Trials@uspto.gov
`571-272-7822
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`Paper 33
` Entered: August 24, 2018
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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.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-00857
`Reissued Patent RE44,006 E
`____________
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
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`571-272-7822
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`
`Paper 33
` Entered: August 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-00857
`Reissued Patent RE44,006 E
`____________
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
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`IPR2017-00857
`Reissued Patent RE44,006 E
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
`Petitioner has shown by a preponderance of the evidence that claim 1 (“the
`challenged claim”) of U.S. Reissued Patent No. RE44,006 E (Ex. 1001, “the
`’006 Reissued Patent”) is unpatentable.
`
`A. Procedural History
`HTC Corporation and HTC America, Inc. (“Petitioner”) filed a
`Petition (Paper 2, “Pet.”) for inter partes review of the challenged claim.
`Paper 2 (“Pet.”). Koninklijke Philips N.V. (“Patent Owner”) timely filed a
`Preliminary Response. Paper 6. Pursuant to 35 U.S.C. § 314, we instituted
`trial on September 6, 2017, as to the challenged claim of the ’006 Reissued
`Patent (Paper 7, “Institution Decision” or “Dec.”), and on May 2, 2018, we
`modified the Institution Decision to institute review of the challenged claim
`on all grounds presented in the Petition (Paper 23, “SAS Order”).
`Accordingly, this inter partes review includes the following challenges:
`(1) claim 1 as unpatentable under 35 U.S.C. § 103(a) over O’Neill1;
`(2) O’Neill and Robertson2; (3) O’Neill and Freeman3; and (4) Naughton4
`and O’Neill. See Dec. 5, SAS Order 2.
`Following institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 14, “PO Resp.”), to which Petitioner filed a Reply (Paper
`
`
`1 Ex. 1007, US Patent 5,621,906, issued Apr. 15, 1997 (“O’Neill”).
`2 Ex. 1009, US Patent 5,295,243, issued Mar. 15, 1994 (“Robertson”).
`3 Ex. 1010, US Patent 6,006,227, issued Dec. 21, 1999 (“Freeman”).
`4 Ex. 1008, US Patent 5,995,106, issued Nov. 30, 1999 (“Naughton”).
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`17, “Reply”). Petitioner relies on Declarations of Jacob O. Wobbrock (Ex.
`1005; Ex. 1016) to support its positions, and Patent Owner relies on a
`Declaration of Ravin Balakrishnan, Ph.D. (Ex. 2005). Patent Owner filed a
`Motion for Observations regarding the Testimony of Jacob O. Wobbrock
`(Paper 25), and Petitioner filed a Response (Paper 28). Oral argument was
`held on June 1, 2018. A transcript of the oral argument is included in the
`record. Paper 32 (“Tr.”).
`
`B. Related Matters
`The parties indicate the ’006 Reissued 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)
`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 ’006 Reissued Patent (Ex. 1001)
`The ’006 Reissued Patent is a reissue of U.S. Patent No. 6,211,921,
`which issued on April 3, 2001, from Application No. 08/772,080, filed
`December 20, 1996. See Ex. 1001, [64]. The ’006 Reissued Patent
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`discloses a user interface screen including rotating menu options. See id. at
`Abstract. Options are highlighted and therefore selectable as they rotate past
`a fixed selection position on the screen. See id.
`Figure 2 of the ’006 Reissued Patent is reproduced below:
`
`
`Figure 2 depicts a television screen displaying a menu. See Ex. 1001,
`1:61–62. The menu appears as a carousel that rotates on the screen and is
`displayed in a perspective that creates an apparent plane of rotation that is
`not parallel to the screen face. See id. at 1:61–66. Due to the apparent plane
`of rotation, a highlighted option appears to be in front and is easier to find.
`See id. at 1:66–2:1. Although “the menu is actually elliptical, the menu
`appears to be in a circle, because of the perspective.” Id. at 2:4–5. The
`center of the apparent circle is off center on the screen, so that at least one
`menu option can be rotated off the screen, and any number of menu options
`can be added to the menu without affecting the shape of the display. See id.
`at 2:16–22. “The menu options can be displayed in any fashion desired.
`They can, for instance, be boxes, as shown, or icons, or letters.” Id. at 2:31–
`32. To maintain perspective, the appearance of the menu options change
`during rotation, for example, the boxes of the menu change in size, shape,
`and apparent orientation during rotation. See id. at 2:8–11. “During
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`operation of the menu, the options rotate, with a selectable option appearing
`highlighted at the bottom front, as shown in Figure 2.” Id. at 2:33–35.
`D. The Challenged Claim
`Claim 1 is reproduced below (brackets indicate deletions and italics
`indicate additions to the claim in the ’006 Reissued Patent):
`An electronic device comprising:
`at least one display apparatus; and
`a controller arranged to cause the display apparatus to show a
`rotating elliptical menu comprising a plurality of menu
`options, wherein the menu is displayed with a perspective in
`which all of the menu options that are displayed [being
`displayed so as to] appear to lie substantially [upon] in an
`elliptical arrangement located on a single apparent plane
`disposed about a menu center, the menu center being
`displayed offset from a display center of the display
`apparatus, so that at least one menu option appears to be
`rotatable off an edge of the display apparatus at any one
`time; and,
`wherein a sense of perspective is maintained by changing the
`shape or size of the displayed menu options during rotation
`of the menu.
`Ex. 1001, 3:55–4:3.
`
`II. ANALYSIS
`A. Claim Construction
`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 ’006 Reissued Patent expired and
`is, therefore, subject to a district court-type claim construction. See Pet. 17–
`18; PO Resp. 8 (both citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
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`2012); Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc); Chi Mei Innolux v. SEL, IPR2012-0065, slip op. at 10 (PTAB April
`30, 2013)). Because the ’006 Reissued 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 at the time of the invention, in the context of the ’006
`Reissued Patent Specification. See generally Phillips, 415 F.3d at 1312–14.
`In Phillips, the court emphasized the importance of a patent’s
`specification as intrinsic evidence for construing claim terms. See 415 F.3d
`at 1315–17. “[T]he specification . . . is the single best guide to the meaning
`of a disputed claim term.” Id. at 1314 (quoting Vitrionics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Although claims
`are construed in the context of the patent, it is well settled that limitations
`from the specification are not to be read into the claims. See Commark
`Comm’cns Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed. Cir. 1998).
`Other claims of a patent can also provide enlightenment as to the meaning of
`a claim term. Phillips, 415 F.3d at 1314 (citing Vitrionics, 90 F.3d at 1582).
`“The presence of a dependent claim that adds a particular limitation gives
`rise to a presumption that the limitation in question is not present in the
`independent claim.” Id. at 1314–15 (citing Liebel–Flarsheim Co. v. Medrad,
`Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)). 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. See Liebel–
`Flarsheim, 358 F.3d at 910.
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`The court in Phillips stated that extrinsic evidence, such as dictionary
`definitions, may be useful, but is unlikely to result in a reliable interpretation
`of claim scope unless considered in the context of the intrinsic evidence.
`See Phillips, 415 F.3d at 1319.
`Menu Comprising a Plurality of Menu Options
`Claim 1 recites a “menu comprising a plurality of menu options.”
`Ex. 1001, 3:58–59. Petitioner does not offer an explicit claim construction
`for this claim phrase. See Pet. 17–18; Reply 1–14. Nonetheless, Petitioner
`asserts that claim 1 “does not require that the menu options must be
`‘selectable.’” Pet. 34 (citing Ex. 1005 ¶ 133). Petitioner contends that the
`’006 Reissued Patent specification discloses both selectable and un-
`selectable menu options. See id. at 31 (reproducing Ex. 1001, Fig. 2 with
`annotations; quoting Ex. 1001, Abstract, 2:33–35; citing Ex. 1001, claim 5,
`Ex. 1005 ¶ 133); see also Reply 3 (arguing same, citations omitted).
`Petitioner further points out that “the ‘selectable’ menu options and
`‘selection position’ are claimed in dependent claims 5 and 23, not
`independent claim 1.” Pet. 34 (quoting Ex. 1001, claim 5; citing Ex. 1001,
`claim 23); Reply 6 (quoting Ex. 1001, claims 5, 23). Petitioner contends that
`“under the doctrine of claim differentiation, the recited ‘menu options’ in
`[c]laim 1 must encompass any combination of selectable or non-selectable
`options.” Id. (citing AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234,
`1242 (Fed. Cir. 2003)); see also Reply 6 (quoting Phillips, 415 F.3d at
`1314–15).
`Patent Owner provides an explicit claim construction for “menu
`comprising a plurality of menu options” as follows: “a list of displayed
`options corresponding to available machine functions from which list the
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`user can select a machine function to be initiated.” PO Resp. 10 (citing Ex.
`2005 ¶¶ 54–55). Patent Owner further explains, “not everything displayed
`on a screen qualifies as such a menu. Instead, displayed options in the list
`must correspond to available machine functions and the user must be able to
`select from the list a machine function to be initiated.” Id. Patent Owner
`further asserts that “this 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.” Id. at 11
`(citing Ex. 2005 ¶ 58); see id. at 18 (arguing the same, citing Ex. 2005 ¶ 17).
`Patent Owner further contends that its construction is consistent with
`the ’006 Reissued Patent specification, numerous technical dictionaries from
`the relevant time, and the testimony of Petitioner’s declarant Dr. Wobbrock.
`See PO Resp. 11; see also Tr. 17:5–18:10 (arguing the same). Patent Owner
`contends that its construction is consistent with the ’006 Reissued Patent
`specification because Figure 2 depicts a menu that includes menu options
`such as teletext, games, movies, VCR, TV, etc., and at any given moment,
`only one option is highlighted and thus immediately selectable, but the other
`options can be rotated so as to become highlighted and thus immediately
`selectable. See PO Resp. 13–14 (citing Ex. 1001, Fig. 2, 1:61–2:43; Ex.
`2005 ¶¶ 61–62); see also Tr. 17:11–25 (addressing the ’006 Reissued Patent
`specification). Patent Owner contends that all options, whether highlighted
`at a given time or not, are still displayed options that can be selected by a
`user to initiate a machine function. See id. at 14 (citing Ex. 2005 ¶ 63). At
`oral argument, counsel for Patent Owner stated “[w]e also think an
`acceptable construction would include the grayed out [menu options]
`because in other circumstances they may be selectable.” Tr. 20:5–7.
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`Patent Owner further asserts that not everything on a screen qualifies
`as a menu option. See PO Resp. 10, 14. Patent Owner argues that the
`picture-in picture or “PIP” in Figure 2 cannot be selected by the user to
`initiate an available machine function. See id. at 14. Patent Owner asserts
`the display of text in Figure 6 of the ’006 Reissued Patent “is not a list of
`displayed options corresponding to available machine functions, wherein the
`user can select from the list a machine function to be selected, and cannot be
`chosen by a user to actuate an available machine function, and thus is not a
`‘menu comprising a plurality of menu options.’” Id. (citing Ex. 2005 ¶ 65)
`(emphasis added).
`Patent Owner further contends that its proposed construction is
`consistent with dictionary definitions for “menu” and “menu item” which
`refer to operations that a user can perform or actions to be initiated. See PO
`Resp. 15–18 (reproducing Ex. 2002, Figures labeled “Menu” and “Menu
`item”; citing Ex. 2001, Ex. 2002, Ex. 2003, Ex. 2005 ¶¶ 66–76). Patent
`Owner argues that the definitions make clear that “menu option” is broad
`enough to encompass both an option that is immediately selectable and one
`that requires manipulation before it is selected by a user. See id. at 18 (citing
`Ex. 2005 ¶ 77).
`Patent Owner asserts that Dr. Wobbrock agreed with Patent Owner’s
`view that the claimed “menu option” does not require immediate
`selectability, but also covers the case where a user has to perform some
`manipulation to select the option. See PO Resp. 12. In support of its
`assertion, Patent Owner contends that Dr. Wobbrock: (1) admitted during
`cross-examination that conventional pull-down menus generally included a
`display of available options, one of which would be selected using the
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`mouse when the cursor was positioned over that particular option; and
`(2) recognized that menu options are still menu options, even if they are not
`highlighted and thus not immediately selectable. See id. (citing Ex. 2007,
`57:1–58:16, 60:2–11, 75:15–76:13); see also Tr. 16:19–25 (discussing Dr.
`Wobbrock’s testimony, citing Ex. 2007, p. 76). Patent Owner also contends
`that Dr. “Wobbrock acknowledged during cross-examination that in the
`examples discussed in his declaration, the objects that he identified as menu
`options perform an action when selected by a user.” Id. at 13 (citing Ex.
`1005 ¶¶ 54–67; Ex. 2007, 112:7–10, 118:1–15). Patent Owner further
`asserts that Dr. Wobbrock described menu options as a type of widget while
`stating that such widgets allow the user to choose one or more options from
`a set of options. See PO Resp. 12 (citing Ex. 1005 ¶ 54; Ex. 2007, 52:3–18,
`104:25–105:22, 73:13–75:19, 97:11–99:6, 100:2–101:6, 112:11–113:3); see
`also Tr. 17:26–18:10 (discussing Dr. Wobbrock’s testimony, citing Ex. 1005
`¶¶ 54–67). Patent Owner further argues that Dr. Wobbrock concurred that a
`displayed page of text in a word-processing program does not correspond to
`an available machine function and would not be a menu option because he
`admitted that a displayed document which is a plain body text without
`adornments cannot be considered a menu. See PO Resp. 13 (citing Ex.
`2007, 69:4–70:2, 70:24–72:16, 85:18–87:1).5
`Patent Owner further asserts that its construction for “menu
`comprising a plurality of menu options” is not disturbed by the doctrine of
`claim differentiation because, in order for Petitioner’s argument to have
`
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`5 Patent Owner cites Ex. 2007, 85:18–8:1, which appears to be a
`typographical error.
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`merit, “selectable” would have to be the only difference between the
`dependent claims and claim 1. See PO Resp. 21 (citing Andersen Corp. v.
`Fiber Composites, LLC, 474 F.3d 1361, 1369–70 (Fed. Cir. 2007)). Patent
`Owner asserts that claims 5 and 23 differ from claim 1 not only in using the
`word “selectable,” but also in referring to the rotating menu option in
`question as a “selection position.” Patent Owner contends:
`if claim differentiation applies, it merely suggests that claim 1 is
`broad enough to cover both (1) the case where the menu
`comprises a specific selection position, and (2) the case where
`the menu is not so configured (e.g., the rotation brings the menu
`options into view, but they can be selected in a manner other than
`moving one to a specific selection position). ([Ex. 2005 ¶¶ 59–
`60.]) This is not inconsistent at all with Patent Owner’s claim
`construction.
`PO Resp. 21–22.
`In response to Patent Owner’s arguments, Petitioner contends that
`Patent Owner’s proposed construction contradicts the specification and the
`claims because: (1) the specification discloses both selectable and un-
`selectable menu options; (2) the claims differentiate between options and
`selectable options; (3) Patent Owner’s dictionary definitions confirm that the
`well-understood meaning of menus encompasses both selectable and non-
`selectable menu options; and (4) Dr. Wobbrock’s testimony confirms that
`menu options do not have to be selectable. See Reply 3–8, 10–14 (citations
`omitted); Tr. 5:21–25, 6:21–7:10, 7:19–24.
`In view of Petitioner’s assertions that the ’006 Reissued Patent
`discloses selectable and un-selectable menu options, and Patent Owner’s
`arguments that its construction does not require that each displayed option
`be immediately selectable, we modify Patent Owner’s construction for
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`“menu comprising a plurality of menu options” as follows: “a list of
`displayed options (not necessarily immediately selectable), corresponding to
`available machine functions from which list the user can select a machine
`function to be initiated.”
`In connection with Patent Owner’s claim construction arguments
`regarding selectability, Patent Owner argues that Dr. Wobbrock’s
`“testimony should be given diminished weight” because Dr. Wobbrock did
`not offer any definition for “menu comprising a plurality of menu options,”
`and refused to do so on cross-examination. See PO Resp. 11–12 (citing Ex.
`2007, 51:16–52:24, 72:18–73:11, 138:6-140:2, 286:3–292:6). We do not
`agree with Patent Owner’s argument because Patent Owner does not cite
`persuasive legal authority to support its argument that a Petitioner’s
`declarant must provide an explicit construction for a claim phrase or term.
`Also in connection with Patent Owner’s claim construction arguments
`regarding selectability, Patent Owner contends that Dr. Wobbrock
`acknowledges that he did not qualify as a person of ordinary skill in the art
`as of 1996, the date relied on by Petitioner for its definition of a person of
`ordinary skill in the art. See PO Resp. 18 (citing Ex. 2007, 124:3–125:12,
`119:1–149:16). It is unclear, however, what implication Patent Owner
`suggests. See PO Resp. 18.
`Assuming Patent Owner suggests that Dr. Wobbrock’s testimony is
`inadmissible, or should be accorded little weight, Patent Owner does not cite
`persuasive legal authority to support its suggestion that Dr. Wobbrock must
`have been a person of ordinary skill in the art at the time of the invention.
`Federal Rules of Evidence (“FRE”) Rule 702 permits a witness qualified as
`an expert by knowledge, skill, experience, training, or education to testify in
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`the form of an opinion if a) the expert’s knowledge will help the trier of fact
`to understand the evidence or to determine a fact in issue, (b) the testimony
`is based upon sufficient facts or data, (c) the testimony is the product of
`reliable principles and methods, and (d) the witness has applied the
`principles and methods reliably to the facts of the case. There is no
`requirement imposed by the FRE that a witness’s qualifications perfectly
`match the field of the patent at issue; all that is required is “an adequate
`relationship between [the witness’s] experience and the claimed invention.”
`SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010);
`see also Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–
`87 (Fed. Cir. 2011) (non-precedential) (upholding district court’s admission
`of testimony of an expert who “had experience relevant to the field of the
`invention,” despite admission that he was not a person of ordinary skill in
`the art). Instead, under FRE Rule 702, an expert need only be “qualified in
`the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`1356, 1363–64 (Fed. Cir. 2008).
`Petitioner argues that Patent Owner’s dictionary definitions also do
`not support the proposed construction, specifically the terms “machine
`function,” and “list.” See Reply 8–10 (citations omitted); see also Tr. 5:21–
`25, 9:11–10:9, 11:1–12:8. Specifically, Petitioner contends that only one of
`the four dictionary definitions includes the term “machine function.” See
`Reply 9. Petitioner asserts that Dr. Wobbrock testifies that a person of
`ordinary skill in the art would not have limited “menu” to only including
`“machine functions” or commands, because values or potentially other
`things can also be put in menus. See id. (quoting Ex. 2007, 60:13–61:9;
`citing Ex. 1005 ¶ 54; Ex. 1016 ¶¶ 7–8). Petitioner argues “menus at the
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`time allowed for the display of a command/machine function (e.g., Save,
`Open, Print) or values (e.g., Yellow, 14pt font, etc.).” Id. (citing Ex. 1005
`¶ 54; Ex. 1016 ¶¶ 7–8; Ex. 2007, 60:13–61:9). At oral hearing, when
`addressing “machine function” in its proposed construction, counsel for
`Patent Owner stated: “[w]hat is critical is that there is some computer
`action, function[,] or command or whatever you would like to term it that is
`being performed when that option is selected.” Tr. 21:14–17.
`Petitioner also argues that a person of ordinary skill in the art would
`not have limited the definition of “menu” to “list” because menus of other
`shapes and types were also common at the time of the invention. See Reply
`9–10 (reproducing Figure from Ex. 1016 ¶ 3; citing Ex. 1016 ¶¶ 3–6). At
`oral hearing, when addressing the meaning of “list” in its proposed
`construction, counsel for Patent Owner stated: (1) “lists can be of any
`particular shape that you might want” (Tr. 11–12); and (2) “I don’t think the
`term list is specifically needed but a list could be circular. It could be
`radial.” (Tr. 22:24–25).
`In view of the parties additional arguments addressing “machine
`function” and “list” in Patent Owner’s proposed construction, we further
`modify Patent Owner’s construction for “menu comprising a plurality of
`menu options” as follows: “a list (of any shape) of displayed options (not
`necessarily immediately selectable) corresponding to available computer
`actions, functions, or commands from which list the user can select a
`computer action, function, or command to be initiated.” In regard to
`Petitioner’s argument that “menus at the time allowed for the display of a
`command/machine function (e.g., Save, Open, Print) or values (e.g., Yellow,
`14pt font, etc.)” (Reply 9), we note that Patent Owner’s modified claim
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`construction does not require a list of displayed computer actions, functions,
`or commands, but requires a display of options that correspond to available
`computer actions, functions, or commands value options. Utilizing
`Petitioner’s example, a list of displayed values (e.g., Yellow, 14pt font, etc.)
`can correspond to available computer actions, functions, or commands from
`which list the user can select a computer action, function, or command to be
`initiated (e.g., change color to yellow, change font to 14pt).
`Lastly, Patent Owner argues that Petitioner is incorrect in “taking the
`position that where a GUI provides means for scrolling text, the scrolled text
`itself––as distinct from, for example, a button or other mechanism for
`actuating the scrolling––necessarily constitutes a ‘menu option.’” See PO
`Resp. 19 (citing Ex. 2005 ¶¶ 78–79); see id. at 19–20 (citing Ex. 2001, 366;
`Ex. 2002, 350; Ex. 2003, 461; Ex. 2004, 599; Ex. 2005 ¶¶ 80–85; Ex. 2007,
`69:4–70:2, 70:24–72:16, 85:18–87:1).6 We do not agree with Patent
`Owner’s arguments, because Petitioner confirms that it has never taken the
`position that scrolling or scrolled text constitutes a menu option. See Reply
`17, n.3.
`In sum, based on the record before us, the ordinary and customary
`meaning of “menu comprising a plurality of menu options,” as would be
`understood by a person of ordinary skill in the art at the time of the
`invention, is Patent Owner’s proposed construction as modified by Patent
`Owner’s additional positions, as follows: “a list (of any particular shape) of
`displayed options (not necessarily immediately selectable) corresponding to
`
`
`6 See footnote 5.
`
`
`
`15
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`
`IPR2017-00857
`Reissued Patent RE44,006 E
`available computer actions, functions, or commands from which list the user
`can select a computer action, function, or command to be initiated.”
`
`As demonstrated in the analysis below, for the purpose of this Final
`Written Decision, no additional claim terms or phrases require an explicit
`construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 1695
`(April 30, 2018) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc) (citations omitted). “This requirement is in recognition of the fact that
`16
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`
`
`
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`IPR2017-00857
`Reissued Patent RE44,006 E
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
`An expansive and flexible approach applies to determining whether a
`claimed invention would have been obvious. KSR, 550 U.S. at 415. The
`Supreme Court outlined several principles underlying its earlier instructions
`regarding obviousness, including the following: “[t]he combination of
`familiar elements according to known methods is likely to be obvious when
`it does no more than yield predictable results” (id. at 416), and “when a
`patent claims a structure already known in the prior art that is altered by the
`mere substitution of one element for another known in the field, the
`combination must do more than yield a predictable result” (id. ).
`The obviousness inquiry includes the question of “whether the
`improvement is more than the predictable use of prior art elements according
`to their established functions.” KSR, 550 U.S. at 417. And often it will be
`necessary “to look to interrelated teachings of multiple patents; the effects of
`demands known to the design community or present in the marketplace; and
`the background knowledge possessed by a person having ordinary skill in
`the art, all in order to determine whether there was an apparent reason to
`combine the known elements in the fashion claimed by the patent at issue.”
`Id. at 418. The analysis should be made explicit to facilitate review of the
`obviousness determination. Id. (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)). “[R]ejections on obviousness grounds cannot be sustained
`by mere conclusory statements; instead, there must be some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” Kahn, 441 F.3d at 988. Yet, “the analysis need not seek out
`precise teachings directed to the specific subject matter of the challenged
`
`
`
`17
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`IPR2017-00857
`Reissued Patent RE44,006 E
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how the
`proposed combinations of prior art would have rendered the challenged
`claim unpatentable. At this final stage, we determine whether a
`preponderance of the evidence of record shows that the challenged claim
`would have been obvious over the proposed combinations of prior art.
`We analyze the grounds of unpatentability in accordance with the
`above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`18
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`IPR2017-00857
`Reissued Patent RE44,006 E
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
`skill in the art is a hypothetical person who is presumed to have known the
`relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995).
`Petitioner asserts:
`a person of ordinary skill in the art in 1996 pertaining to the
`domain of the ’006 [Reissued] Patent would have a B.S. in
`computer science, computer engineering, electrical engineering,
`or similar degree, or equivalent industrial work experience. In
`lieu of a formal degree, such a person would have at least two (2)
`years of experience working in one or more of those enume
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