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`Paper: 7
`Entered: May 22, 2018
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00185
`Patent RE43,564 E
`____________
`
`
`
`Before KEVIN F. TURNER, DAVID C. MCKONE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`
`INTRODUCTION
`I.
`Microsoft Corporation and Microsoft Mobile Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting inter partes review
`of claims 1–7 of U.S. Patent No. RE43,564 E (Ex. 1001, “the ’564 Patent”).
`Koninklijke Philips N.V. (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we decline to institute an inter
`partes review.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify several federal district court cases involving the
`’564 Patent. Pet. 1–2; Paper 4, 2–3. The parties also identify several other
`petitions for inter partes review relating to the ’564 Patent, including two
`previous petitions filed by Google, Inc., IPR2017-00388 and IPR2017-
`00389, upon which no trials were instituted. Id.
`B. The ’564 Patent
`The ’564 Patent is entitled “Hand-Held With Auto-Zoom For
`Graphical Display Of Web Page,” and relates to a graphical user interface
`for devices “with a relatively small screen real estate, such as handheld
`information appliances” including mobile phones and palmtop computers.
`Ex. 1001, 1:20–24. The graphical user interface is designed to implement an
`“auto-zoom” functionality that magnifies an image “on a display too small
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`for the total information content, given the display’s resolution and size.”
`Id. at 2:27–30. The ’564 Patent details that the inventor realized that such an
`“auto-zoom” feature was useful not only with respect to elements of the user
`interface, but can be used to zoom in portions of retrieved information which
`are of interest to the user, such as hyperlinks. Id. at 2:24–39.
`The graphical user interface of the ’564 Patent utilizes a touchscreen
`and “is operative to enable the user to select via the touch screen a portion of
`the image when displayed at a first scale,” and thereafter “renders the
`selected portion on the display at a second scale larger than the first scale.”
`Id. at 2:51–55. According to specific embodiments, the zoomed-in area “is
`centered around the touch location.” Id. at 4:26.
`The ’564 Patent reissued as a patent on August 7, 2012, based on a
`reissue application for U.S. Patent No. 6,466,203 B2 (Ex. 1009) filed
`December 29, 2010. During that proceeding, Patent Owner amended
`previously-issued claims 1–6 to clarify that the zoomed-in portion of the
`image was “substantially centered around the touch location,” rather than the
`“touch screen,” and to add claim 7 directed to the scrolling magnification
`embodiment. Ex. 1016, 4–7 (emphasis added).
`C. Challenged Claims
`Petitioner challenges claims 1–7 of the ’564 Patent. Claim 1 is
`independent and illustrative of the claims under challenge:
`1. A handheld communication device comprising:
`a wireless modem for receiving data;
`a display that has a substantially small size suitable for the
`handheld communication device;
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`Basis
`
`a data processing system connected to the modem and to the
`display for processing the received data and for rendering
`an image corresponding to the data received;
`a touch screen for enabling a user to interact with the device;
`wherein:
`the system is operative to enable the user to select through a
`touch location on the touch screen a portion of the image,
`when displayed at a first scale, for rendering the selected
`portion on the display at a second scale larger than the first
`scale thereby facilitating a selection of a feature; and
`the selected portion when rendered at the second scale is a
`zoomed-in version of part of the image at the first scale
`substantially centered around the touch location.
`Ex. 1001, 5:50–6:16.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–7 of the ’564 Patent on the following
`grounds. Pet. 3–4, 29–81.
`Reference(s)
`
`Claim(s)
`Challenged
`1, 2, 6, and 7
`3–5
`1, 3, 4, and 6
`1–4, 6, and 7
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`Murase1 and Heikkinen2
`Murase, Heikkinen, and Priestman3
`Björk4
`Björk, Robertson,5 and Seidensticker6
`
`1 Japanese Pat. App. Pub. No. H10-269022, published October 9, 1998
`(Ex. 1003, “Murase”). Petitioner has provided a certified translation of
`Murase from Japanese into English (Ex. 1004).
`2 U.S. Patent No. 6,073,036, issued Jun. 6, 2000 (Ex. 1005, “Heikkinen”).
`3 Int’l Pat. App. Pub. No. WO 99/59312, published Nov. 18, 1999 (Ex. 1006,
`“Priestman”).
`4 Staffan Björk et al., WEST: A Web Browser for Small Terminals, The 12th
`Annual ACM Symposium on User Interface Software and Technology
`(1999) (Ex. 1007, “Björk”).
`5 U.S. Patent No. 5,670,984, issued Sept. 23, 1997 (Ex. 1010, “Robertson”).
`6 U.S. Patent No. 5,920,327, issued July 6, 1999 (Ex. 1011, “Seidensticker”).
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`Reference(s)
`
`Basis
`
`Claim(s)
`Challenged
`5
`§ 103
`Björk and Brooks7
`5
`Björk, Robertson, Seidensticker, and Brooks § 103
`In support of its arguments, Petitioner relies on the Declaration of Dr. Loren
`Terveen (Ex. 1002). See id.
`E. Claim Construction
`We construe claims in an unexpired patent by applying the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under this standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A “claim term will not receive its ordinary meaning if the patentee
`acted as his own lexicographer,” however, and clearly set forth a definition
`of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`In conjunction with the prior petitions submitted by Google, Inc., we
`construed the claim terms “feature” and “facilitating selection of a feature,”
`which the present Petitioner adopts for purposes of this Petition; Patent
`Owner does not dispute those constructions for purposes of this Decision.
`See Pet. 25; Prelim. Resp. 8.
`
`
`7 U.S. Patent No. 7,339,993 B1, issued Mar. 4, 2008 (Ex. 1012, “Brooks”).
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`In addition, Petitioner argues that language found in claims 1 and 6,
`namely “the selected portion when rendered at the second scale is a zoomed-
`in version of part of the image at the first scale substantially centered around
`the touch location,” should not be construed to exclude the enlargement of
`the “predetermined segment[s]” of the image. Pet. 25–26. Petitioner
`continues that the Specification of the ’564 Patent “makes clear that the
`enlarged content need not be strictly centered around the touch location as
`would be the case” in the alternative, disclosed approach. Id. at 26.
`We are not persuaded that the specified limitations of claims 1 and 6
`need to be explicitly construed or limited in order to evaluate the efficacies
`of the proposed grounds of unpatentability. As such, for purposes of this
`Decision, we conclude that no term requires express construction to resolve
`a controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`
`III. DISCUSSION
`Petitioner argues that claims 1–7 of the ’564 Patent would have been
`obvious over the asserted grounds of unpatentability discussed above.
`Pet. 29–81. Patent Owner disputes that the asserted grounds demonstrate
`that there is a reasonable likelihood that Petitioner would prevail with
`respect to any of the claims challenged in the Petition. Prelim. Resp. 23–62.
`For the reasons explained below, we are not persuaded that Petitioner has
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`demonstrated a reasonable likelihood of prevailing on any of these asserted
`grounds.8
`
`A. Obviousness over Murase and Heikkinen
`Petitioner asserts that claims 1, 2, 6, and 7 would have been obvious
`over Murase and Heikkinen. Pet. 29–50. We begin with overviews of
`Murase and Heikkinen, and then discuss Petitioner’s arguments regarding
`the combination of those references to teach or suggest all of the elements of
`the cited claims.
`
`1. Murase
`Murase discloses an auto-zoom feature for a mobile device, whereby
`when a user’s finger or stylus approaches the touch screen of the mobile
`device, the corresponding portion of the image is automatically enlarged.
`Ex. 1004 ¶¶ 9–11, Abstract. This is illustrated in Figure 2, reproduced
`below.
`
`
`
`
`8 Because we deny the Petition on substantive grounds, as explained in the
`sections below, we do not reach Patent Owner’s arguments that we should
`exercise our discretion to deny the Petition under 35 U.S.C. §§ 314(a) and
`325(d). See Prelim. Resp. 10–23.
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`If a selection within the enlarged portion is made by the user, a
`coordinate conversion is performed and the displayed application program
`receives an input based on the user’s selection with respect to the enlarged
`display screen. Id. ¶ 11. Murase provides that the auto-zoom feature may
`be applied to any content displayed by the device, including “new
`information, images, and the like” received via the mobile device’s
`communication means. Id. ¶¶ 8, 38. Murase indicates that its processes
`seek to solve the problems caused when small screens hamper the process of
`selecting with a finger or pen through incorrect selection. Id. ¶¶ 6, 8.
`2. Heikkinen
`Heikkinen describes mobile stations having a touch sensitive input for
`the detection of user inputs. Ex. 1005, 1:7–10. Heikkinen notes that
`because of the small size of the display, there may not be enough room to
`depict all of the symbols available to the user. Id. at 1:19–24. Figures 3 and
`5B of Heikkinen, which are reproduced below, illustrate different
`embodiments of Heikkinen’s display.
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`Figure 3 is a detail of a display in an initial state and its magnified state.
`Id. at 3:24–26. Figure 5B is an exemplary display with a “fisheye” display
`magnification function. Id. at 3:34–37.
`With respect to the user interface as illustrated in Figure 3, in an initial
`state, each area of the display shows a particular symbol, defined by each
`pressure sensing element of the 10 by 10 matrix of display 20. Id. at 5:31–
`47. Fingertip FT is placed on display 20, and elements are re-displayed in a
`magnified or zoomed fashion, so that a particular symbol can be selected.
`Id. at 5:48–6:5. In another embodiment, the magnification can be provided
`through a “fisheye” effect, as illustrated in Figure 5B.
`In addition, the mobile station includes a modulator, a transmitter, a
`receiver, a demodulator, and a controller, and can receive signals in
`accordance with an air interface standard. Id. at 3:54–60. The operating
`program resides in memory 24, and includes routines to present messages
`and message-related functions to the user on display 20. Id. at 4:45–47.
`Heikkinen discloses that memory 24 is “typically in a ROM [Read Only
`Memory] device.” Id. at 4:26–28. Heikkinen also provides that not all of
`display 20 need be touch sensitive, so that a portion may be used in a
`conventional fashion for displaying user-selected symbols, prompts from the
`mobile controller, a received SMS message, etc., while the remainder of
`display 20 is operated as a user input device. Id. at 10:30–38.
`3. Motivation to Combine Murase and Heikkinen
`Petitioner asserts that persons of ordinary skill in the art would have
`been motivated to combine Murase and Heikkinen for multiple reasons.
`Pet. 31. Petitioner asserts that both references seek to solve the same
`problem, teach solutions having similar designs, and that skilled artisans
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`would have understood that Heikkinen’s software-based touch-to-zoom
`approach would have had “certain advantages over Murase’s dependence on
`an ‘approach detecting device.’” Id. at 31–32. Petitioner further cites to its
`declarant for the proposition that “[a]s of the relevant priority date, touch
`screens rarely supported proximity detection, and those that did required the
`stylus to be very close to the screen before the stylus was detected.” Id. at
`32 (citing Ex. 1002 ¶ 104).
`From this latter proposition, Petitioner argues that it would have been
`difficult for a user to bring a finger or pen close enough to the touch screen
`to register an approach event “without accidently touching the screen and
`making an unintended selection.” Id. at 32–33. Because of this, Petitioner
`asserts that it would have been cheaper and easier to simply use a software-
`based touch-to-zoom solution like the one disclosed in Heikkinen. Id. at 33.
`Petitioner also asserts that it would have been easy to modify Murase’s
`process to use touch coordinates rather than approach coordinates to enlarge
`an area surrounding the coordinates, and there would have been a reasonable
`expectation of success in achieving Murase’s desired result of having
`accurate selection. Id. (citing Ex. 1002 ¶ 105).
`In response, Patent Owner argues that Petitioner’s proffered
`motivation to combine Murase and Heikkinen would contradict the express
`teachings of Murase. Prelim. Resp. 32–36. Patent Owner points out that
`Murase’s sole objective is to automatically and immediately enlarge a
`portion of the screen in advance of a touch input so that the desired input is
`selected with a single touch. Id. at 33 (citing Ex. 1004 ¶ 8). Patent Owner
`also points out that Murase describes a “conventional” touch input device, to
`which the disclosed invention is contrasted, and Patent Owner argues that
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`the approach method of Murase is crucial to provide its disclosed immediate
`and automatic selection process. Id. at 33–34 (citing Ex. 1004 ¶¶ 9–11, 24–
`26, Fig. 5). Patent Owner also argues that “Petitioners’ proposal to eliminate
`the very feature accomplishing Murase’s objective of ‘automatic’ and
`‘immediate’ zoom, cannot pass muster under § 103.” Id. at 36 (citing Black
`& Decker, Inc. v. Positec USA, Inc., RW, 646 Fed. App’x 1019, 1027
`(Fed. Cir. 2016)).
`We agree with Patent Owner. Although Petitioner has addressed
`similar problems solved and the solutions taught by Murase and Heikkinen,
`their processes are not necessarily compatible. The benefits discussed in
`Murase of allowing for detection of an approaching finger or pen, would not
`follow for the system of Heikkinen. A detected touch in Murase would
`register as a selection, whereas a touch in Heikkinen is only the first part of a
`longer process that would require a sustained stationary touch to register as a
`user input selection. We are not persuaded that Heikkinen’s processes
`would have been considered an “improvement” in the context of both
`disclosures.
`In addition, the assertions by Petitioner and its declarant, i.e., that
`touch screens of the era rarely supported proximity detection and could
`cause unintended selections (Pet. 32–33), can be taken as a rationale to not
`employ the processes of Murase, as opposed to suggesting differing
`processes, as suggested by Petitioner. We are not persuaded that persons of
`ordinary skill in the art would have been persuaded to employ technology
`that was expensive and prone to error, as suggested; more likely they would
`have sought out alternate technologies that were not defined by such
`deficiencies. In the case of Murase, its specific teachings are directed to use
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`of proximity detection and enlargement to avoid incorrect selection, which
`undermine the rationale being proffered for its combination with Heikkinen.
`We are also persuaded that the proffered combination of Murase and
`Heikkinen would change the “basic principles under which the [prior art]
`was designed to operate.” In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959).
`Replacing a system that that allows for identification and selection upon
`touch, i.e., Murase, with a system of protracted touch with magnification and
`selection, i.e., Heikkinen, would change the manner that the system in
`Murase was designed to operate. For this additional reason, we are not
`persuaded by Petitioner that one of ordinary skill in the art would have been
`motivated to combine the teachings of Murase and Heikkinen as suggested
`by Petitioner.
`
`As such, we are not persuaded that the subject matter of claims 1, 2, 6,
`and 7 would have been obvious over Murase and Heikkinen. With respect
`to this ground of unpatentability, we are not persuaded that there is a
`reasonable likelihood that Petitioner would prevail with respect to
`challenged claims 1, 2, 6, and 7.
`B. Obviousness over Murase, Heikkinen, and Priestman
`With respect to claims 3–5, Petitioner asserts that those claims would
`have been obvious over Murase, Heikkinen, and Priestman. Pet. 50–55.
`This ground of unpatentability relies on the ground discussed above, namely
`the combination of Murase and Heikkinen. Id. at 52–55. Petitioner supplies
`a motivation to combine Priestman with Murase and Heikkinen (id. at 51–
`52), but does not cure the deficiencies we determined above with respect to
`the combination of references. Because of this, as we are not persuaded by
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`the prior ground, we likewise are not persuaded by Petitioner with respect to
`the ground applying Murase, Heikkinen, and Priestman to claims 3–5.
`C. Obviousness over Björk
`Petitioner asserts that claims 1, 3, 4, and 6 would have been obvious
`over Björk. Pet. 55–63. We begin with an overview of Björk, and then
`discuss Petitioner’s arguments regarding the modification of Björk and its
`application to the challenged claims.
`Björk
`1.
`Björk describes WEST, a web browser for small terminals, such as
`Personal Data Assistants (PDAs). Ex. 1007, Abstract. The browser presents
`web pages as a series of cards, and uses a process of “flipping” between
`cards to navigate between the cards and to allow for a focus on a particular
`card. Id. ¶¶ 17, 29. As shown in Figure 1, reproduced below, a focus card is
`enlarged, with the other cards displayed as smaller thumbnails to provide
`context.
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`Figure 1 is a picture of the WEST browser on a simulated Palm OSTM
`display. Id. ¶ 3. A user can point to a card to make it the focus card and
`point to it again to display the card in full-screen mode. Id. ¶¶ 29, 53. The
`enlarged view facilitates the reading of card content and selection of
`material. Id. ¶¶ 14, 33, 42, 53.
`Proposed Modification of Björk
`2.
`Petitioner argues that the WEST browser was disclosed as running on
`a Palm device having a PalmOS such that the Palm device would have
`included “a non-transitory computer readable medium embodying software.”
`Pet. 57 (citing Ex. 1002 ¶ 151). Petitioner also asserts that Björk discloses
`GPRS (General Packet Radio Service) and WAP (Wireless Application
`Protocol), such that its mobile device would have necessarily included
`wireless modems to modulate between data and wireless transmission
`signals. Id. at 58 (citing Ex. 1002 ¶ 153). Further, Petitioner asserts that one
`of ordinary skill in the art would have understood that Björk’s browser
`would have run on top of an operating system, utilizing a processor
`connected to the modem and display. Id. at 59 (citing Ex. 1002 ¶¶ 155–
`156). Lastly, Petitioner asserts that a person of ordinary skill in the art
`would have considered it obvious to tap the center of the focus card, to
`render it in a zoomed-in fashion at a larger scale, as tapping it near the edge
`would have risked erroneously selecting a neighboring card. Id. at 59 (citing
`Ex. 1002 ¶ 163).
`Patent Owner’s Rebuttal to Obviousness over Björk
`3.
`With respect to this ground of unpatentability, Patent Owner argues
`that the portions of Björk cited by Petitioner fail to disclose the selection of a
`feature based on an image at a second scale, per claims 1 and 6. Prelim.
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`Resp. 48. Patent Owner points out that Petitioner cites paragraphs 38 and 43
`of Björk, as well as figures 4 and 5, as disclosing the selection of a feature.
`Id. (citing Pet. 60). Patent Owner argues that these cited portions describe
`browsing the cards in a deck and an overview of system components, but do
`not disclose selection of a feature based on an image displayed at a second
`scale. Id. We agree with Patent Owner.
`Björk makes clear that web pages to be viewed on the WEST browser
`are pre-processed by a proxy server that divides a page into smaller pages, or
`cards, determines keywords summarizing each card based on its text, and
`extracts hyperlinks for a link view. Ex. 1007 ¶ 11. From that preprocessing,
`the cards provide a “thumbnail view,” with miniature views of the cards, a
`“keyword view,” with keywords extracted from the card presented, and a
`“link view,” displaying links available on each card. Id. ¶ 12. Examples of
`each, as provided in Björk, are reproduced below:
`
`
`
` links
`
` keywords
` expanded thumbnail
`Although the link “Chicago Cubs” is visible in the expanded thumbnail view
`of the card, i.e., portion of the webpage, Björk makes clear that the user
`needs to switch to the link view “since she is looking for a link to the chat
`page.” Ex. 1007 ¶ 40. Björk does not specify that the expanded thumbnail
`version allows for the selection of the link, and instead provides an alternate
`functionality to allow for the selection of a link. As such, although
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`Petitioner asserts that Björk “describ[es] clicking on link while page is in
`focus” (Pet. 60), we are not persuaded that Björk does teach or suggest what
`Petitioner has asserted. Based on the evidence Petitioner cites, Björk does
`not teach or suggest the selection of a feature based on an image at a second
`scale, per claims 1 and 6.
`In addition, claims 1 and 6 also specify that the zoomed-in version is a
`“part of the image at the first scale substantially centered around the touch
`location.” Petitioner asserts that tapping near the center of a card would
`have been obvious to avoid erroneous selections of other cards (Pet. 62), but
`we are not persuaded that selection near the center of the card would be
`warranted in view of the disclosure of Björk. Given the preprocessing in
`Björk, making a particular card a focus card and zooming-in on that card
`does not depend on what portion of a particular card is selected. Although
`we agree with Petitioner that it might have been obvious to select near the
`center, the part of the image upon which zooming-in occurs would not be
`based on the selection of the card as the focus card.
`
`As such, we are not persuaded that the subject matter of claims 1, 3, 4,
`and 6 would have been obvious over Björk. With respect to this ground of
`unpatentability, we are not persuaded that there is a reasonable likelihood
`that Petitioner would prevail with respect to challenged claims 1, 3, 4, and 6.
`D. Obviousness over Björk, Robertson, Seidensticker, and Brooks
`Petitioner also asserts the following grounds of unpatentability based
`on Björk, discussed in the prior section: 1) claims 1–4, 6, and 7 as obvious
`over Björk, Robertson, and Seidensticker; 2) claim 5 as obvious over Björk
`and Brooks; and 3) claim 5 as obvious over Björk, Robertson, Seidensticker,
`and Brooks. Pet. 63–81.
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`The second ground identified above depends on the obviousness of
`independent claim 1 over Björk alone; as we are not persuaded by the prior
`ground, we likewise are not persuaded by Petitioner with respect to the
`ground applying Björk and Brooks.
`Similarly, the reasonable likelihood of Petitioner prevailing as to the
`ground applying Björk, Robertson, Seidensticker, and Brooks, of claim 5,
`stands or falls with Petitioner prevailing with respect to the ground applying
`Björk, Robertson, and Seidensticker. We discuss the latter ground below,
`beginning with overviews of Robertson and Seidensticker.
`Robertson
`1.
`Robertson is directed to a method for displaying an image on a display
`surface, which preserves context and detail information when the image is
`compressed to fit onto a display surface. Ex. 1010, Abstract. Robertson
`addresses “the problem of how to display an image containing large amounts
`of information on a display where the image is too large to be displayed in
`its entirety at full resolution.” Id. at 1:20–25. The system in Robertson
`simulates the placement of a lens on top of a large image such as a multi-
`page document, where the user controls the position and size of the lens.
`Id. at Abstract, 4:29–37. The enlarged portion is shown in a thick outline in
`Figure 8 of Robertson, reproduced below.
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`Figure 8 is a displayed image of a multi-page document as seen through an
`image lens with text in the side panel’s greeked. Id. at 5:7–9.
`Seidensticker
`2.
`Seidensticker describes techniques for displaying a “relatively large
`set of image data” on “a relative smaller physical display device.” Ex. 1011,
`Abstract. Seidensticker discloses a “fisheye” display embodiment in which
`a region is displayed at full resolution, adjoining other regions in which the
`resolution diminishes at successively spaced pixels, where the region may be
`centered around the position of a stylus. Id. at 3:18–20, 5:51–54.
`3. Motivation to Combine Björk, Robertson, and Seidensticker
`Petitioner asserts that all three references, Björk, Robertson, and
`Seidensticker, address the same fundamental problem, that Björk expressly
`recognizes the work of the inventors of Robertson, and that all three
`references allow a user to view one part of a dataset in detail without losing
`the context of all of the data. Pet. 67–69. Additionally, Petitioner asserts
`that persons of ordinary skill in the art would have recognized the
`advantages of Robertson’s document lens approach over Björk’s flip-
`zooming approach, and would have been motivated to include
`
`18
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`IPR2018-00185
`Patent RE43,564 E
`
`Seidensticker’s teaching of centering the focus area around the touch
`location because it was one of only a few commonly use configurations.
`Id. at 69–73.
`Patent Owner’s Rebuttal to Obviousness over Björk, Robertson, and
`4.
`Seidensticker
`Patent Owner responds to this ground of unpatentability by pointing
`out that Björk’s handheld device has extremely limited processing
`capability, and that Robertson’s lens interface requires a specialized 3D-
`processing workstation to accomplish the rendering and transformation
`operations associated with the interface. Prelim. Resp. 55. Patent Owner
`continues that Björk acknowledges the considerable challenges in designing
`handheld device interfaces given that processor and memory capabilities of a
`handheld device “are of course far below the specification of any current
`desktop computer.” Id. (citing Ex. 1007 ¶ 8). Patent Owner also points out
`that Björk details its handheld devices “are not capable of any advanced
`visual calculations” needed to provide smooth graphical transformations and
`provide responsive interactions. Id. at 55–56 (citing Ex. 1007 ¶ 26). Patent
`Owner also points out the specific computation requirements for systems
`implementing Robertson’s processes, including a specialized 3D graphics
`engine. Id. at 56 (citing Ex. 1010, 8:22–33). Because of these factors,
`Patent Owner argues that a person of ordinary skill in the art “would have
`had no reason to incorporate Robertson’s lens approach with Björk’s
`handheld device” because Björk’s handheld device would not possess the
`computing capability required. We agree with Patent Owner.
`Claims 1 and 6 both require that the data processing system of the
`handheld communication device be capable of “processing the received data
`
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`IPR2018-00185
`Patent RE43,564 E
`
`and for rendering an image corresponding to the data received.” In the
`context of Björk, this is accomplished with the limited processing power of
`the handheld device through pre-processing of webpages before they are
`sent to the device. See Ex. 1007 ¶¶ 11, 12. We are persuaded that to
`incorporate Robertson’s lens interface into Björk’s system would overwhelm
`the limited processing power of the handheld device.
`In addition, we are not persuaded that the incorporation of Robertson
`and Seidensticker into Björk would overcome the problems discussed above
`with respect to Björk alone, i.e., Björk does not teach or suggest the
`selection of a feature based on an image at a second scale, per claims 1 and
`6. The use of Robertson’s document lens approach and/or Seidensticker’s
`teaching of centering the focus area around the touch location would not
`address the noted deficiencies of Björk.
`
`As such, we are not persuaded that the subject matter of claims 1–4, 6,
`and 7 would have been obvious over Björk, Robertson, and Seidensticker.
`Similarly, we are also not persuaded that the subject matter of claim 5 would
`have been obvious over Björk, Robertson, Seidensticker, and Brooks. With
`respect to these grounds of unpatentability, we are not persuaded that there is
`a reasonable likelihood that Petitioner would prevail with respect to
`challenged claims 1–7.
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to any challenged
`claim of the ’564 Patent.
`
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`
`V. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`
`
`21
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`IPR2018-00185
`Patent RE43,564 E
`
`PETITIONER:
`
`Christina J. McCullough
`Patrick J. McKeever
`PERKINS COIE LLP
`MSFT-564-IPR-Service@perkinscoie.com
`
`
`PATENT OWNER:
`
`Justin J. Oliver
`Stephen K. Yam
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`PhilipsIPR@fchs.com
`
`22
`
`
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