Trials@uspto.gov
`571-272-7822
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` Paper 39
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`Date: January 15, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`IPR2018-01245
`Patent 8,665,239 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, AMANDA F. WIEKER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`

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`IPR2018-01245
`Patent 8,665,239 B2
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`
`I.
`
`INTRODUCTION
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–4 (“the challenged claims”) of U.S. Patent No. 8,665,239
`B2 (Ex. 1001, “the ’239 patent”). Paper 2 (“Pet.”). Qualcomm Incorporated
`(“Patent Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`We instituted an inter partes review of challenged claims 1–4 on all grounds
`of unpatentability, pursuant to 35 U.S.C. § 314. Paper 12 (“Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 18, “PO
`Resp.”), Petitioner filed a Reply (Paper 23, “Pet. Reply”), and Patent Owner
`filed a Sur-Reply (Paper 28, “PO Sur-Reply”). Additionally, Patent Owner
`filed a Contingent Motion to Amend, proposing claims 5–8 as substitutes for
`challenged claims 1–4, if those claims are found unpatentable. Paper 19
`(“MTA”). Petitioner filed an Opposition (Paper 24, “Pet. Opp. MTA”),
`Patent Owner filed a Reply (Paper 29, “PO Reply MTA”), and Petitioner
`filed a Sur-Reply (Paper 33, “Pet Sur-Reply MTA”).
`An oral hearing was held on October 10, 2019, and a transcript of the
`hearing is included in the record. Paper 38 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has shown
`by a preponderance of the evidence that challenged claims 1–4 of the
`’239 patent are unpatentable. Additionally, Petitioner has shown that
`proposed substitute claims 5–8 are also unpatentable.
`
`B. Related Proceeding
`The parties identify the following matter related to the ’239 patent
`(Pet. 68–69; Paper 3, 2): Qualcomm Incorporated v. Apple Inc., Case No. 3-
`
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`Patent 8,665,239 B2
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`17-cv-02403 (S.D. Cal.). Petitioner informs us that this matter has been
`dismissed. Paper 21, 1.
`
`C. The ’239 Patent
`The ’239 patent is titled “Method and Apparatus Continuing Action of
`
`User Gestures Performed Upon a Touch Sensitive Interactive Display in
`Simulation of Inertia,” and issued March 4, 2014. Ex. 1001, at codes (45),
`(54). The ’239 patent claims ultimate priority to U.S. Application
`No. 10/913,105, filed on August 6, 2004. Id. at codes (21), (22), (60). Thus,
`Petitioner contends the earliest priority date is August 6, 2004. Pet. 2.
`
`The ’239 patent concerns gestures applied to a touch-sensitive display
`surface that result in execution of a predetermined action associated with the
`gesture, e.g., zooming into displayed content. Ex. 1001, 1:40–46, 2:13–22,
`Fig. 1B. The ’239 patent explains that prior interactive display systems
`lacked intuition, meaningful interaction, and robust gesture sets. Id. at 1:61–
`67. The ’239 patent attempts to address these deficiencies. Id. at 2:7–9.
`
`To that end, the ’239 patent discloses table 122 with touch-sensitive
`display surface 124. Ex. 1001, 3:10–11, Fig. 1A–1C. Table 122 detects
`touch input from a user and computer 126 identifies—from a predefined set
`of known gestures—one or more gestures associated with that input. Id. at
`3:10–16; see also id. at 4:4–10 (disclosing other display configurations).
`The ’239 patent describes various approaches to detect when and where a
`user touches the display surface. Id. at 4:24–65. In all approaches,
`computer 126 detects the time and location of the touch contact with the
`display surface. Id. at 5:1–2, 7:28–32, Fig. 2 (steps 201–202). Additionally,
`the force of the touch contact may be detected, and the velocity of the touch
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`contact may be computed. Id. at 5:14–16, 7:39–41, 7:45–46, Fig. 2
`(steps 204, 206).
`
`Then, “computer 126 determines whether activity of the current
`[touch] contact matches a predetermined pattern, and therefore constitutes a
`‘gesture,’” for example, by comparing detected position, size, movement,
`velocity, and/or force to a dictionary of predetermined gestures. Id. at 7:58–
`67, Fig. 1A (dictionary 126A, associated actions 126B), Fig. 2 (step 208).
`If a gesture is not recognized, the user may be alerted, and the detection and
`recognition process will continue. Id. at 8:1–7, Fig. 2 (steps 208a–b, 209).
`On the other hand, if a gesture is recognized, the action associated with the
`identified gesture is performed, for example, to pan, zoom, or rotate the
`content shown on the display. Id. at 8:7–20, Fig. 2 (steps 208c, 214, 216),
`Figs. 3a–3d, Fig. 4.
`
`The ’239 patent also discloses that the system may detect whether the
`gesture terminates with non-zero velocity, such that the action associated
`with the gesture is executed in a manner that imparts inertia to the action,
`e.g., by continuing and then slowing performance of the action. Id. at 8:21–
`9:46, Fig. 2 (steps 218, 222, 224).
`
`D. Illustrative Claim
`The ’239 patent includes four claims, all of which are challenged.
`Claims 1 and 3 are independent. Claim 1 is illustrative and is reproduced
`below, with bracketed letters added, as in the Petition (Pet. 11–34).
`1. A computer implemented method performed in a
`system including a processor coupled to digital data storage and
`a display having a touch-sensitive display surface, the method
`comprising the tasks of:
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`[a] in the digital data storage, storing a record defining a
`collection of multiple user gestures, each user gesture
`executable by touching the display, and further storing for
`each user gesture an assignment of one or more of multiple
`prescribed operations of modifying subject matter presented
`by the display;
`[b] for each of one or more touches experienced by the
`display surface, the processor determining the magnitude of
`the touch upon the display surface;
`[c] based on one or more prescribed properties of the one
`or more touches experienced by the display surface, the
`processor identifying from the collection of user gestures at
`least one user gesture executed by the one or more touches;
`[d] the processor identifying the one or more prescribed
`operations assigned to the executed user gesture, and causing
`the display to modify the subject matter presented by the
`display according to the identified one or more operations;
`and
`[e] where the tasks are further performed according to any
`or both of:
`(1) the identification of the executed user gesture is
`performed based on properties including the determined
`magnitude of the one or more touches;
`[f] (2) as to the manner in which the subject matter
`presented by the display is modified according to the
`identified one or more operations, said manner is further
`responsive to the determined magnitude of the one or more
`touches.
`Ex. 1001, 12:16–47. Independent claim 3 recites a “non-transitory computer
`readable storage medium . . .” and recites substantially similar limitations as
`those in claim 1. Id. at 12:58–14:7.
`
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`E. Applied References
`Petitioner relies upon the following references:
`Hullender et al., U.S. Patent Application Publication
`No. 2003/0156145 A1, published August 21, 2003, filed
`February 8, 2002 (Ex. 1005, “Hullender”);
`PAUL E. RENAUD, INTRODUCTION TO CLIENT/SERVER
`SYSTEMS (2d ed. 1996) (Ex. 1006, “Renaud”);
`Kiraly et al., U.S. Patent No. 6,249,606 B1, issued
`June 19, 2001, filed February 19, 1998 (Ex. 1007, “Kiraly”);
`and
`
`Agulnick et al., U.S. Patent No. 5,347,295, issued
`September 13, 1994, filed October 31, 1990 (Ex. 1008,
`“Agulnick”).
`Pet. 4–5. Petitioner asserts that each reference was published before the
`earliest priority date of the ’239 patent. Id.
`Among other evidence, Petitioner also relies upon the Declaration of
`Dr. Brad A. Myers (Ex. 1003, “Myers Declaration”), a First Supplemental
`Declaration of Dr. Brad A. Myers (Ex. 1017, “Supplemental Myers
`Declaration”), and a Second Supplemental Declaration of Dr. Brad A. Myers
`(Ex. 1018, “Second Supplemental Myers Declaration”).
`Among other evidence, Patent Owner relies upon a Declaration of
`Dr. Jacob O. Wobbrock (Ex. 2001, “Wobbrock Declaration”),
`a February 12, 2019, Declaration of Dr. Jacob O. Wobbrock (Ex. 2007,
`“Second Wobbrock Declaration”), a Declaration of Jacob O. Wobbrock in
`Support of Patent Owner Response (Ex. 2011, “Third Wobbrock
`Declaration”), and a Supplemental Declaration of Jacob O. Wobbrock
`(Ex. 2047, “Fourth Wobbrock Declaration”).
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`Additionally, the parties rely upon deposition testimony from
`Dr. Myers (Ex. 2009; Ex. 2048) and Dr. Wobbrock (Ex. 1016).
`
`F. Asserted Grounds of Unpatentability
`We instituted an inter partes review based on all grounds presented in
`the Petition (Inst. Dec. 6, 36):
`References
`
`35 U.S.C. §
`
`Claims
`Challenged
`1–4
`1–4
`
`Hullender, Renaud
`Kiraly, Agulnick
`
`103
`103
`
`II. BACKGROUND
`A. Claim Construction
`The Petition was filed June 18, 2018, prior to the effective date of the
`rule change that replaces the broadest reasonable interpretation standard.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018). We, therefore, apply the broadest reasonable
`interpretation standard in this proceeding. As such, the ’239 patent’s claim
`terms are given their broadest reasonable interpretation in light of the
`specification. 37 C.F.R. § 42.100(b) (2017). “Under a broadest reasonable
`interpretation, words of the claim must be given their plain meaning, unless
`such meaning is inconsistent with the specification and prosecution history.”
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`On this record, and consistent with the parties’ briefing, no claim term
`requires express construction. Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Pet. 5
`(“[A]ll terms should be given their plain meaning.”); PO Resp. 6 (“Patent
`Owner does not propose any terms for construction.”).
`
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`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 based on 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.1 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination
`of teachings, we must also “determine whether there was an apparent reason
`to combine the known elements in the fashion claimed by the patent at
`issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441, F.3d 977, 988 (Fed.
`Cir. 2006)). Whether a combination of elements would have produced a
`predictable result weighs in the ultimate determination of obviousness. Id. at
`416–417.
`In an inter partes review, Petitioner must show with particularity why
`each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`must support its challenge by a preponderance of the evidence. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d).
`
`
`1 Patent Owner does not present objective evidence of nonobviousness.
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`C. Level of Ordinary Skill in the Art
`In the Institution Decision, we accepted the parties’ agreement that a
`person of ordinary skill “would have had a Bachelor of Science degree in
`‘electrical engineering, computer engineering, computer science,’ or a
`similar field, and at least two years of ‘experience in touch sensitive
`computer systems or gesture-based control of computer systems.’” Inst.
`Dec. 9; Pet. 5; Prelim. Resp. 8.
`Neither party disputes this finding in post-institution briefing. PO
`Resp. 6; Pet. Reply. Accordingly, we apply this skill level, which is
`supported by evidence of record. See Ex. 1003 ¶ 10; Ex. 2001 ¶¶ 37–38;
`Ex. 1001, 1:40–41.
`
`III. PATENTABILITY OF CLAIMS 1–4
`A. Obviousness over the Combined Teachings
`of Hullender and Renaud
`Petitioner contends that claims 1–4 of the ’239 patent are obvious
`over the combined teachings of Hullender and Renaud. Pet. 6–38.
`
`1. Overview of Hullender (Ex. 1005)
`Hullender is a U.S. patent application titled “Ink Gestures,” which
`concerns capturing and implementing gestures that are handwritten on a pen-
`based computing platform. Ex. 1005, (54), (57). Specifically, Hullender
`discloses a stylus-based computer processing system, such as tablet PC 201.
`Id. ¶ 36, Fig. 2. Tablet 201 includes display surface 202, upon which a user
`may write with stylus 204. Id. ¶ 36. Tablet 201 interprets marks made with
`stylus 204, to perform conventional computer tasks. Id. Hullender also
`discloses that gestures may be written onto the display surface with the
`stylus. Id. ¶¶ 41, 43. Gestures may have, e.g., an action area, position,
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`size/extent, and shape, as well as one or more default actions associated with
`the gesture. Id. ¶¶ 44, 46; see also id. ¶¶ 48–53 (action area), 54–55
`(position), 56–58 (size/extent), 59–60 (shape).
`Hullender discloses exemplary gestures including, for example, a
`“selection” gesture in the form of a left bracket (i.e., “[”), which causes the
`computer to “select” a portion of the content (e.g., a word) displayed on the
`tablet PC. Id. ¶ 85; see also id. ¶¶ 81–90 (other gestures). These gestures
`may be represented in a data structure, such as that depicted in Hullender’s
`Figure 7, which is reproduced below (see id. ¶ 92):
`
`
`Figure 7 depicts exemplary data structure 701, including row 704, which
`reflects the content associated with the “selection” gesture discussed above.
`Id. ¶ 16, Fig. 7. Data structure 701 includes the following entries for each
`gesture:
`gesture ID 705 (e.g., N);
`normalized gesture shape 706 (e.g., “[”);
`the action area 707 associated with the gesture (e.g., the word to the
`right of the bracket drawn by the stylus); and
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`the control method or property 708 associated with the gesture, i.e.,
`the action to be taken when a gesture is recognized (e.g., begin
`selection).
`Id. ¶¶ 93–94.
`Hullender discloses several exemplary processes for recognizing a
`gesture input by the stylus. For example, gesture recognition may be
`performed by the system (Figures 4, 8) or by an application (Figure 5). Id.
`¶¶ 62–67 (Fig. 4, recognition through “scaling, reorient[ing], and/or other
`operations”), 68–70 (Fig. 5). In connection with Figure 8, Hullender
`discloses that the system determines whether a gesture has been created by
`receiving the stylus stroke (Fig. 8, step 801); normalizing it (Fig. 8, step
`802); and performing “any one or more” of the following steps to determine
`if the stroke is a gesture (Fig. 8, step 803):
`(1) collapsing the stroke into a binary single point stream;
`(2) scaling the coordinates to a predetermined size;
`(3) scaling the entry time of the points to determine a predetermined
`number of points;
`(4) computing additional items (e.g., stroke windings, duration, etc.);
`(5) computing Chebychev polynomials for x, y, z coordinates;
`(6) combining polynomial(s) and inputting into Bayes net(s); and
`(7) getting a score from each Bayes net, wherein if exactly one net
`recognizes a gesture, the gesture is passed to the application.
`Id. ¶¶ 71–79. If a gesture is recognized, which may include the matching of
`Bayes nets as described above, the system “sends the gesture ID and Objects
`in the action area to the system or application” (Fig. 8, step 806). Id. ¶ 79.
`
`2. Overview of Renaud (Ex. 1006)
`Renaud is a book titled “Introduction to Client/Server Systems, A
`Practical Guide for Systems Professionals.” Ex. 1006, 1. In a chapter
`discussing development and design principles, Renaud explains that it is
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`necessary to “strike a balance between centralized and distributed access,”
`recognizing that communication of data between clients and servers
`“introduce[s] the potential for latency, data loss, errors, or even total
`failure.” Id. at 20–21. Renaud also states that reducing data movement
`conserves bandwidth and reduces network traffic. Id. at 41. Renaud
`explains that one way of doing so is by replicating static, unchanging data at
`the client, so that it can be accessed locally. Id.
`
`3. Claim Analysis
`Petitioner contends that claims 1–4 of the ’239 patent would have
`been obvious over the combined teachings of Hullender and Renaud.
`Pet. 6–38. Patent Owner disagrees, arguing that (1) Renaud is non-
`analogous art, and (2) Hullender does not satisfy the “identifying” limitation
`recited in, e.g., claim limitation 1[c]. PO Resp. 6–30.
`
`a) Claim 1
`The Proposed Combination
`i.
`Petitioner contends it would have been obvious to a person of
`ordinary skill in the art to have (1) locally stored and (2) locally processed
`the gesture information taught by Hullender, in view of Renaud’s teachings.
`Pet. 9–11; Ex. 1003 ¶¶ 64–69. According to Petitioner, because Hullender’s
`tablet can operate in a networked environment, with local or remote storage
`and processing, a person of ordinary skill would have looked to Renaud’s
`teachings regarding the advantages of local storage and processing, e.g.,
`bandwidth conservation and minimized data loss. Pet. 9–10. Additionally,
`Petitioner contends that this modification “would allow for gesture control
`even when the tablet was not connected to a network, e.g., when the tablet
`was offline.” Id. at 11.
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`Specifically, Petitioner contends that an ordinarily skilled artisan
`“would have found it obvious to store Hullender’s data structure 701 ‘in the
`digital data storage’ of the tablet” to achieve these advantages. Pet. 19.
`Additionally, Petitioner contends that an ordinarily skilled artisan “would
`have found it obvious for Hullender’s tablet PC processor to determine the
`magnitude [of a touch] rather than a processor of a remote computer,” and
`“to identify operations and cause the display to modify presented subject
`matter in light of Renaud’s teachings to avoid data transfer.” Pet. 23, 30–31.
`Patent Owner does not dispute Petitioner’s contentions. PO Resp. 6–
`30; PO Sur-Reply 1–9; Ex. 2011 ¶¶ 41–71 (no dispute).
`We are persuaded by Petitioner’s undisputed contention that it would
`have been obvious to a person of ordinary skill in the art to store Hullender’s
`gestures and associated operations in local digital data storage in order to
`conserve bandwidth and preserve data integrity as suggested by Renaud, and
`to allow the use of gestures in an offline environment. Pet. 19. Dr. Myers’
`testimony supports this determination. Ex. 1003 ¶¶ 67–69. Dr. Myers
`testifies that a person of ordinary skill in the art “would have recognized that
`these disadvantages [(i.e., associated with data transfer)] could be avoided
`by storing the data structure locally,” which also “would allow for gesture
`control of Hullender’s tablet PC even when the tablet PC was not connected
`to a network.” Id. ¶ 69. Dr. Myers’ testimony is also supported by
`Hullender and Renaud. Ex. 1005 ¶ 31 (teaching local hard disk drive 170,
`magnetic disk drive 180, and optical disk drive 191), ¶ 33 (“The computer
`100 can operate in a networked environment.”); Ex. 1006, 21 (“Minimize
`data transfer between clients and sever” to avoid “latency, data loss, errors,
`
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`or even total failure.”), 41 (“Reducing data movement also conserves
`precious network bandwidth.”).
`Also, we are persuaded by Petitioner’s undisputed contention that a
`skilled artisan would have found it obvious for Hullender’s processor to
`determine locally the magnitude of the user’s touch, identify prescribed
`operations, and cause the display to modify the subject matter, as suggested
`by Renaud, to conserve bandwidth, preserve data integrity, and allow use of
`gestures in an offline environment. Pet. 23, 30–31. Dr. Myers’ testimony
`supports this determination. Ex. 1003 ¶¶ 64–66. Dr. Myers testifies that a
`person of ordinary skill in the art “would also have recognized that if the
`local processor on Hullender’s tablet PC carried out at least some of these
`functions,” like determining stroke magnitude and identifying actions
`associated with gestures, “less or no data transfer would need to occur, and
`the potential disadvantages of data transfer to the remote computer, as
`described by Renaud, could be avoided.” Id. ¶ 66. Dr. Myers also testifies
`that this “would allow for gesture control of Hullender’s tablet PC even
`when the tablet PC was not connected to a network . . . making the gesture
`control technology more versatile and available to a user in a wider range of
`situations, including both online and off-line situations.” Id. Dr. Myers’
`testimony is also supported by Hullender and Renaud. Ex. 1005 ¶ 30
`(teaching processing unit 110), ¶ 33; Ex. 1006, 21, 41.
`
`Analogous Art
`
`Notwithstanding our conclusion that a skilled artisan would have been
`
`motivated toward the proposed modifications, the asserted references must
`be analogous to the challenged patent to qualify as prior art appropriate for
`inter partes review. Thus, the reference must be (1) “in the field of . . .
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`endeavor,” or (2) “reasonably pertinent to the particular problem with which
`the inventor was concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
`1992). A reference is “reasonably pertinent” if it “logically would have
`commended itself to an inventor’s attention in considering his problem.” In
`re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007).
`Patent Owner argues that Renaud does not qualify as prior art because
`it is not analogous art to the ’239 patent. PO Resp. 6. Patent Owner makes
`procedural and substantive arguments in support. Id. at 6–22.
`
`Patent Owner’s Procedural Arguments
`
`Patent Owner argues that Petitioner was obligated to establish, in the
`Petition, that Renaud is analogous. Id. at 7–8, 10. Because “the Petition is
`silent on this issue,” Patent Owner contends that Petitioner fails to meet its
`burden. Id. at 8–9; PO Sur-Reply 1–2.
`In its Reply, Petitioner contends that “clear statements in the ’239
`Patent and in Renaud,” supported by Dr. Myers’ testimony, “demonstrate
`that Renaud is analogous.” Pet. Reply 8. Id. Additionally, Petitioner cites
`non-precedential PTAB cases in which analogous art findings were based on
`arguments made in petitioner’s reply,2 or the challenged patent and/or
`asserted prior art.3 Id. at 9 n.3.
`
`
`2 Parrot S.A. v. Drone Techs., Inc., IPR2014-00730, Paper 27 (Oct. 20,
`2015); Sony Comput. Entm’t Am. LLC v. Aplix IP Holdings Corp., IPR2015-
`00476, Paper 32 (June 20, 2016); DynaEnergetics US, Inc. v. GeoDynamics,
`Inc., IPR2016-01850, Paper 27 (Mar. 1, 2018).
`3 Samsung Elecs. Co., Ltd. v. Advanced Touchscreen, IPR2016-00653, Paper
`43 (Aug. 29, 2017); TCL Corp. v. Telefonaktiebolaget LM Ericsson,
`IPR2015-01584, Paper 74 (Jan. 24, 2017).
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`Patent Owner is correct that Petitioner bears the burden of persuasion
`in proving obviousness by a preponderance of the evidence, and that non-
`analogous art may not form the basis of an obviousness challenge. PO
`Resp. 7–8. We do not agree, however, that this requires Petitioner to—in its
`Petition—affirmatively predict and preempt all arguments against a
`reference’s status as “prior art,” including whether it is analogous. Id.
`Patent Owner does not identify any support that compels this result.
`Tr. 26:24–27:4, 27:8–10.
`This argument ignores the iterative nature of inter partes reviews, in
`which parties exchange and respond to argument and evidence over the
`course of trial. “The purpose of the trial in an inter partes review
`proceeding is to give the parties an opportunity to build a record by
`introducing evidence—not simply to weigh evidence of which the Board is
`already aware.” Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin
`Pharma. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also id. at 1366
`(“[T]he introduction of new evidence in the course of the trial is to be
`expected in inter partes review trial proceedings and, as long as the
`opposing party is given notice of the evidence and an opportunity to respond
`to it, the introduction of such evidence is perfectly permissible under the
`APA.”); Pet. Reply 8; PO Sur-Reply 1–7.
`Patent Owner cites Dynamic Drinkware, LLC v. National Graphics,
`Inc. to support its position. PO Resp. 7 (citing 800 F.3d 1375 (Fed. Cir.
`2015)). As discussed therein, an inter partes review petitioner has both the
`“burden of persuasion to prove unpatentability” and also “the initial burden
`of production,” which “is a shifting burden, ‘the allocation of which depends
`on where in the process of trial the issue arises.’ The burden of production
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`may entail ‘producing additional evidence and presenting persuasive
`argument based on new evidence or evidence already of record.’” 800 F.3d
`1375 (citation omitted). In Dynamic Drinkware, the court determined that
`the petitioner satisfied its burden of production “by arguing that [the asserted
`reference to] Raymond anticipated the asserted claims of the [challenged]
`patent under § 102(e)(2).” Id. at 1379–1380. The court confirmed that the
`burden of production then shifted to the patent owner to “argue or produce
`evidence . . . that Raymond is not prior art because the asserted claims in the
`[challenged] patent are entitled to the benefit of a filing date (constructive or
`otherwise) prior to the filing date of Raymond.” Id. at 1380. Following this
`showing, “the burden of production returned to [petitioner] to prove that
`either the invention was not actually reduced to practice as argued, or that
`the Raymond prior art was entitled to the benefit of a filing date prior to the
`date of [the challenged claims’] reduction to practice.” Id.
`Similarly, in this case, Petitioner argued, in its Petition, that Hullender
`and Renaud would have rendered obvious the challenged claims under 35
`U.S.C. § 103. Id. at 1379. This contention parallels the Dynamic Drinkware
`petitioner’s contention, and we find it sufficient to shift the burden of
`production to Patent Owner “to argue or produce evidence . . . that [Renaud]
`is not prior art” because it is non-analogous. Id. at 1380.
`In our Institution Decision, we preliminarily found that evidence of
`record cited in the Petition—including the ’239 patent and Renaud—was
`sufficient to show that Renaud is analogous. Inst. Dec. 16. We requested
`that the parties build a record regarding this issue. Id. Per our request, the
`parties built that record, consistent with their shifting burdens. We disagree
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`with Patent Owner’s argument that we must ignore that record; instead, we
`resolve the issue of analogous art in view of the entire record.4
`
`Field of Endeavor
`
`Patent Owner argues that Renaud is not in the same field of endeavor
`
`as the ’239 patent. Patent Owner argues that “Renaud’s purpose is to teach
`how to design, implement, and use client/server systems.” PO Resp. 11–12.
`By contrast, “[t]he ʼ239 Patent is directed to touch technology.” Id. at 14;
`PO Sur-Reply 3–4. Patent Owner contends that these fields do not overlap.
`PO Resp. 16; PO Sur-Reply 3–4. According to Patent Owner, it is not
`enough that Renaud and the ’239 patent both relate to computer technology;
`a reference “must be more than ‘part of a common endeavor’ or ‘in the same
`general field.’” PO Resp. 15–16 (citations omitted); PO Sur-Reply 5.
`
`Petitioner criticizes Patent Owner’s characterization of the field as
`“inappropriately narrow.” Pet. Reply 2. According to Petitioner, the field of
`the ’239 patent is “computer systems implementation, albeit focused on
`touch technology.” Id. Petitioner contends that the ’239 patent specification
`
`
`4 This approach is consistent with Parrot S.A. v. Drone Technologies, Inc.,
`cited by Petitioner. Pet. Reply 8 n.3; Tr. 58:19–59:5. At oral hearing, Patent
`Owner argued that the panel in Parrot did not consider whether “Petitioner
`was improper for not addressing” analogous art in its Petition. Tr. 64:20–
`65:2. Notwithstanding the slightly different framing of the issue, the panel
`in Parrot explained that, at the time of the institution decision, “Petitioner
`had not had the opportunity to provide arguments and/or evidence as to why
`the applied references might, to the contrary, represent analogous art, and we
`had not had the opportunity to hear Petitioner’s views on the issue.” Parrot,
`IPR2014-00730, Paper 27 at 24. Additionally, the panel stated that, “[w]hen
`the analogous-art issue was raised by Patent Owner in its Patent Owner
`Response, it was incumbent upon Petitioner to demonstrate that [the asserted
`reference] is analogous art.” Id. at 25. We agree.
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`demonstrates “the centrality of computer system’s implementation to the
`patent’s touch technology.” Id. at 2–3. According to Petitioner, Renaud is
`in the same field because it concerns “computer systems implementation,
`focusing on client-server systems.” Id. at 4.
`When identifying the pertinent field of endeavor, we consider “the
`nature of the application and claimed invention in addition to the level of
`ordinary skill in the art.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004).
`For example, we consider “explanations of the invention’s subject matter in
`the patent application, including the embodiments, function, and structure of
`the claimed invention,” as reflected in the patent’s “written description and
`claims.” Id. Moreover, “it is necessary to consider ‘the reality of the
`circumstances’—in other words, common sense—in deciding in which fields
`a person of ordinary skill would reasonably be expected to look for a
`solution to the problem facing the inventor.” Id. (citations omitted).
`In light of these principles, we agree that Patent Owner’s
`characterization of the field is inappropriately narrow. The ’239 patent
`describes the “Field of the Invention” as follows:
`The present invention relates to interactive touch and
`force-sensitive displays controlled through user gestures. More
`particularly, the invention concerns the machine-implemented
`identification of particular human gestures from points of contact
`and applied force, and the implementation of predetermined
`machine-implemented actions pre-associated with the gestures.
`Ex. 1001, 1:39–46. Thus, Patent Owner is correct that the field includes
`“touch technology,” i.e., “interactive touch and force-sensitive displays
`controlled through user gestures . . . from points of contact and applied
`force.” Id. However, the field is not limited to this particular focus, because
`this definition do