`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.
`Petitioner
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`v.
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`KONINKLIJKE PHILIPS ELECTRONICS N.V.
`Patent Owner.
`____________
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`Case IPR2017-00857
`Reissued Patent RE44006 E
`____________
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`Record of Oral Hearing
`Held: June 1, 2018
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`Before KRISTEN L. DROESCH, BARBARA A. PARVIS and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
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`Case IPR2017-00857
`Reissued Patent RE44006
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`KEVIN PATARIU, ESQUIRE
`RYAN B. HAWKINS, ESQUIRE
`Perkins Coie.
`11988 El Camino Real
`Suite 350
`San Diego, CA 92130-2594
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`ON BEHALF OF THE PATENT OWNER:
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`The above-entitled matter came on for hearing on Friday, June 1,
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`2018, commencing at 8:59 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`DANIEL S. GLUECK, ESQUIRE
`JUSTIN J. OLIVER, ESQUIRE
`Fitzpatrick, Cella, Harper & Scinto
`975 F Street N.W.
`Washington, D.C. 20004-1462
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`Case IPR2017-00857
`Reissued Patent RE44006
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`P R O C E E D I N G S
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` JUDGE DROESCH: Good morning. We are on the record. We are
`here for inter partes review number IPR2017-00857 between petitioner HTC
`and patent owner Philips Electronics. The panel before you is Judge
`Droesch, Judge Parvis and Judge Wormmeester. Per our order, each party is
`allotted 30 total minutes. Because petitioner has the burden of persuasion,
`petitioner will present its arguments first. Petitioner may reserve some of his
`time for rebuttal. And following petitioner's arguments patent owner will
`present its arguments. Petitioner when you are ready to begin, please state
`your name for the record and introduce all of those in attendance for your
`party.
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`MR. PATARIU: Thank you, Your Honor. My name is Kevin
`Patariu. I am here with the law firm Perkins Coie, LLP on behalf of
`petitioners, HTC Corporation and HTC America, Inc. With me is my co-
`counsel, Ryan Hawkins. Mr. Hawkins will be presenting the argument on
`behalf of petitioner.
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`JUDGE DROESCH: Thank you.
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`MR. HAWKINS: Your Honors, I have paper copies of the
`demonstratives if that would be of aid?
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`JUDGE DROESCH: Oh, we already have copies that were sent by
`email. Thank you.
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`MR. HAWKINS: All right. With that then I will begin. Good
`morning, Your Honors. Once again my name is Ryan Hawkins on behalf of
`petitioners.
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`Turning to Slide 2, today we are here to talk about United States
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`reissued patent 44006. More specifically as shown on Slide 4, we are going
`to be discussing just Claim 1 of the 006 patent as only Claim 1 of the 006, is
`asserted in this petition.
`Turning to Slide 5, there is a little bit of framing. At this point in the
`proceedings, petitioner has put forth evidence showing that the prior art at
`issue discloses all of the limitations of Claim 1 of the 006 patent. More
`specifically that the disclosure of the limitations under a plain and ordinary
`meaning of those deterrents.
`In response, as shown on claim or on Slide 6, patent owner states that
`one limitation specifically the menu comprising a plurality of menu options
`limitation requires a narrowing construction. They do not contest any of the
`limitations of Claim 1 and they only contest that the prior art does not
`disclose the menu comprising a plurality of menu options limitations under
`their construction. With that framing out of the way I would like to go
`ahead and just move to the claim construction issues here.
` As shown on Slide 8, patent owner contends that the term menu
`comprising a plurality of menu options should be construed as a list of
`displayed options corresponding to available machine functions from which
`lists the user can select machine function. Now, at the outset it is important
`to note that patent owner’s construction is derived entirely from extrinsic
`evidence. Specifically in this case, patent owner’s construction is derived
`from four dictionary definitions.
`As a result of this, patent owner’s proposed construction includes
`several limitations that directly contradict the 006 patent. There is three of
`those limitations that I would like to talk about today.
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`JUDGE DROESCH: Can I interrupt you before you get into patent
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`owner’s proposed construction? What is petitioner’s proposed construction
`for the plain and ordinary meaning for these menu options or menu
`comprising options?
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`MR. HAWKINS: So patent, I'm sorry, petitioner is not proposing a
`construction. Petitioner is saying that it should be given its plain and
`ordinary meaning to a person of ordinary skill in the art at the time of the
`invention and so their patent owner or I'm sorry petitioner is not proposing a
`construction.
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`JUDGE DROESCH: Okay.
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`JUDGE PARVIS: Is there a problem with patent owner’s proposed
`construction?
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`MR. HAWKINS: Yes, there is, Your Honor, and I'm, I intend to walk
`through those issues.
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`JUDGE PARVIS: Well, can we accept some of it?
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`MR. HAWKINS: I don’t believe so. Is there a certain portion of it
`that you’re considering?
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`JUDGE PARVIS: Well, is the dispute about just the selection or is
`there -- is it just that -- is it okay -- is the part, a list of display options
`corresponding to the available machine functions. Is that okay and it's just
`this issue with the selection? Or is there?
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`MR. HAWKINS: So there are actually three issues that we believe
`are improper with patent owner’s proposed construction. The limitation of
`selection that you just mentioned. The limitation limiting the construction to
`list type menus and then finally the limitation regarding machine functions.
`So we believe all three of those limitations are improper.
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`JUDGE PARVIS: But --
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`MR. HAWKINS: Oh sorry.
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`JUDGE PARVIS: But petitioner hasn’t proposed its own
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`construction?
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`MR. HAWKINS: That’s correct.
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`JUDGE PARVIS: So why is this not a plain and ordinary -- if the
`plain and ordinary meaning is evident why is it that -- why is it that
`petitioner can't say what it is?
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`MR. HAWKINS: So, Your Honor, I believe under Philips that the
`standard is that terms are supposed to be given their plain and ordinary
`meaning to a person of ordinary skill in the art at the time considering their
`knowledge and the prior art known to them. The standard is not that every
`term in a patent has to be given a further definition or construction. So in
`this instance, we are -- we don’t believe that the term menu comprising a
`plurality of menu options requires additional definition.
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`JUDGE PARVIS: Thank you.
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`MR. HAWKINS: All right. So back to patent owner’s proposed
`construction. The first issue that you guys have mentioned is the limitation
`regarding selectability. Patent owner has repeatedly stated that their
`construction means that all menu options must be selectable or as shown
`here on Slide 10, items that cannot be selected are not options.
`There are two issues with the selectability that the Board has already
`addressed in the institution decision that I would like to discuss again. First,
`the specification does discuss selectability as shown here on Slide 11.
`During operation of the menu, the options rotate with the selectable option
`appearing highlighted at the bottom front.
`So even though the specification does discuss selectability and this is
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`the only embodiment that it does discuss there is no reason to import this
`limitation into Claim 1 of the 006 patent. This point is emphasized by the
`fact that dependent Claim 23 does address selectability and does specially
`have a limitation addressing the selectability. Accordingly because of this,
`the presumption of claim differentiation does apply. The presumption that
`selectability should not be imported into Claim 1.
`As the Board noted in its institution decision the doctrine of claim
`differentiation is at its strongest when the limitation that is sought to be read
`into an independent claim already appears in a dependent claim citing the
`Federal Circuit’s Leibel-Flarsheim case.
`Despite this presumption and despite this being pointed out in the
`institution decision, patent owner has done little to overcome the
`presumption. In fact, patent owner’s only response is that Claim 1 could be
`broader, that it could encompass cases in which all options are selectable
`regardless of whether they are in the selection position or not. However,
`patent owner doesn’t cite to anything in the intrinsic record for this opinion
`and nor could they. There is no other embodiment like this disclosed in the
`specification.
`The second issue with this selectability limitation is that the patent
`discloses that only one meu option is selectable whereas the other menu
`options are not selectable. Conversely, patent owner contends that all menu
`options must be selectable, that if an option is not selectable it is not a menu
`option and therefore not part of the menu.
`We know that this contradicts both the specification and the claims
`and we also know as shown on Slide 14 there were several prior art systems
`at the time that included both selectable and non-selectable menu or menus
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`with both non selectable and selectable items. In these images from both
`Apple and Microsoft operating systems and other applications, you can see
`that the grayed out menu options are not selectable. It was well known at
`the time to have these non-selectable items and it is still well known today.
`This is still common practice.
`As a result of the evidence in both the patent and the claims including
`the claim differentiation argument, the Board in its institution decision chose
`not to adopt patent owner’s previously offered construction. But more
`importantly, they also stated that or I’m sorry you also stated that
`selectability should not be imported into Claim.
`In response, patent owner has provided kind of a construction of its
`construction or a further explanation of its construction. Patent owner now
`states patent owner’s construction does not require that each displayed
`option be immediately selectable and encompasses the case where some
`manipulation is required before the option is selected by the user. Now this
`after the fact statement about its construction is improper for several reasons.
`First of all, if this is what patent owner intended its construction to
`cover, they should have included this language in the construction itself
`instead of explaining it after the fact. There is nothing in patent owner’s
`proposed construction regarding not immediate selectability or immediate
`selectability or some manipulation for that matter.
`This is particularly important here because petitioner’s expert, Dr.
`Wobbrock, stated that a person of ordinary skill in the art reviewing patent
`owner’s proposed construction would interpret it to mean exactly what it
`says. That the list of displayed options, plural, corresponding to available
`machine functions from which list the user can select that all of the options
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`must be available for selection.
`Well, patent owner chose not to include this additional language
`regarding immediate selectability or manipulation in their construction. It is
`likely that he didn’t because doing so would have rendered the construction
`indefinite.
`In a separate opinion, Dr. Wobbrock also stated that a person of
`ordinary skill in the art would have no way of knowing what fell within the
`construction and did not if it was defined by what some manipulation was
`allowed. Accordingly for all these users, we believe that the selectability
`limitation is improper in patent owner’s proposed construction.
`The second limitation I want to discuss for patent owner’s proposed
`construction is the limitation that states that patent owner’s proposed
`construction is limited to lists. This is particularly important here because
`the 006 patent itself is not a list type menu. Throughout these proceedings,
`patent owner and petitioner have repeatedly referred to the prior art as list
`type menus but have stated that the inventors of the 006 were trying to
`overcome the problems with these list type or drop down menu styles. And
`they have -- and patent owner has distinguished the 006 from these prior art
`menus.
`As you can see on Slide 19, Dr. Balakrishnan, patent owner’s expert,
`referred to the prior art as a stationary list. In patent owner’s response they
`referred to the prior art as a straight list. So once patent owner began talking
`about the 006 as you can see in Slide 21, it distinguished. It said the 006 has
`an elliptical shape as opposed to a linear raise of the prior art.
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`JUDGE DROESCH: So are you saying that a list must necessarily be
`linear or a series of rows?
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`MR. HAWKINS: So it's not necessarily that it has to be linear per say
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`or a series of rows, it's just that there -- that the 006 itself is not a, would not
`be described as a list. A person of ordinary skill in the art would not
`describe that as a list. There are also other for instance on Slide 23 there are
`also other types of menus that were well known at the time that would not be
`described as a list type menu.
`Again, the fact that patent owner has been distinguishing the fact that
`it is not a list -- that the 006 is not a list type menu or a linear menu. Further
`evidence is that this construction is improper.
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`JUDGE PARVIS: The, in the petition, the petitioner said that if any
`of the parties believed that the terms required construction they should have
`raised it in the district court litigation. Is that correct?
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`MR. HAWKINS: I believe that is correct, yes, that that was stated in
`our petitioner, yes.
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`JUDGE PARVIS: Has -- is -- has the term been construed now as of
`this time by any district court?
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`MR. HAWKINS: It is not. Neither party in the district court saw
`construction of this term or any other terms in the 006.
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`JUDGE PARVIS: But there are various different litigations involving
`the same patent, is that correct? Or is there just one?
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` MR. HAWKINS: As far as I know, is from HTC's perspective, there
`is only the one. I’ll let Mr. Oliver --
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`JUDGE PARVIS: So you don’t know that the term has ever been
`construed by a district court?
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`MR. HAWKINS: As far as I know. As far as I know it has not been.
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`JUDGE PARVIS: Thank you.
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`MR. HAWKINS: So just closing the loop here, we believe that
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`limiting, I mean, all of these, this construction was proposed by the patent
`owner obviously. All of the terms give the construction meaning and define
`the scope and the inclusion of lists has to mean something.
`Here we believe that it is improper because there are other types of
`menus as shown on Slide 23 as Dr. Balakrishnan, the patent owner’s expert,
`stated the 006 is a carousel menu. We also have radial menus. We have
`grid style menus and then we have menus where objects where the menu
`options are indicated as items on the table. None of these would be
`considered list type menus.
`Finally, moving on to the final limitation that we would like to discuss
`is machine functions. Again patent owner's construction is derived entirely
`from four dictionary definitions. And as the Board noted in its institution
`decision, the 006 is entirely silent with respect to machine functions or the
`concept of machine functions. Even though patent owner relies on four
`dictionary definitions for its construction, three of the four do not mention
`machine functions. In fact, only one does and that or, I'm sorry, that
`dictionary is from more than 13 years before the filing of the application that
`led to the 006.
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`JUDGE DROESCH: What is a machine function? How would
`petitioner define that?
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`MR. HAWKINS: So Dr. Wobbrock stated that it was a little bit
`unclear as to what that might be. He offered that there were two types of
`definitions that might be applied to it. One in the narrow sense where you
`might think of the types of commands you see in a drop down menu. For
`instance, new, open, print, save. Conversely if machine functions has been
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`in the more broader sense of kind of any sort of operation that is carried out
`by a computer the functions of the machine it could be that as well.
`In the first sense that it would be too narrow, the inclusion of the term
`machine functions, because it would therefore exclude menu options that
`would be like values such as like the number five or the color yellow. But in
`its broadest sense, if it just means anything the computer does there would
`be no reason to include that in the definition for menu because every
`computer interaction revolves -- involves machine functions of that nature.
`So I believe I'm coming up to 15 minutes which is where I would like
`to stop and reserve my rebuttal time. But so nonetheless, we made it
`through the claim construction issue or at least what I wanted to discuss on
`claim construction. For all these reasons we believe that patent owner’s
`proposed construction is improper.
`Nonetheless, just briefly even if the Board were to adopt patent
`owner’s claimed construction it wouldn’t change the result as O’Neill still
`discloses all the limitations even under patent owner’s proposed
`construction. Slide 28 we have a chart that quickly summarizes where those
`limitations are met. Accordingly, we believe that it doesn’t matter whether
`or not the Board adopts it. Of course we think it is incorrect but nonetheless
`the result will be the same. So with that I will reserve the rest of my time.
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`JUDGE DROESCH: All right. Counselor for patent owner, when
`you are ready.
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`MR. OLIVER: Good morning. May it please the Board? I'm Justin
`Oliver of Fitzpatrick Cella on behalf of the patent owner Philips. With me at
`counsel table is Dan Glueck, also of Fitzpatrick Cella.
`The primary reference, O’Neill, is essentially a three dimensional
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`PDF through which a user can navigate. O’Neill’s described design avoids
`repetitive clicking or selecting of the actual items trying to avoid what it
`referred to as the cards of the prior art. Instead it controls navigation
`through this three dimensional space using what are called dolly and pan
`buttons. Basically a three dimensional type of scrolling system in which the
`information surfaces simply have plain text which are not applications or
`selectable or options the user could choose but just like plain text with PDF
`simply items that a user can view.
`Petitioners essentially ignore this disclosure of O’Neill and instead
`incorrectly argue that the mastheads or other information services of O’Neill
`are menu options. Now we believe this fails and we believe it fails primarily
`because of the claim construction which we will discuss.
`First, an understanding of the accepted terminology menu options
`from the relevant time and I would point out the relevant time here is 1996
`before we had these sort of common understandings we have now of smart
`phone and different operating systems and the various types of graphic user
`interfaces.
`Second, I would note that the proposed combinations and
`modifications of O’Neill call for going against what O’Neill is trying to do
`at its very core. Specifically trying to overcome this idea where items are
`selected or clicked upon as in the prior art.
`Moreover, I would note the petitioners fail to provide a proper
`analysis as to how the combination would be provided. There is a
`conclusory analysis here but even when we looked at it we don’t see any
`discussion of how the combination would be made. And as we will discuss
`here today even when we asked petitioners’ own declarant, Dr. Wobbrock,
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`he acknowledged that he did not perform such analysis and was not offering
`any specific combination. For those reasons, we believe that petitioner's
`argument fail.
`With that being said, I would like to provide a short background on
`really what this invention is all about and I would direct the panel’s attention
`to Slide 2 of our demonstratives.
`At the time of the invention, typical menus were what were called pull
`down menus or drop down menus. You would, and these are still used today
`in word processing documents, emails, so on and so forth. Even web
`browsers. Someone would click on the top tab and the pull down menu
`would drop down. That menu would be static meaning the menu option
`would remain in their relative positions on the screen but what would change
`is what was highlighted for selection. The user would basically move the
`cursor so as to highlight different options. When an option that the user
`wanted to select was highlighted the user could either, you know, click using
`a mouse button or otherwise enter to choose that particular option.
`That was what menu options were at the time, the common
`understanding. They were a list of choices or selections that a user could
`make. The manner of selection was highlighting and clicking but really
`what they all were options for choosing by the user.
`What the present invention did to provide can be seen on Slide 4 of
`our demonstratives. And some specifically what the present invention
`achieved was a new graphical interface in which more options could be
`provided without providing a cluttered display. And this was achieved in a
`number of ways.
`First and foremost, instead of having the traditional menu where the
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`menu options remain static and what was highlighted for selection changed
`by moving the cursor, the highlighting or selection position stayed static and
`the menu options are what moved. And not only did they move relative to
`the selection position but they moved or rotated off the screen and changed
`perspective as doing so. The reason for this is it allowed more options to be
`provided.
`Specifically you could have more options added without cluttering the
`screen because the additional options would simply rotate off. By changing
`perspective you could make some smaller, some larger so that again you did
`not clutter the screen. That is what the invention was about. It was about
`providing this new and improved graphical user interfaces so as to allow for
`the selection of menu options.
`Nothing changed in the invention with respect to what menu options
`are. They are still things that a user selects. They must be differentiated in
`some way from just plain text of a word processing document, of a PDF.
`And in that regard as we discuss claim constructing you will see even the
`petitioners’ own declarant acknowledged that that is the case.
`With that I would like to turn to claim construction. And I know this
`is a primary portion of the case. I would like to start off by just noting one
`of the statements made by petitioner's declarant in this regard. Now
`petitioner has not offered any claim construction and it quibbles with
`specific terminology or parts of the definition. But I think the idea that I
`would like to leave the panel with here today is the specific terminology of
`the claim construction or the construction offered is not as critical as what
`we must consider here today and that is what is the difference between plain
`text and a menu option as would have been understood by a person of
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`ordinary skill at the time?
`Even Dr. Wobbrock --
`JUDGE PARVIS: I have a quick question. Has this term been
`
`construed by any district court?
`
`MR. OLIVER: Not that I'm aware of, Your Honor.
`
`JUDGE PARVIS: Has any party offered a construction for it in a
`district court?
`
`MR. OLIVER: In the district court?
`
`JUDGE PARVIS: Yes.
`
`MR. OLIVER: I don’t believe. There was a number of patents at
`issue and some patents were not construed at all. Some patents only certain
`terms were construed. I'm not positive but I don’t believe this one was
`construed by either party.
`
`JUDGE PARVIS: So no party proposed a construction in the district
`court proceedings?
`
`MR. OLIVER: Not that I'm aware of, Your Honor, but I have not -- I
`haven’t not looked at that in a while so that’s just my recollection.
`
`JUDGE PARVIS: Thank you.
`
`MR. OLIVER: To start off the claim construction discussion, I would
`direct the Board’s attention to Slide 6 but I would like to note some
`testimony from Dr. Wobbrock in his cross examination exhibit 2007 at page
`76. When asked about menu options and selectability, Dr. Wobbrock
`offered but of course menu options being selectable at certain times is an
`important aspect of what it means to be a menu option. This is essentially
`what the patent owners are arguing.
`The petitioners are quibbling over specific language and saying we
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`don’t like the construction and we don’t have to offer construction. But it is
`ultimately the petitioner's burden. So we do have to determine here even
`though the petitioner does not want to determine here, we have to make a
`determination of what it means to be a menu option.
`We have provided a construction as we can see the petitioner has
`addressed it. It is provided on Slide 55. We believe this is not only
`supported by intrinsic evidence but evidence of what a person of ordinary
`skill in the art would have understood at the time and by the own testimony
`of Dr. Wobbrock as well not only in cross examination but in his actual
`declaration.
`Now in the specification for instance at column 1, line 61 through
`column 2, line 4, the patent states that Figure 2 depicts a menu according to
`the invention and goes on to state that there are menu options. So there are a
`number of options. Options by their very definition are selectable and as we
`can see from Figure 2 that the options include teletext and games and
`movies. These are things that a user selects. Now of course they select them
`by putting them in selection positon and highlighting because that is how
`menu options at the time operated where a pull down menu otherwise.
`And then I would also note and even column 2 line 36 says once an
`option is selected this is the language that is intrinsic evidence. I know the
`petitioner said there is no intrinsic evidence supporting this construction but
`I would state for the record that by the very fact that the specification talks
`about once an option is selected, it indicates that the options are selectable
`regardless of whether they're immediately selectable or have to be in the
`right position. These are options for selection.
`I would also note Dr. Wobbrock's own declaration supports this. If
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`we were to look at Dr. Wobbrock's declaration exhibit 1005, paragraphs 54
`through 67. As stated in our response, if one were to go through those
`paragraphs, one by one, 54 through 67, almost every paragraph mentions
`some variation of the term select or selectable. Even Dr. Wobbrock's
`explanation of menu options relied on heavily the idea of a selection. He
`also offered in paragraph 54 of his declaration of declaration exhibit 1005
`that he considered menu options to be essentially widgets and on that
`paragraph or in that paragraph widgets are stated to allow the user to choose
`one or more from a set of options. Both sides' declarants rely on the
`selection of options as being sort of a keystone of what a menu option is.
`
`JUDGE PARVIS: In Figure 2 --
`
`JUDGE DROESCH: Oh sorry, go ahead.
`
`JUDGE PARVIS: Okay. In Figure 2, is there only actually just one
`option that is selectable?
`
`MR. OLIVER: All the, it’s just like a pull down meu. All the options
`are selectable but in order that the manner of selecting just like a pull down
`menu is you have to highlight the one that you are selecting. So that the user
`can actually indicate this is the one I'm selecting. So on a pull down menu
`you would move the cursor and highlight one of let's say there are five
`options in a, you know, an edit menu. They would all be selectable. You
`would highlight the one that you want to select in order to perform the
`selection.
`Here the same thing holds true. These are all selectable but in order to
`actually perform the selection, you have to highlight the one you’re selecting
`so the computer knows or the TV knows which selection is being chosen.
`So in that regard they are selectable options. The manner of selection is
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`putting them in the selection position. Does that answer your question, Your
`Honor?
`
`JUDGE PARVIS: Yes. Thank you.
`
`MR. OLIVER: And I think that goes to the claim differentiation
`argument with respect to Claim 23 and I would direct Your Honors’
`attention the that language at Slide 19. It states wherein the menu comprises
`a selection position and one of the options is selectable when that option
`rotates to the selection position. Now patent owner's position is that is not
`saying that a menu option is selectable. That’s the understanding of menu
`options. What is distinguishing, being distinguished here is basically
`distinguishing how the invention works from the prior art meaning in the
`prior art it is the highlighting that moved or the selection cursor that moved
`relative to the stationary options.
`What Claim 23 is saying is we are doing this differently. We are
`moving the options relative to the selection position or highlighting. So it is
`not just generally claiming selection but the manner of selection and I think
`that is the key distinction that we are trying to make here.
`
`
`JUDGE WORMMEESTER: Counsel, petitioner mentioned some
`menus have grayed out options that are not selectable so would that fall
`within your claim construction? PO’s construction of menu?
`
`MR. OLIVER: Certainly. I think that is a little bit of a red herring.
`Even grayed out menu options if you were to look at even the, I think it's the
`Microsoft dictionary definition says those are just not valid at that particular
`time. So even grayed out menu option
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