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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` HTC CORPORATION AND HTC AMERICA, INC.,
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`Petitioners,
`
`v.
`U.S. PHILIPS CORPORATION,
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`Patent Owner.
`
`__________________
`
`Case IPR2017-00856
`Patent No. 5,910,797
`
`
`
`
`
`
`
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`Paper 8
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`_____________
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
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`TABLE OF CONTENTS
`
`
`
`I.
`INTRODUCTION .......................................................................................... 1
`LEGAL STANDARD .................................................................................... 2
`II.
`III. ARGUMENT .................................................................................................. 3
`A.
`The Board Overlooks Patent Owner’s Position on Construction
`of Portions of the “Programmed Calculating Means” Term ................ 3
`The Cited Evidence in the Record Provides Further Support for
`the Algorithm Disclosed in Figure 5 and the Accompanying
`Specification Text ................................................................................. 6
`If the Goal of Determining Adequate Structure is to Facilitate
`an Invalidity Analysis, Consideration of Algorithms and
`Explanation Presented by the Patent Owner is Proper ....................... 10
`Fig. 5 and the Accompanying Description do Provide Adequate
`Structure for the “Programmed Calculating Means” Limitation ....... 12
`IV. CONCLUSION ............................................................................................. 13
`
`
`
`B.
`
`C.
`
`D.
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`
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`- i -
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`
`I.
`
`INTRODUCTION
`
`The Board issued its Institution Decision on August 18, 2017 (Paper 7,
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`“Decision”) that denies review of any ground requested in Petitioner’s Petition
`
`filed on February 10, 2017 (Paper 2, “Petition”). Petitioner hereby timely requests
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`rehearing under 37 C.F.R. § 42.71(d)(2) to request the Board to reconsider and to
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`institute a trial on challenged claims 1, 6, 8-9, and 11 for being obvious under 35
`
`U.S.C. § 103(a) in view of Tsukamoto (Ground 1), claims 1, 6, 8-9, and 11 for
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`being obvious under 35 U.S.C. § 103(a) in view of Tsukamoto in view of LaBiche
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`(Ground 2), and claims 1, 4, 6-7, and 11 for being obvious under 35 U.S.C. §
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`103(a) in view of Onozawa (Ground 3).
`
`The Board declined to institute any grounds because “we are unable to
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`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
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`means imparting an acceleration based motion pattern to a predetermined selection
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`among said objects,’ as recited in claim 1, and recited similarly in claim 11.”
`
`Decision at pp. 13-14. Specifically, the Board found “[t]he 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.’” Id. at p. 9.
`
`1
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`As explained below, the Board has overlooked the evidence presented in the
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`proceeding and thus the Petitioner respectfully requests that the Board reconsider
`
`its decision, and initiate inter partes review for claims 1, 4, 6-9, and 11 in Grounds
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`1 through 3. Reconsideration is particularly important because a recently issued
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`Markman order in the related litigation reached the opposite conclusion of the
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`Board, finding sufficient structure in the specification for this limitation.
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`II. LEGAL STANDARD
`When rehearing a decision on a petition to institute an inter partes review,
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`the party requesting rehearing has the burden of showing the decision should be
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`modified, and “[t]he request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`§ 42.71(d).
`
`In a decision on a petition to institute an inter partes review, the Board must
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`consider, under 35 U.S.C. § 314(a), “the information presented in the petition filed
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`under section 311 and any response filed under section 313” in determining
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`whether there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition. Rule 37 C.F.R. §
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`42.108(c) further states that “[t]he Board's decision will take into account a patent
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`owner preliminary response where such a response is filed, including any
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`2
`
`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`testimonial evidence, but a genuine issue of material fact created by such
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`testimonial evidence will be viewed in the light most favorable to the petitioner
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`solely for purposes of deciding whether to institute an inter partes review.”
`
`The Board “will review the decision for an abuse of discretion.” 37 C.F.R. §
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`42.71(c). “An abuse of discretion occurs when a ‘decision was based on an
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`erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear
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`error of judgment.’” Veeam Software Corp. v. Symantec Corp., IPR2013-00142,
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`Paper 17 (Sept. 30, 2013) at 2 (quoting PPG Indus. Inc. v. Celanese Polymer
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`Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
`
`III. ARGUMENT
`A. The Board Overlooks Patent Owner’s Position on Construction of
`Portions of the “Programmed Calculating Means” Term
`
`The Decision stated that “Patent Owner does not dispute Petitioner’s claim
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`constructions for “data processing means” and “programmed calculating means.”
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`See Prelim. Resp. 12–14.” Decision at p. 10. Petitioner respectfully disagrees.
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`While the Decision notes that “‘Patent Owner, however, provides an explicit
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`claim construction for “an acceleration based motion pattern” as “a pattern of
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`motion which reflects acceleration.’ Id. at 13 (citing Ex. 1001, 3:63–4:14; Ex.
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`2001, 11); see id. at 18,” the Decision overlooks that the term “an acceleration
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`based motion pattern” is a portion of the limitation “programmed calculating
`
`means for under control of a screen motion sensed by said sensing means
`
`3
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`imparting an acceleration based motion pattern to a predetermined selection
`
`among said objects.” Decision at p. 10.
`
`In its Preliminary Response, the Patent Owner noted that its construction of
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`“an acceleration based motion pattern” differs from Petitioner and provides more
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`detail and explanation. Paper 6, Patent Owner Preliminary Resp. at pp. 10, 13.
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`Therefore, Patent Owner’s explanation of the construction for “an acceleration
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`based motion pattern” and the cited specification in support of its construction is
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`relevant to the construction of the larger “programmed calculating means” term
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`which contains the “acceleration based motion pattern” limitation.
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`In support of its construction of “an acceleration based motion pattern”,
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`Patent Owner provides the following additional information.
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`“An acceleration based motion pattern” (claims 1 and 11) – This
`term refers to a motion pattern that reflects acceleration. (Ex. 1001,
`col. 3, line 63 through col. 4, line 14.) Acceleration is defined as
`“[t]he rate of change of velocity with respect to time.” (Ex. 2001, p.
`11.) Thus, this term is properly construed to mean “a pattern of
`motion which reflects acceleration.”
`
`
`Paper 6, Patent Owner Preliminary Resp. at 13. The Patent Owner provided a
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`further explanation of the algorithm in the cited text of the 797 Patent (Ex. 1001
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`col. 3, line 63 through col. 4, line 14) in the Patent Owner Preliminary Response.
`
`4
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`Fig. 4 shows exemplary acceleration based motion patterns to be
`applied to displayed objects.1 In that figure, the horizontal axis α
`represents the inclination angle of the screen, and the vertical axis
`gives a “pseudo force” F exerted on the object. Given the pseudo
`force F and assuming a “pseudo mass” for the object, one can
`determine the acceleration of the object. (Ex. 1001, col. 4, lines 1-14.)
`Thus, for example, given a specified inclination α, curve 64 provides a
`corresponding constant force F and thus constant acceleration that
`would make an object “fall.” (Id.) Curve 66, on the other hand, yields
`a constant acceleration in the opposite direction that would make an
`object “fly like a balloon.” (Id.) As can be seen, in yet another curve,
`numbered 62, the relationship between the angle of inclination
`and the force (and thus acceleration) is non-linear. Curve 60 shows
`that a pseudo force, and thus an acceleration, is applied only at or
`above a threshold angle. The patent also states that “[t]he motion may
`be controlled along non-straight trajectories, such as parabolas, or
`may comprise oscillating or rotary motion or motion components. The
`motion may be constrained by soft boundaries, such as gravitational
`potential wells. In all cases, the motion is acceleration [sic] based,
`such as with respect to altering the motion vector of the object with
`respect to speed or direction; because altering of spatial orientation of
`the screen effects a dynamical change of the motion pattern.” (Ex.
`1001, col. 3, lines 57-67.)
`
`
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`This text from the 797 Patent specification was also identified by Petitioner
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`in the explanation of the claimed invention. Paper 2, Petition at pp. 15-16. Patent
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`5
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`Owner and Petitioner both cite Fig. 3 and the accompanying explanation as an
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`example of “an exemplary displayed object to which an acceleration based motion
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`pattern is imparted.” Id.; Petition at 15.
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`The Patent Owner identified this specification section (Ex. 1001 col. 3, line
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`63 through col. 4, line 14, which in turn references Fig. 4) as relevant to the
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`construction of the term “an acceleration based motion pattern.” Because “an
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`acceleration based motion pattern” is a portion of the term “programmed
`
`calculating means for under control of a screen motion sensed by said sensing
`
`means imparting an acceleration based motion pattern to a predetermined
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`selection among said objects,” the identified specification (Ex. 1001 col. 3, line 63
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`through col. 4, line 14, Fig. 4) identified by both the Patent Owner and Petitioner is
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`relevant to the construction and structure of the “programmed calculating means”
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`term and should have been considered by the Board when determining that
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`sufficient structure was identified. Since the Decision by the Board only focused
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`on Fig. 5 and Col. 4:15-39, reconsideration is requested. Decision at p. 12-13.
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`B.
`
`The Cited Evidence in the Record Provides Further Support for
`the Algorithm Disclosed in Figure 5 and the Accompanying
`Specification Text
`
`The Decision concluded that “‘it remains unclear, and Petitioner does not
`
`explain, how the ’797 Patent disclosures of amending motion, “effect motion,” and
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`taking appropriate action also disclose structure for “imparting an acceleration
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`6
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`based motion pattern.’ See id. at 4:22–30, Fig. 5: blocks 106, 110.” Decision at p.
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`13.
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`However, this conclusion was reached without consideration of the cited
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`specification figures and text discussed in Section III.A of this paper. Therefore,
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`the Board’s Decision overlooked citations to the specification made in the Patent
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`Owner Preliminary Response and by the Petitioner, and the further explanation of
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`these citations provided in the Patent Owner Preliminary Response.
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`Petitioner requests rehearing so that the full record and all cited references
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`be considered to determine whether sufficient structure is provided by combination
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`of Patent Owner and Petitioner patent specification citations and explanation of
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`these sections for the “programmed calculating means” limitation.
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`The description accompanying Fig. 5 explains that the “moving object’ on
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`the device display of a maze game is “influenced by pseudo gravitation.” Ex. 1001
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`at 4:15-21. The Petition explains that movement of a ball in a maze game in
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`response to the force of gravity is an intuitive result supported by basic physics
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`calculations such as F=M*A. Petition at p. 8 (citing Parulski Decl. Ex. 1003 ¶¶43-
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`48). “In block 104, the existence of non-zero inclination is sensed, or rather a non-
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`zero change of inclination.” Ex. 1001 at 4:22-24. This inclination value α is the
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`horizontal axis of Fig. 4, cited by both the Petitioner and Patent Owner (see
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`Section III.A). If non-zero inclination or a change in inclination is sensed “the
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`7
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`motion is amended.” Ex. 1001 at 4:21-24. When determining the motion of the
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`object “the motion depends on the actual inclination.” Ex. 1001 at 4:24-25. Figure
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`4 shows the force applied to a displayed object as a function of inclination, in other
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`words, how the force, and thus motion, can depend on the inclination. “In that
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`figure, the horizontal axis α represents the inclination angle of the screen, and the
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`vertical axis gives a “pseudo force” F exerted on the object. Given the pseudo
`
`force F and assuming a “pseudo mass” for the object, one can determine the
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`acceleration of the object. (Ex. 1001, col. 4, lines 1-14.)” Patent Owner
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`Preliminary Resp. at 6-7. “If the inclination is steady, the motion remains
`
`uniform.” Ex. 1001 at 4:24-25. The description accompanying Fig. 4 further
`
`explains this statement: “Such a force if steady, in combination with a pseudo mass
`
`of the object, would result in a uniform acceleration.” Ex. 1001 at 4:3-5.
`
`Thus, the disclosures in the record cited by Patent Owner and Petitioner in
`
`further explain that the motion of an object is amended (and thus an acceleration
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`based motion pattern is imparted to an object) by:
`
`1) determining a non-zero inclination angle α of the display screen as
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`explained in Fig. 5, Block 104 and the accompanying text; and
`
`2) effect motion (Fig. 5, Block 106 and accompanying text) by:
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`8
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`
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`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`A) determining the force (F) to be applied to the object as a function
`
`of the inclination angle α, as shown in the exemplary function
`
`curves of Figure 4 and accompanying text; and
`
`B) assuming a pseudo mass (M) of the object, calculate the
`
`acceleration (A) using the well-known equation F=M *A (Col. 4:4-
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`6; Petition at p. 8 (citing Parulski Decl. Ex. 1003 ¶¶43-48)).
`
`Thus, the cited ’797 Patent disclosures do describe an algorithm, in the flow
`
`chart of Fig. 5 and the accompanying text which triggers a force (and thus
`
`acceleration) calculation as a result of detecting non-zero inclination in Block 104,
`
`the determination of force as a function of inclination angle as shown in Fig. 4 and
`
`the accompanying text, and the calculation of acceleration of the displayed object
`
`using the determined force and pseudo mass of the object (using the well-known
`
`physics equation F=M*A) described in the specification at Col. 4:4-6, that provides
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`sufficient structure for “imparting an acceleration based motion pattern to a
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`predetermined selection among said objects.”
`
`Specifically, the 797 Patent sections cited and discussed by Petitioner and
`
`Patent Owner and not fully considered by the Board addresses the Decision’s
`
`concern of “how the ’797 Patent disclosures of amending motion, “effect motion,”
`
`and taking appropriate action also disclose structure for “imparting an acceleration
`
`based motion pattern.” Decision at p. 13.
`
`9
`
`
`
`C.
`
`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`If the Goal of Determining Adequate Structure is to Facilitate an
`Invalidity Analysis, Consideration of Algorithms and Explanation
`Presented by the Patent Owner is Proper
`
`
`
`In the Decision, the Board explained the policy reasons for the rule (37
`
`C.F.R. 42.104(b)(3)) requiring identification of the structure for means plus
`
`function claims:
`
`“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…. the prior art
`grounds of unpatentability must fall, pro forma, because [the grounds]
`are based on speculative assumption as to the meaning of the
`claims….[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.”
`
`Decision at 7-8. Thus, the goal of determining whether there is sufficient structure
`
`for a means plus function claim is so that an initial validity determination can be
`
`made in an Institution Decision. The rule places the burden on the Petitioner
`
`because the Patent Owner is not required to file a Preliminary Response.
`
`
`
`Here, the Patent Owner did file a Preliminary Response, and in that
`
`Response, provided further support for the algorithm to determine an “acceleration
`
`based motion pattern” in its construction of that term. See Section III.A. This
`
`support was also cited in the Petition. Id. As explained above, the “acceleration-
`
`10
`
`
`
`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`based motion pattern” term is part of the larger term “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,” and thus, the evidence cited by the Patent Owner is relevant
`
`to a determination of whether there is sufficient structure. If it is argued that the
`
`Board should not consider any additional explanation of the structure simply
`
`because the Patent Owner provided it, Petitioner submits that this overlooks the
`
`objective of the rule, and is contrary to the general principle that statements made
`
`by the Patent Owner are always considered when deciding issues of claim
`
`construction. 37 C.F.R. § 42.108(c); 35 U.S.C. § 314(a). The purpose of 37
`
`C.F.R. § 42.104(b)(3) is to facilitate full development of the record so that a
`
`determination adequate structure can be made. As such, all relevant citations and
`
`explanations in the record should be considered, whether it was made by the
`
`Petitioner or the Patent Owner. 37 C.F.R. § 42.108(c); 35 U.S.C. § 314(a).
`
`As explained above, the totality of the record prior to the institution
`
`decision, and in particular, the Patent Owner’s citation and discussion of the
`
`algorithm for “acceleration based motion pattern” not considered by the Board
`
`when considering whether the 797 Patent, discloses sufficient structure for the
`
`“programmed calculating means” limitation, and provides sufficient explanation
`
`11
`
`
`
`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`about the structure and operation of the algorithm performed by the “programmed
`
`calculating means” of Claims 1 and 11.
`
`D.
`
`Fig. 5 and the Accompanying Description do Provide Adequate
`Structure for the “Programmed Calculating Means” Limitation
`
`The algorithm in Figure 5 and 4:15–39 discloses adequate structure for
`
`“amending motion, ‘effect motion,’ and taking appropriate action” for the
`
`limitation “term “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.” Decision at 13; Petition
`
`at 26-27.
`
`The cited Fig. 5 and the accompanying text 4:15–39 provides the following
`
`algorithmic disclosures with respect to applying acceleration-based motion patterns
`
`in an exemplary maze game:
`
`• If inclination is zero, do not amend the motion of the device on the
`screen (Fig.5, transition from Block 104 to Block 108, Col. 4:21-23.)
`• If inclination is steady and non-zero, apply a uniform motion. (Fig. 5,
`Block 106, Col. 4:23-27.)
`• Motion in the maze game is pseudo gravitational, and the motion
`depends on the actual inclination. (Col. 4:15-21, 4:24-25). The
`Petition explains that movement of a ball in a maze game in response
`to the force of gravity is an intuitive result supported by basic physics
`calculations such as F=M*A. Petition at p. 8 (citing Parulski Decl.
`Ex. 1003 ¶¶43-48).
`
`12
`
`
`
`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`Petitioner requests reconsideration and rehearing because sufficient structure exists
`
`in Fig. 5 and 4:15–39.
`
`IV. CONCLUSION
`In view of the foregoing, Petitioner respectfully requests that an inter partes
`
`review be instituted for claims 1, 4, 6, 8-9, and 11 of the 797 Patent under Grounds
`
`1-3.
`
`Dated: September 18, 2017
`
`
`
`
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`Respectfully submitted,
`
` /Kevin Patariu/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Kevin Patariu, Reg. No. 63,210
`John Schnurer, Reg. No. 52,196
`
`Attorneys for Petitioners
`
`
`
`
`
`13
`
`
`
`PTAB Case No. IPR2017-00856, Patent No. 5,910,797
`Petitioner's Request for Rehearing
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing
`
`
`
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d)
`
`was served in its entirety this 18th day of September 2017 by electronic mail as
`
`agreed upon by the parties on the Patent Owner via its attorneys of record:
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`Justin J. Oliver (Reg. No. 44,986)
`Daniel S. Glueck (Reg. No. 37,838)
`PhilipsIPR@fchs.com
`
`
`Dated: September 18, 2017
`
`
`
`
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`
`Respectfully submitted,
`
` /Kevin Patariu/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Kevin Patariu, Reg. No. 63,210
`John Schnurer, Reg. No. 52,196
`
`Attorneys for Petitioners
`
`
`1
`
`
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