the processor such as initializing the object on the
`display, amending the motion of the object if an inclination or
`change in inclination is detected, determining whether an
`obstacle is encountered by the object, and determination of
`other conditions which would cause the game to finish. Ex.
`1001 Fig. 5, 4:15–39.
`Pet. 24–25 (citing Ex. 1003 ¶ 95); see id. at 26–27 (citing Ex. 1003 ¶ 101).
`In sum, based on Petitioner’s representations, we understand Petitioner to
`assert that the claimed function includes “imparting an acceleration based
`motion pattern to a predetermined selection among said objects,” and the
`structure corresponding to the claimed function is a programmed data
`processor or data microprocessor 22, and the flow chart of Figure 5.
`
`Patent Owner does not dispute Petitioner’s claim constructions for
`“data processing means” and “programmed calculating means.” See Prelim.
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`IPR2017-00856
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`Resp. 12–14. Patent Owner, however, provides an explicit claim
`construction for “an acceleration based motion pattern” as “a pattern of
`motion which reflects acceleration.” Id. at 13 (citing Ex. 1001, 3:63–4:14;
`Ex. 2001, 11); see id. at 18.
`
`Petitioner does not identify sufficiently the specific portions of the
`’797 Patent that describe structure corresponding to the function “under
`control of a screen motion sensed by said sensing means imparting an
`acceleration based motion pattern to a predetermined selection among said
`objects.” See 37 C.F.R. § 42.104(b)(3). “Structure disclosed in the
`specification qualifies as ‘corresponding structure’ if the intrinsic evidence
`clearly links or associates that structure to the function recited in the claim.”
`Williamson v. Citrix, 792 F.3d at 1352 (citations omitted). Petitioner’s
`citations to the ’797 Patent disclosures of data microprocessor 22 and Figure
`5 are silent with respect to “imparting an acceleration based motion pattern
`to a predetermined selection among the objects,” and therefore, do not
`clearly link or associate data microprocessor 22 or the Figure 5 flow chart to
`the claimed function. See Pet. 24–27; Ex. 1001, 2:42–44; 4:15–39, Figs.
`1, 5. Petitioner’s citation to the ’797 Patent Abstract disclosure of “a
`programmed data processor for under control of a predetermined range of
`spatial orientations imparting a non-stationary motion pattern to a
`predetermined selection among the objects,” describes only a programmed
`data processor that performs the claimed function. Ex. 1001, Abstract; see
`Pet. 24, 26.
`The analysis does not end here because “[e]ven if the specification
`discloses corresponding structure, the disclosure must be of ‘adequate’
`corresponding structure to achieve the claimed function.” Williamson v.
`
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`IPR2017-00856
`Patent 5,910,797
`Citrix, 792 F.3d at 1352 (citations omitted). “In cases involving a computer-
`implemented invention in which the inventor has invoked means-plus-
`function claiming, [the Federal Circuit] has consistently required that the
`structure disclosed in the specification be more than simply a general
`purpose computer or microprocessor.” Aristocrat Techs. Australia Pty Ltd.
`v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). “A computer-
`implemented means-plus-function term is limited to the corresponding
`structure disclosed in the specification and equivalents thereof, and the
`corresponding structure is the algorithm.’” Harris Corp. v. Ericsson Inc.,
`417 F.3d 1241, 1253 (Fed. Cir. 2005) (quoted with approval in Aristocrat).
`“The algorithm may be expressed as a mathematical formula, in prose, or as
`a flow chart, or in any other manner that provides sufficient structure.”
`Williamson v. Citrix, 792 F.3d at 1352 (citing Noah, 675 F.3d at 1312).
`The ’797 Patent disclosures cited by Petitioner reveal no more than a
`general purpose “programmed data processor.” See Pet. 24–27; Ex. 1001,
`Abstract, 2:42–44, 50–53, 57–60, 4:15–39, Figs. 1, 5. The cited ’797 Patent
`disclosures do not describe an algorithm, expressed as a mathematical
`formula, in prose, or as a flow chart, or in any other manner that provides
`sufficient structure for “imparting an acceleration based motion pattern to a
`predetermined selection among said objects.” See Pet. 24–27; Ex. 1001,
`Abstract, 2:42–44, 50–53, 57–60, 4:15–39, Figs. 1, 5.
`To the extent that Petitioner contends that the Figure 5 flow chart is
`the algorithm for the programmed data processor, as explained before, the
`cited ’797 Patent disclosures related to Figure 5 are silent with respect to
`“imparting an acceleration based motion pattern to a predetermined selection
`among the objects.” Figure 5 of the ’797 Patent and corresponding
`
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`IPR2017-00856
`Patent 5,910,797
`disclosure cited by Petitioner describe the operation of a game, including
`creating the object to be moved in block 102, sensing non-zero inclination or
`a non-zero change of inclination in block 104, and amending the motion of
`an object in block 106 in response to sensing non-zero inclination or a non-
`zero change of inclination, and, in the alternative, the motion remains
`uniform if the inclination is steady. See Ex. 1001, 4:15–26, Fig. 5. Next, in
`block 108 occurrence of an incident is detected, such as a collision with a
`constraint, and if yes, in block 110 appropriate action is taken. See id. at
`4:26–39, Fig. 5. For example, it remains unclear, and Petitioner does not
`explain, how the ’797 Patent disclosures of amending motion, “effect
`motion,” and taking appropriate action also disclose structure for “imparting
`an acceleration based motion pattern.” See id. at 4:22–30, Fig. 5: blocks
`106, 110.
`Because general-purpose computers can be programmed to
`perform very different tasks in very different ways, simply
`disclosing a computer as the structure designated to perform a
`particular function does not limit the scope of the claim to “the
`corresponding structure, material, or acts” that perform the
`function, as required by section 112 paragraph 6.
`Aristocrat, 521 F.3d at 1333.
`As a result, it is unclear what algorithms for “imparting an
`acceleration based motion pattern to a predetermined selection among said
`objects” are encompassed by independent claims 1 and 11.
`
`III. CONCLUSION
`On this record, we are unable to determine the scope and meaning of
`“said data processing means have programmed calculating means for under
`control of a screen motion sensed by said sensing means imparting an
`
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`IPR2017-00856
`Patent 5,910,797
`acceleration based motion pattern to a predetermined selection among said
`objects,” as recited in claim 1, and recited similarly in claim 11.
`Accordingly, “the prior art grounds of unpatentability must fall, pro forma,
`because they [would be] based on speculative assumption as to the meaning
`of the claims.” BlackBerry, slip op. at 20 (citing In re Steele, 305 F.2d at
`862–63). Therefore, we decline to institute an inter partes review of claims
`1, 4, 6–9, and 11.
`
`IV. ORDER
`
`Accordingly, it is ORDERED that inter partes review of U.S. Patent
`
`No. 5,910,797 is not instituted based on this Petition.
`
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`IPR2017-00856
`Patent 5,910,797
`
`
`PETITIONER:
`Bing Ai
`Kevin Patariu
`John Schnurer
`PERKINS COIE LLP
`ai-ptab@perkinscoie.com
`kpatariu@perkinscoie.com
`jschnurer@perkinscoie.com
`
`
`PATENT OWNER:
`Justin Oliver
`Daniel Glueck
`FITZPATRICK, CELLA, HARPER & SCINTO
`philipsipr@fchs.com
`dglueck@fchs.com
`
`
`
`
`
`
`
`PATENT OWNER:
`
`
`
`15
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`