Trials@uspto.gov
`571-272-7822
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`Paper 9
` Entered: October 19, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`IPR2017-00856
`Patent 5,910,797
`
`I. INTRODUCTION
`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,
`of U.S. Patent No. 5,910,797 (Ex. 1001, “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.”). On August 18, 2017, we
`denied institution of inter partes review. Paper 7 (“Decision” or “Dec.”).
`Petitioner filed a Request for Rehearing (Paper 8, “Req. Reh’g”) of our
`Decision.
`
`II. STANDARD OF REVIEW
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may arise if the decision is based on an erroneous interpretation of
`law, if a factual finding is not supported by substantial evidence, or if an
`unreasonable judgment is made in weighing relevant factors. Star Fruits
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the decision
`should be modified is on Petitioner, the party challenging the decision. See
`37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify
`all matters the party believes the Board misapprehended or overlooked, and
`the place where each matter was previously addressed.” Id.
`II. ANALYSIS
`Background of Petition, Preliminary Response, and Decision
`For the phrase “programmed calculating means for under control of a
`screen motion sensed by said sensing means imparting an acceleration based
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`IPR2017-00856
`Patent 5,910,797
`motion pattern to a predetermined selection among said objects,” recited in
`claim 1, Petitioner offered the following explicit construction:
`The proposed function for this means-plus-function term
`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.” Ex. 1001 4:48-51; Parulski Decl.
`¶¶99-100.
`The descriptions in the 797 Patent that may recite structure
`are as follows. Parulski Decl. ¶101. “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 20 comprises a housing 20, data
`microprocessor 22, display screen 24 . . .” Ex. 1001 2:42-44, Fig.
`1, Ref. 22. “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
`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. 26–27. Patent Owner offered the following explicit claim construction
`for “an acceleration based motion pattern”:
`“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.”
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`IPR2017-00856
`Patent 5,910,797
`Prelim. Resp. 13. In the Decision, we stated:
`[W]e 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. 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.
`Dec. 10–11. We further explained:
`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.”
`Dec. 12.
`
`Request for Rehearing
`From the outset, Petitioner disagrees with the statement in our
`Decision that “Patent Owner does not dispute Petitioner’s claim
`constructions for ‘data processing means’ and ‘programmed calculation
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`IPR2017-00856
`Patent 5,910,797
`means.’” See Req. Reh’g 3 (citing Dec. 10, Prelim. Resp. 12–14).
`Petitioner contends that, although the Decision notes that Patent Owner
`provides an explicit claim construction for “an acceleration based motion
`pattern,” the Decision overlooks that the term is a portion of the
`“programmed calculating means,” recited in claim 1. See id. Petitioner
`further contends, “Patent Owner noted that its construction of ‘an
`acceleration based motion pattern’ differs from Petitioner and provides more
`detail and explanation.” Id. at 4 (citing Prelim. Resp. 10, 13). Petitioner
`contends, on this basis, that Patent Owner’s explanation of the construction
`for “an acceleration based motion pattern” and the cited specification in
`support of its construction are relevant to the construction of the
`“programmed calculating means” encompassing the “acceleration based
`motion pattern” limitation. See id. at 4–5.
`We are not persuaded that we overlooked any arguments and evidence
`in rendering our Decision. Specifically, Petitioner does not direct us to any
`Patent Owner arguments explicitly disputing Petitioner’s claim
`constructions. See Req. Reh’g 3 (citing Prelim. Resp. 12–14). Similarly,
`Petitioner does not direct us to any Patent Owner arguments “not[ing] that
`its construction of ‘an acceleration based motion pattern’ differs from
`Petitioner.” Id. at 4. In support of the latter argument, Petitioner cites pages
`10 and 13 of the Preliminary Response. At page 10 of the Preliminary
`Response, in a section entitled “The patent and its claims,” summarizing the
`’797 Patent disclosure and claims, Patent Owner asserts:
`The
`term “acceleration based motion pattern,” as
`discussed in more detail below, is properly construed to mean a
`pattern of motion that reflects acceleration. Thus, for example,
`where a displayed object’s position is calculated such that it
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`IPR2017-00856
`Patent 5,910,797
`moves in a single direction at a constant speed, its motion pattern
`does not reflect acceleration, and thus cannot be said to be
`acceleration based. Likewise, not every displayed object that is
`first stationary and then begins moving (or is moving and then
`stops moving) exhibits an acceleration based motion pattern. If
`the calculation or algorithm that brings about the object’s motion
`does not reflect acceleration such that the velocity varies over
`time, then its motion is not an acceleration based motion pattern.
`Prelim. Resp. 10. Page 13 of the Preliminary Response provides the explicit
`claim construction for “an acceleration based motion pattern,” reproduced
`above in the Background section.
`As can be appreciated from the aforementioned reproduced portions
`of the Preliminary Response, Petitioner mischaracterizes Patent Owner’s
`Preliminary Response arguments. The only disputes and differences noted
`are those raised by Petitioner in its Request for Rehearing. Patent Owner’s
`proposed construction for “an acceleration based motion pattern” merely
`rearranges the construct of the words to “a pattern of motion which reflects
`acceleration.” Prelim. Resp. 13. We recognize that “an acceleration based
`motion pattern” is recited within the “programmed calculating means”
`limitation. Additional inquiry, however, was not warranted for the
`interrelationship between Patent Owner’s explicit construction for
`“acceleration based motion pattern” and Petitioner’s explicit construction for
`the “programmed calculating means” because Patent Owner did not dispute
`Petitioner’s claim construction and Patent Owner’s explicit claim
`construction merely rearranged the construct of the words to “a pattern of
`motion which reflects acceleration.” Id.
`
`Building on its previous arguments, Petitioner asserts, “the Board’s
`Decision overlooked citations to the specification made in the Patent Owner
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`IPR2017-00856
`Patent 5,910,797
`Preliminary Response and by the Petitioner, and the further explanation of
`these citations provided in the Patent Owner Preliminary Response.” Req.
`Reh’g 7. Petitioner reproduces Patent Owner’s explicit claim construction
`for “an acceleration motion pattern” and contends, “Patent Owner provided a
`further explanation of the algorithm in the cited text of the 797 Patent (Ex.
`1001, col. 3, line 63 through col. 4, line 14) in the . . . Preliminary
`Response.” Id. at 4–5 (reproducing portions of Prelim. Resp. 6–7, 13).
`Petitioner asserts, “Patent Owner identified this specification section (Ex.
`1001, col. 3, line 63 through col. 4, line 14, which in turn references Fig. 4)
`as relevant to the construction of the term ‘an acceleration based motion
`pattern.’” Id. at 6. Petitioner contends that the reproduced text from the
`’797 Patent was also identified by Petitioner in the explanation of the
`claimed invention. See id. at 5 (citing Pet. 15–16). Petitioner contends,
`[b]ecause “an 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 selection
`among said objects,” the identified specification (Ex. 1001 col.
`3, line 63 through col. 4, line 14, Fig. 4) identified by both the
`Patent Owner and Petitioner is relevant to the construction and
`structure of the “programmed calculating means” term and
`should have been considered by the Board when determining
`that sufficient structure was identified.
`Req. Reh’g. 6.
`We are not persuaded that we overlooked arguments and evidence in
`rendering our Decision. Patent Owner’s explicit claim construction for “an
`acceleration based motion pattern” does not address or explain the citation to
`’797 Patent disclosure at column 3, line 63 through column 4, line 14, nor
`does the explicit claim construction reference any other explanation in the
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`IPR2017-00856
`Patent 5,910,797
`Preliminary Response. See Prelim. Resp. 13. Petitioner’s arguments are
`premised on the fact that column 3, line 63 through column 4, line 14 of the
`’797 Patent was cited by Patent Owner to support its explicit claim
`construction for “an acceleration based motion pattern” and also cited to
`support its summary of the entire ’797 Patent disclosure in the Preliminary
`Response section entitled “The patent and its claims.” See Prelim. Resp. 6–
`7, 13. The only tie between Patent Owner’s explicit claim construction and
`Patent Owner’s summary of the ’797 Patent disclosure is the connection
`drawn by Petitioner––that both cite to the same portion of the ’797 Patent
`disclosure for support. See id. Likewise, the only tie between Patent
`Owner’s explicit claim construction and Petitioner’s “Summary of the 797
`Patent” is the connection drawn by Petitioner – that both cite to the same
`portion of the ’797 Patent disclosure for support. See id. at 6–7, 13; Pet. 15–
`16.
`
`Building still further on its previous arguments, Petitioner requests
`“the full record and all cited references be considered to determine whether
`sufficient structure is provided by combination of Patent Owner and
`Petitioner patent specification citations and explanation of these sections for
`the ‘programmed calculating means’ limitation.” Req. Reh’g 7. Petitioner
`contends, for the first time, that the ’797 Patent disclosures directed to
`Figures 4 and 5, when considered together,
`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
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`IPR2017-00856
`Patent 5,910,797
`equation F=M*A) described in the specification at Col. 4:4-6,
`that provides sufficient structure for “imparting an acceleration
`based motion pattern to a predetermined selection among said
`objects.
`Req. Reh’g. 9; see id. at 7–9 (providing additional detailed arguments
`addressing the ’797 Patent disclosures directed to Figures 4 and 5).
`
`Petitioner’s arguments are not persuasive because Petitioner does not
`identify where these arguments were raised previously. See Req. Reh’g 1–3;
`37 C.F.R. § 42.71(d). We cannot overlook arguments not made on the
`record before us. Petitioner presents these arguments addressing the
`combination of the ’797 Patent disclosures directed to Figures 4 and 5 for
`the first time in the Request for Rehearing. Compare Req. Reh’g 7–10, with
`Pet. 6–7, 15–16, and Prelim. Resp. 6.
`
`Lastly, Petitioner contends,
`“[i]f 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).
`Req. Reh’g 11; see Req. Reh’g 10–11 (repeating earlier arguments).
`We do not dispute that a preliminary response, when filed, may be
`considered in rendering a decision on institution. Petitioner’s arguments,
`however, suffer the same deficiencies as Petitioner’s earlier arguments. In
`essence, Petitioner asks the Board to: (1) perceive a non-existent dispute
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`IPR2017-00856
`Patent 5,910,797
`with Petitioner’s claim construction; (2) correlate certain portions of Patent
`Owner’s and Petitioner’s summaries of the entire ’797 Patent disclosure with
`Patent Owner’s explicit claim construction based only on the common
`citation to the ’797 Patent disclosure; and (3) based thereupon, anticipate
`arguments that Petitioner could have made based on the common citation
`combined with other citations to the ’797 Patent disclosure originally relied
`upon by Petitioner. The foregoing requests by Petitioner do not provide a
`proper basis for granting a request for rehearing.
`For all of these reasons, we are not persuaded that we overlooked
`arguments and evidence presented by either party in rendering our Decision.
`
`III. DECISION ON REHEARING
`Patent Owner’s request for rehearing is denied.
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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
`
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