`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`ARRIS ENTERPRISES LLC
`Patent Owner
`
`___________________
`
`Case IPR2017-01695
`Patent 7,107,532
`___________________
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`Introduction. ..................................................................................................... 1
`Overview of the ’532 patent. ........................................................................... 2
`A.
`The ’532 patent provided an innovative graphical user
`interface for improved navigation of selectable options. ...................... 2
`The claimed techniques of the ’532 patent were praised
`by the industry. ...................................................................................... 5
`III. Claim Construction. ......................................................................................... 6
`A.
`“visual card” .......................................................................................... 6
`IV. Ground 1: The Board should deny institution of Ground 1
`because Sony did not establish a reasonable likelihood that
`claims 1-7, 9-11, 16-20, 24, 26-32, 34-36, 41-45, 52, and 53 are
`anticipated by Törnqvist. ................................................................................. 7
`A. Overview of Törnqvist. ......................................................................... 7
`B.
`Sony did not establish a reasonable likelihood that
`Törnqvist anticipates independent claims 1, 26, and 52. ....................10
`1.
`Sony fails to establish that Törnqvist discloses a
`“spatially-fixed focus area,” as recited in claims 1,
`26, and 52. .................................................................................10
`Sony fails to establish that Törnqvist discloses a
`“scroll[ing] only visual cards from a first sequence
`of visual cards … through a spatially-fixed focus
`area,” as recited in independent claims 1, 26, and
`52. ..............................................................................................12
`Sony fails to establish that Törnqvist discloses “wherein
`the scrolling of visual cards is in response to a single user
`action,” as recited in claims 9 and 34. .................................................13
`V. Ground 2: The Board should deny institution of Ground 2
`because Sony did not establish a reasonable likelihood that
`claims 3, 4, 25, 28, 29, and 49 are rendered obvious by the
`combination of Törnqvist and Kazamaki. .....................................................15
`A. Overview of Kazamaki. .......................................................................16
`B.
`Sony did not provide a sufficient motivation to combine
`Törnqvist and Kazamaki. ....................................................................17
`
`2.
`
`C.
`
`
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`

`C.
`
`B.
`
`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`Sony fails to establish that the combination of Törnqvist
`and Kazamaki teaches “pausing the scrolling of the first
`sequence of visual cards in response to a user command,”
`as recited in claim 3. ............................................................................20
`VI. Ground 3: The Board should deny institution of Ground 3
`because Sony did not establish a reasonable likelihood that
`claims 8, 12-15, 23, 33, 37-40, 48, 50, and 51 are rendered
`obvious by the combination of Törnqvist and LaJoie. ..................................21
`A.
`Sony fails to establish that Törnqvist discloses “a
`spatially-fixed focus area,” as recited in independent
`claim 50. ..............................................................................................22
`Sony fails to establish that Törnqvist discloses “in
`response to a user horizontally scrolling a particular
`visual card of the first sequence of visual cards
`corresponding to a television application into the focus
`area, enabling vertically scrolling of a second sequence
`of visual cards through the focus area,” as recited in
`independent claim 50...........................................................................23
`VII. Ground 4: The Board should deny institution of Ground 4
`because Sony did not establish a reasonable likelihood that
`claims 19 and 44 are rendered obvious by the combination of
`Törnqvist and Bergsten. .................................................................................25
`VIII. Ground 5: The Board should deny institution of Ground 5
`because Sony did not establish a reasonable likelihood that
`claims 20-22 and 45-47 are rendered obvious by the
`combination of Törnqvist and Sciammarella. ...............................................25
`IX. The Petitions filed against the ’532 patent improperly include
`redundant grounds. ........................................................................................26
`A.
`The Petitions include vertically redundant grounds. ...........................29
`B.
`The Petitions include horizontally redundant grounds. ......................33
`C.
`Sony’s alternative grounds run contrary to the laws and
`regulations governing post-grant review. ............................................36
`Conclusion. ....................................................................................................38
`
`
`X.
`
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Alarm.com Inc. v. Vivint, Inc.,
`IPR2015-01965, Paper 12 (PTAB Mar. 30, 2016) .................................................. 29
`
`Apple Inc. v. Parthenon Unified Memory Architecture LLC,
`IPR2016-00924, Paper 10 (PTAB Aug. 23, 2016) .................................................. 28
`
`Berk-Tek LLC v. Belden Tech’s, Inc.,
`IPR2013-00057, Paper 21 (PTAB May 14, 2013) .................................................. 27
`
`Conopco, Inc. v. Procter & Gamble Co.,
`Case IPR2013- 00505, Paper 9 (PTAB Feb. 12, 2014) ..................................... 27-28
`
`Free-Flow Packaging International, Inc. v. Automated Packaging Systems, Inc.,
`IPR2016-004465, Paper 8 (PTAB, July 22, 2016) ...................................... 10-11, 21
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016).......................................................................... 26, 27
`
`Heart Failure Technologies, LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper 12 (PTAB, July 31, 2013) .................................................. 17
`
`Illumina, Inc. v. The Trustees of Columbia Univ.,
`IPR2012-00006, Paper No. 43 (PTAB May 10, 2013) ............................................ 27
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .................................................................................. 17
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016)................................................................................ 20
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) .................................................................................... 6
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ..................................................................................... 19
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................................. 17
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-00330, Paper 17 (PTAB Sept. 2, 2015) .................................................... 27
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 7 (PTAB Oct. 25, 2012) .................................................. 26
`
`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00088, Paper 13 (PTAB June 13, 2013) .................................................. 27
`
`Scentair Tech’s., Inc. v. Politec, Inc.,
`IPR2013-00179, Paper 18 (PTAB Aug. 23, 2013) .................................................. 27
`
`Ultratec v. Sorenson Commc’ns,
`IPR2013-00288, Paper 23 (PTAB Jan. 10, 2014) ................................................... 28
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) .................................................................................... 7
`
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`IPR2013-00054, Paper 16 (PTAB, July 13, 2013) ............................................ 10, 21
`
`Statutes:
`
`35 U.S.C. § 325(d) ................................................................................................... 26
`35 U.S.C. § 326(b) ................................................................................................... 36
`
`Regulations:
`
`37 C.F.R. § 42.1(b) .................................................................................................. 36
`37 C.F.R. § 42.20(c) ................................................................................................. 27
`37 C.F.R. § 42.104(b)(4) .................................................................................... 13, 21
`37 C.F.R. § 42.108(a) ............................................................................................... 26
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`EXHIBIT LIST
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`Description
`Moxi Media Center wins second Emmy award (1 Oct. 2005),
`http://informitv.com/2005/10/01/moxi-media-center-wins-second-
`emmy-award/
`Digeo’s ‘Moxi’ an Emmy Repeater,
`http://www.multichannel.com/news/technology/digeo-s-moxi-
`emmy-repeater/259350
`BusinessWire, “Digeo Captures Emmy Award Nomination for
`Video-on-Demand Integration in Moxi™ Program Guide,”
`http://www.businesswire.com/news/home/20061102006266/en/Dig
`eo-Captures-Emmy-A...
`
`
`
`
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`

`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`I.
`
`Introduction.
`Petitioner Sony Corporation (“Sony”) has requested inter partes review of
`
`claims 1-53 of U.S. Patent No. 7,107,532 (“the ’532 patent). Sony has requested
`
`review on nine proposed grounds spread over two Petitions in proceedings
`
`IPR2017-01695 and IPR2017-01803. The Board should deny all grounds in this
`
`Petition because Sony has fallen short of meeting its burden of establishing a
`
`reasonable likelihood of prevailing on any ground. Additionally, the nine proposed
`
`grounds include numerous redundancies, seemingly in an attempt to circumvent
`
`the deficiencies of each individual ground. This strategy runs contrary to the laws
`
`and regulations governing post-grant review and must not be rewarded.
`
`The ’532 patent is directed to techniques for efficiently selecting from
`
`available options within an information system by scrolling these options,
`
`represented by visual cards, through a spatially-fixed focus area. Each of
`
`independent claims 1, 26, 50, and 52 recites this “spatially-fixed focus area”
`
`element, and Sony relies solely on the Törnqvist reference in each of its grounds to
`
`disclose this feature. But Törnqvist does not disclose, either expressly or inherently,
`
`that its purported focus area is spatially-fixed. Rather, Törnqvist alludes to the fact
`
`that its focus area may shift locations within Törnqvist’s user interface as a user
`
`moves between different objects.
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`Sony further fails to map any disclosure of Törnqvist to “scroll[ing] only
`
`visual cards from a first sequence of visual cards … through a spatially-fixed focus
`
`area,” as recited in independent claims 1, 26, and 52. Instead, Sony relies on
`
`conclusory statements related to Törnqvist’s feeding or “zapping” up, down, left,
`
`or right keys to move objects to Törnqvist’s purported focus area. But Sony fails to
`
`sufficiently address the term “only” recited in the claims. The declaration of
`
`Sony’s expert, Dr. Olsen, provides nearly a verbatim copy of the Petition, and fails
`
`to provide any evidentiary support or further insight. Törnqvist is thus fatally
`
`deficient with respect to the independent claims.
`
`The remaining grounds suffer from the same deficiencies as Ground 1, and
`
`Sony’s secondary references do not cure such deficiencies. Therefore, these
`
`grounds should be denied for similar reasons as Ground 1.
`
`II. Overview of the ’532 patent.
`A. The ’532 patent provided an innovative graphical user interface
`for improved navigation of selectable options.
`
`Many new and innovative video programming choices entered the cable
`
`television landscape in the late 1990s, offering viewers instant access to hundreds
`
`of new titles and television channels as well as new services such as digital video
`
`recording. This profusion of new content created a vast supply of programming,
`
`but the ability of television viewers to explore the new content was grid-locked by
`
`the limitations of traditional program guides.
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`While televisions themselves were becoming increasingly interactive, the
`
`state of user interface design during this period was stagnant and entrenched in
`
`existing paradigms. Graphical user interfaces (GUIs) in the late 1990s looked
`
`remarkably similar to the first GUI invented at Xerox PARC back in 1973.
`
`(Ex. 1001, ’532 patent at 1:48-50.) Twenty years after Xerox PARC, television
`
`GUIs still required viewers to “repeatedly press[] a button on a remote control” to
`
`scan through programming options. (Id. at 1:42-45.) With the advent of on-demand,
`
`viewers were now expected to sort through potentially hundreds of programming
`
`options using this excruciatingly inefficient process—repeatedly pushing arrow
`
`buttons on their remote control to move a cursor from one row or column to the
`
`next. (Id. at 1:25-57.) Addressing new services such as DVR scheduling and
`
`viewing were similarly painful. Prior to the ’532 patent, these problems persisted
`
`with little or no hope of abatement given the continuing dominance of existing
`
`GUI paradigms.
`
`In order to solve these and other problems in the prior art, the ’532 patent
`
`describes a specific user interface that minimizes inefficiency and poor navigation
`
`experiences by employing a novel spatially-fixed “focus area” for exploring
`
`available programming options. The navigation interface uses a sequence of
`
`“visual cards” that graphically represent the user’s available options. (Id. at
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`Abstract.) Figure 10 of the ’532 patent (reproduced below) illustrates an example
`
`navigation interface.
`
`
`
`(’532 patent at Figure 10.)
`
`Visual cards may be arranged in sequences, and two different sequences
`
`may be displayed on vertical and horizontal axes, with the focus area at the
`
`intersection. (’532 patent at 4:15-16, 11:40-46.) In response to a single user action,
`
`the sequence of cards in one of the sequences is successively displayed within the
`
`spatially-fixed focus area. (Id. at 4:37-42.)
`
`Significantly, the visual cards outside the focus area on the vertical and
`
`horizontal axes are the same cards that appear in the focus area when they are
`
`scrolled into focus. (Id. at 4:25-28.) Using this unique spatially-fixed focus area
`
`allows for “rapid and efficient navigation” of hundreds of channels or other
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`available content options, while allowing the user to maintain her gaze at a fixed
`
`location. (Id. at 1:57-60; claims 1-53 (all reciting a “fixed focus area”).
`
`B.
`
`The claimed techniques of the ’532 patent were praised by the
`industry.
`
`The ’532 patent was developed in connection with the “Moxi” Media Center
`
`from Paul Allen’s Digeo, Inc., which Patent Owner later acquired. Upon its release,
`
`the industry heaped praise on the new GUI. (See, generally, Ex. 2001; Ex. 2002;
`
`Ex. 2003.) Underscoring its value and unconventionality, the inventors were given
`
`numerous accolades. For example, the National Academy of Television Arts and
`
`Sciences (NATAS) awarded the Moxi interface an Advanced Technical Emmy
`
`award two years in a row (2004-05) and nominated it for a third Emmy in 2006.
`
`(Ex. 2001 at 1-2; Ex. 2002 at 1; Ex. 2003 at 1.) NATAS called the GUI’s
`
`integration of on-demand functionality a “breakthrough.” (Ex. 2003 at 1.) NATAS
`
`lauded that the GUI offers access “with fewer steps to select and purchase than
`
`previous technologies have required.” (Id.) NATAS also reported that comparative
`
`data compiled in 2006 in the Southern California region showed that video on-
`
`demand usage increased by more than 200% for subscribers to the Moxi platform
`
`as compared to conventional cable subscribers. (Id. at 2.)
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`III. Claim Construction.
`“visual card”
`A.
`
`Petitioner
`
`“a visually presented object or other suitable data structure”
`
`Patent
`Owner
`
`“a visually displayed object or other suitable data structure that
`provides information about and/or access to an available option
`within an ITV system”
`
`Sony’s construction is inconsistent with the ’532 patent specification, as
`
`Sony’s proposed construction only takes into account part of the definition
`
`provided in the ’532 patent: “A card 200 is an object or other suitable data
`
`structure that provides information about and/or access to an available option
`
`within an ITV system 100.” (’532 patent at 3:29-32 (emphasis added).) An
`
`inventor may act as his own lexicographer as long as specific terms are defined
`
`“with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). Accordingly, Sony’s construction is not the broadest
`
`reasonable interpretation in light of the specification, and “visual card” should be
`
`construed as “a visually displayed object or other suitable data structure that
`
`provides information about and/or access to an available option within an ITV
`
`system.”
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`IV. Ground 1: The Board should deny institution of Ground 1 because Sony
`did not establish a reasonable likelihood that claims 1-7, 9-11, 16-20, 24,
`26-32, 34-36, 41-45, 52, and 53 are anticipated by Törnqvist.
`
`In its first ground, Sony argues that Törnqvist anticipates claims 1-7, 9-11,
`
`16-20, 24, 26-32, 34-36, 41-45, 52, and 53. It is well-established that a “claim is
`
`anticipated only if each and every element as set forth in the claim is found, either
`
`expressly or inherently described, in a single prior art reference.” Verdegaal Bros.
`
`v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Sony attempts
`
`to compensate for Törnqvist’s lack of explicit disclosure by citing portions of
`
`Törnqvist out of context and relying on unsupported conclusory statements by their
`
`expert, Dr. Olsen.
`
`A. Overview of Törnqvist.
`Törnqvist is directed to “scrollable cross point navigation on a user interface
`
`in order to select a feature by combining two object fields.” (Ex. 1004, Törnqvist at
`
`2:2-3.) Törnqvist sought to improve user interfaces found on appliances that
`
`included “display screens for interaction with remote control and other key pad
`
`devices.” (Törnqvist at 1:28-32.) Törnqvist describes that “[n]avigation principles
`
`according to the present invention allow the user to navigate to e.g. a TV channel
`
`or Service, herein described as features, desired with only four navigation keys on
`
`a remote control device.” (Törnqvist at 4:10-13.) An example user interface
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`employing “cross point navigation” is illustrated in Figure 2a of Törnqvist
`
`(reproduced below).
`
`
`
`(Törnqvist at Figure 2a.)
`
`The user interface of Törnqvist allows a user to “select a combination of an
`
`object field comprising objects such as function features defining a setting and a
`
`finite object field comprising finite features, by feeding the object field comprising
`
`functions or the finite object field comprising finite features into a focus area 30.”
`
`(Törnqvist at 5:21-25.) Törnqvist explains that a “function object is mostly a more
`
`complex setting not directly leading to a setting of a feature for an appliance and a
`
`finite object mostly leads to a direct setting of a feature for an appliance.”
`
`(Törnqvist at 5:1-4.)
`
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`Objects to be displayed to the user in Törnqvist are arranged in “a tree-like
`
`manner with any branch of the tree constituting a further level.” (Törnqvist at 7:22-
`
`23.) Each level of objects can be displayed in either the row and column of
`
`Törnqvist’s user interface, and objects can be moved into the focus area by
`
`“feeding or ‘zapping’ up and down or left or right” on a remote control device.
`
`(Törnqvist at 2:14-15.) Importantly, Törnqvist describes that objects within each
`
`level can be changed by repeatedly pressing either a first or second button on the
`
`remote control device. (Törnqvist at 7:33-8:36.) Törnqvist explains that feeding or
`
`“zapping” to move objects into the focus area can cause the focus area to shift
`
`locations: “If the user changes the item in the focus area, a shift of the vertical bar
`
`including the focus area or a shift of the horizontal bar including the focus area is
`
`performed.” (Törnqvist at 10:10-12 (emphasis added).)
`
`When objects are moved into the focus area, Törnqvist displays a
`
`combination of the object and a linked object in the next lower level: “As long as
`
`there is a possibility to change from one level to a next lower level, a combination
`
`of the two items of these two levels is displayed in the focus area.” (Törnqvist at
`
`9:3-4.) This provides the user information from both objects in the focus area.
`
`When the user reaches a desired combination, the user can select the combined
`
`features “using a manipulation key or button such as Ok, confirm, select etc.”
`
`(Törnqvist at 5:35-36.)
`
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`B.
`
`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`Sony did not establish a reasonable likelihood that Törnqvist
`anticipates independent claims 1, 26, and 52.
`Sony fails to establish that Törnqvist discloses a “spatially-
`1.
`fixed focus area,” as recited in claims 1, 26, and 52.
`Claims 1 and 26 recite “a spatially-fixed focus area.” Claim 52 similarly
`
`requires a “horizontally and vertically fixed focus area.” Törnqvist does not
`
`expressly disclose that its focus area is spatially-fixed, and Sony fails to establish
`
`that Törnqvist’s focus area necessarily adheres to this restriction.
`
`Sony contends that the focus area of Törnqvist is spatially-fixed because the
`
`focus area “is dedicated to display information which is necessary for a user to
`
`control the functions of the electronic apparatus.” (Petition at 23 (citing Törnqvist
`
`at 7:2-4) (underline in original).) Sony then asserts, without any citation to its
`
`expert, that a “POSITA would understand the dedicated nature of the fixed focus
`
`area of Törnqvist to mean that the focus area is spatially fixed …” (Petition at 23.)
`
`Even if Sony were to cite to its expert, Dr. Olsen’s declaration would not provide
`
`support since it repeats verbatim the language of the Petition. (Ex. 1002, Olsen
`
`Decl. at ¶70.) The Board has repeatedly stated that an expert declaration that
`
`simply “track[s] and repeat[s] the arguments for unpatentability” is entitled to little
`
`or no weight. See e.g., Wowza Media Sys., LLC v. Adobe Sys., Inc., IPR2013-
`
`00054, Paper 16 at p. 4 (PTAB, July 13, 2013); Free-Flow Packaging
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`International, Inc. v. Automated Packaging Systems, Inc., IPR2016-004465, Paper
`
`8 at 13 (PTAB, July 22, 2016).
`
`In any event, Sony’s reliance on Törnqvist’s disclosure that the focus area is
`
`“dedicated to display information” is misplaced. (Törnqvist at 7:3-4.) The word
`
`“dedicated” in Törnqvist is used in terms of the function of the focus area, not its
`
`location on screen or whether it remains in a fixed position. Törnqvist describes
`
`that “[i]f the user changes the item in the focus area, a shift of the vertical bar
`
`including the focus area or a shift of the horizontal bar including the focus area
`
`is performed.” (Törnqvist at 10:10-12 (emphasis added).) Claim 31 of Törnqvist
`
`also includes that the focus area, as a part of the items of the horizontal bar, “may
`
`be shifted in both directions.” (Törnqvist at claim 31.) One goal of Törnqvist is to
`
`“mak[e] an image display on the screen possible even when all bars are visible,”
`
`and thus the bars of Törnqvist’s user interface are not intended to block the image
`
`displayed in the background. (Törnqvist at 2:19-20.)
`
`Accordingly, Törnqvist’s disclosure of a “shift of the vertical bar including
`
`the focus area” alludes to the fact that the bars of Törnqvist’s user interface are not
`
`fixed in place. Sony’s reference to the “dedicated” nature of Törnqvist’s focus area
`
`is insufficient to demonstrate that Törnqvist discloses, either expressly or
`
`inherently, the “spatially-fixed” element of the claims.
`
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`

`2.
`
`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`Sony fails to establish that Törnqvist discloses a “scroll[ing]
`only visual cards from a first sequence of visual cards …
`through a spatially-fixed focus area,” as recited in
`independent claims 1, 26, and 52.
`
`Claims 1 and 26 require “scroll[ing] only visual cards from a first sequence
`
`of visual cards […] through a spatially-fixed focus area of the user interface. Claim
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`52 similarly requires a “means for scrolling only visual cards from a first sequence
`
`of visual cards through a horizontally and vertically fixed focus area.” Sony fails to
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`show that Törnqvist discloses these limitations, either expressly or inherently.
`
`Specifically, Sony alleges that Törnqvist “discloses ‘scrolling only visual
`
`cards from [the] first sequence through [the] spatially-fixed focus area’ because it
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`discloses ‘[s]crolling is accomplished by feeding or “zapping” up and down or left
`
`or right in order to move objects to the focus.’” (Petition at 24.) Sony further
`
`references Törnqvist’s disclosure that a user may “feed[] the field F2 to F0 with the
`
`key for left or right (circular bars) feeding.” (Petition at 24 (citing Törnqvist at
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`6:24-25).) Sony then merely concludes, ‘[t]hus, based on these disclosures, a
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`POSITA would understand Törnqvist as disclosing ‘scrolling only visual cards
`
`from a first sequence of visual cards representing a first type of option through a
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`spatially-fixed focus area of the user interface.’” (Petition at 24 (italics in
`
`original).)
`
`But Sony never maps the claim term “only” to any disclosure in Törnqvist.
`
`The fact that objects in Törnqvist are moved into the focus area using up, down,
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`left, or right keys does not establish that Törnqvist discloses “scroll[ing] only
`
`visual cards from a first sequence of visual cards … through a spatially-fixed focus
`
`area,” as required by the claims. Without explaining how Törnqvist’s disclosure of
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`“feeding” or “zapping” performs “scroll[ing] only visual cards from a first
`
`sequence,” Sony’s conclusory assertion is insufficient to meet its burden. 37 C.F.R.
`
`§ 42.104(b)(4) (“The petition must specify where each element of the claim is
`
`found in the prior art patents or printed publications relied upon.”).
`
`C.
`
`Sony fails to establish that Törnqvist discloses “wherein the
`scrolling of visual cards is in response to a single user action,” as
`recited in claims 9 and 34.
`
`Dependent claim 9 recites “wherein the scrolling of visual cards is in
`
`response to a single user action.” Sony relies only on a single sentence of Törnqvist
`
`to teach this limitation, alleging that Törnqvist “discloses a ‘user may start with
`
`item A in the first level and may change within this level to all other items B, C, …
`
`of this level by pressing the first key.’” (Petition at 53 (citing Törnqvist at 8:6-7).)
`
`But Sony ignores the recitation of “visual cards” (plural) and accords no difference
`
`between the features recited in claims 9 and 34, and the “scrolling” features recited
`
`in the independent claims.
`
`Specifically, claims 9 and 34 recite “scrolling of visual cards” in plural
`
`form. Thus, the plain language of the claims requires scrolling more than one
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`visual card “in response to a single user action.” The ’532 patent provides context
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`to these features, discussing, “[i]n response to a single user action, the cards 200
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`in a sequence 300 are successively displayed within the focus area 302. Where
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`the sequence 300 is circular, the successive display of cards 200 may continue
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`indefinitely until halted by the user by a subsequent action, as described more
`
`fully below.” (’532 patent at 4:40-45 (emphasis added); see also Figure 12.) The
`
`’532 patent continues, “[t]he single user action to initiate navigation may be
`
`pressing (or pressing and holding down) a button on the remote control 108. For
`
`example, the user may press the ‘Up’ button 116 to initiate the successive display
`
`in a first direction within the sequence 300…” (’532 patent at 4:46-50 (emphasis
`
`added).) That is, a single user action, such as pressing or holding a button, initiates
`
`successive display of multiple visual cards within the focus area.
`
`Törnqvist merely discloses “‘zapping’ up and down or left or right in order
`
`to move objects into focus.” (Törnqvist at 2:16-17.) For example, Törnqvist
`
`explains, “[f]or changing between the items of the third level, the user continues to
`
`press the first key.” (Törnqvist at 8:4-5.) That is, the user must repeatedly press the
`
`same key to move multiple objects into focus. Törnqvist provides examples of
`
`these repeated key sequences, e.g.:
`
`A
`B
`C
`C0
`
`
`
`
`
`
`
`
`
`
`
`first key
`first key
`second key
`second key
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`
`
`
`
`
`second key
`second key
`second key
`first key
`
`
`
`
`
`
`C1
`C2
`C3
`C4
`…
`
`(Törnqvist at 8:23-29.) Thus, to scroll more than one object in Törnqvist, multiple
`
`actions must be taken (i.e., repeatedly pressing the same key). Sony provides no
`
`further explanation or analysis, and thus Sony has not shown that Törnqvist
`
`discloses that “the scrolling of visual cards is in response to a single user action,”
`
`as recited in claims 9 and 34.
`
`V. Ground 2: The Board should deny institution of Ground 2 because Sony
`did not establish a reasonable likelihood that claims 3, 4, 25, 28, 29, and
`49 are rendered obvious by the combination of Törnqvist and Kazamaki.
`
`As discussed with respect to Sections IV.B.1 and IV.B.2, Törnqvist does not
`
`anticipate independent claims 1 and 26, nor does Törnqvist render these claims
`
`obvious. Claims 3, 4, 25, 28, 29, and 49 depend from independent claims 1 and 26,
`
`and therefore the Board should deny institution of these claims for the same
`
`reasons as Ground 1. Additionally, Sony fails to provide sufficient rationale to
`
`combine Törnqvist and Kazamaki. Accordingly, the Board should deny institution
`
`of Ground 2 for this reason alone.
`
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`Case IPR2017-01695
`U.S. Pat. No. 7,107,532
`
`A. Overview of Kazamaki.
`Kazamaki sought to solve issues with traditional character-input methods in
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`which a table of characters is displayed “such that it is arrayed in a plurality of
`
`rows and columns and one of the characters … in the table is to be selected…” (Ex.
`
`1005, Kazamaki at ¶4.) In this case, “it is necessary to modify, many times, the
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`directions in which the direction-indication keys are pressed until the target
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`character is selected.” (Kazamaki at ¶4.)
`
`Kazamaki instead provided a configuration in which “character-candidate
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`strings are displayed such that they are arrayed in respective directions about an
`
`initial position of a cursor, and thereby a target character candidate can be rapidly
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`and easily confirmed and input.” (Kazamaki at ¶6.) Example configurations can be
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`seen in Figures 3 and 6 of Kazamaki (reproduced below).
`
`(Kazamaki at Figures 3, 6.)
`
`Kazamaki describes that the character-candidate strings can be displayed “in
`
`four directions [e.g., FIG. 3], eight directions [e.g., FIG. 6], or the like, ab