Trials@uspto.gov
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`Paper No. 43
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`APPLE, INC.,
`Petitioner
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`v.
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`QUALCOMM, INC.,
`Patent Owner.
`
`__________
`
`Case IPR2018-01275
`Patent 9,203,940 B2
`
`__________
`Record of Oral Hearing
`Held: November 14, 2019
`__________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
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`571-272-7822
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`Paper No. 43
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`
`__________
`
`Case IPR2018-01275
`Patent 9,203,940 B2
`
`__________
`Record of Oral Hearing
`Held: November 14, 2019
`__________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
`
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`Case IPR2018-01275
`Patent 9,203,940 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`W. KARL RENNER, ESQ.
`DAN SMITH, ESQ.
`GRACE J. KIM, ESQ.
`TIMOTHY W. RIFFE, ESQ.
`Fish & Richardson
`1000 Maine Avenue, SW
`Suite 1000
`Washington, D.C. 20024
`202-626-6447
`renner@fr.com
`grace.kim@fr.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ELIOT D. WILLIAMS, ESQ.
`JOSEPH C. AKALSKI, ESQ.
`Baker Botts, LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`650-739-7511
`eliot.williams@bakerbotts.com
`
`
`
`The above-entitled matter came on for hearing on Thursday, November
`
`14, 2019, commencing at 10:02 a.m. at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`Patent 9,203,940 B2
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`P-R-O-C-E-E-D-I-N-G-S
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`10:02 a.m.
`JUDGE WORMMEESTER: Good morning. We have our final
`hearing in Case IPR201801275, Apple, Inc. v. Qualcomm, Incorporated,
`which concerns U.S. Patent Number 9,203,940.
`I’m Judge Wormmeester. Judges Fishman and Moore are appearing
`remotely. Let’s get the parties’ appearances, please, who do we have for
`Petitioner?
`MR. RENNER: Good morning, Your Honors. Karl Renner, from
`Fish and Richardson. I’m joined by three colleagues. I’m joined by Grace
`Kim, Dan Smith, and Tim Riffe.
`JUDGE WORMMEESTER: Okay. And, who will be presenting the
`argument?
`MR. RENNER: A combination of three, actually, I’ll begin, Dan
`Smith will follow, and Grace Kim will present, as well.
`JUDGE WORMMEESTER: Okay, great. Thank you. And, for --
`MR. RENNER: From a --
`JUDGE WORMMEESTER: - Patent Owner -- oh, I’m sorry, yes?-
`(Simultaneous speaking.)
`MR. RENNER: Oh, from a reservation of time standpoint, we --
`JUDGE WORMMEESTER: Oh, sure, we --
`MR. RENNER: - we thought we’d ---
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`JUDGE WORMMEESTER: - we can do that now.-
`MR. RENNER: - do this for 25 minutes.-
`JUDGE WORMMEESTER: Forty five minutes?
`MR. RENNER: Twenty five minutes.-
`JUDGE WORMMEESTER: Oh, 25, okay.
`MR. RENNER: And we have demonstratives, would you like a
`printed copy?
`JUDGE WORMMEESTER: Sure.
`MR. RENNER: Okay.
`JUDGE WORMMEESTER: Thank you. And, who do we have for
`Patent Owner?
`MR. WILLIAMS: Elliott Williams, at Baker Botts, for the Patent
`Owner, and with me, is Joe Akalski. And I, also, have a hard copy of our
`demonstratives.
`JUDGE WORMMEESTER: Sure. Welcome. We set forth the
`procedure, for today’s hearing, in our Trial Order, but just to remind
`everyone, the way this will work.
`Each party will have 60 minutes to present arguments. Petitioner has
`the burden and will go first and may reserve time for rebuttal. I understand
`that’s 25 minutes. Patent Owner will then have the opportunity to present its
`response and may also reserve time for surrebuttal.
`Please remember that, Judges Fishman and Moore will be unable to
`hear you, unless you speak into the microphone and, when referring to any
`demonstrative, please state the slide number, so they can follow along.
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`Please also remember that the demonstratives that you submitted are
`not part of the record. The record of the hearing will be the transcript.
`We will give you a warning, when you’re reaching the end of your
`argument time. Any questions, before we proceed?
`MS. KIM: I’m trying to get my slides to - my demonstratives to
`show on the screen.-
`JUDGE WORMMEESTER: Okay.
`PARTICIPANT: Did you unplug it? Because, if you don’t unplug
`it, it goes.
`MS. KIM: Great. Thank you.
`JUDGE WORMMEESTER: All right, I’m going to set the clock for
`you. Okay, I’ll set it for 35 minutes and I’ll give you a five minute warning,
`does that work for you?
`MR. RENNER: That’ll be great.
`JUDGE WORMMEESTER: Okay, when you’re ready.
`MR. RENNER: Okay, good morning, Your Honors. May I please
`the Board, I’m Karl Renner, for Apple. In response to the Institution
`Decision that was rendered, the Patent Owner has attempted, in several
`ways, to salvage subject matter from the ’940 Specification.
`The first instance, the proposed claim constructions we believe to be
`untenable, and the second, they challenged the combination of the prior art
`that were before you, and a third, is they offered motion to amend substitute
`claims and a contingent motion to amend.
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`That is, none of these strategies are believed to succeed and we,
`therefore, think that both the original claims and the amended offering ought
`to be considered to be unpatentable.
`Slide 3, please. There’s two separate claim sets at issue here, as a
`consequence of procedural context and the first is, of course, the original
`claims, the second, the Amended Claims. Both, again, as we had mentioned,
`will be demonstrated to be unpatentable.
`As we move through things we’ll address, first, the original claims
`and then the substitute claims, just to keep things organized. So Slide 5,
`please. Oh, Slide 4, please, my apologies.
`In Slide 4, you can see, we have two issues we’re framing up for
`primary discussion, as it relates to the original claims. Those issues are, as
`mentioned, the construction that’s offered for the word, pressing, where we
`believe it’s to be injected and immediately releasing limitation, which is
`improper and narrowing.
`Issue 2 is a variety of attacks on the combinations that are yielded
`and we’ll try to address those in an organized fashion for Your Honors.
`Dan Smith will be handling the first part of the Issue 1 and Issue 2
`will be split between he and Grace Kim, who are with us.
`Slide 5, please. We see Issues 3 and 4 here, these are the issues that
`we’ll be framing up, primarily, for the substitute claims.
`In them, we’ll be talking a lot about tapping. The tapping was, of
`course, introduced by amendment, and we’re talking about the support for it,
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`as well as, what happens when you interpret the Specification to find
`support, if we were to do that.
`And, in that sense, we’ll address, in Issue 3, an assumption that
`tapping is not equal to pressing, and pressing is where we’ll find the words
`in the Specification written and we’ll indicate, as a consequence, there’s no
`written description support in that context.
`And the second Issue 4, we’ll talk about how when tapping is equal
`to pressing, when it’s finding support with that term and then, you have
`other issues that come to bear.
`You’ve solved the written description support issue, which you have
`a response in this problem and you have an issue, where the Claims are not
`actually narrowed by the Amendment, itself, and for them and in a
`contingent way.
`So that’s the setup in the hearing. I’m going to ask Dan Smith, like I
`said, come up and he’ll issue, hit Issue 1, with respect to the original claims
`and I’ll see you all again, when it comes to the substitution of the Claims.
`So thanks, so much.
`MR. SMITH: Thank you, Karl. Good morning, Your Honors. As
`Mr. Renner said, I’ll be discussing the first issue, with respect to the original
`claims. Could I get Slide 18, please?
`Slide 19’s fine. So as Mr. Renner alluded to, the Patent Owner’s
`construction of pressing, to mean, pressing and immediately releasing the
`power button is unsupported by the intrinsic evidence and is generally
`improper.
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`So ignoring the fact that, an immediate release of the power button is
`physically impossible, the construction’s also improper, because it’s
`inconsistent with the Specification and generally not consistent with the
`Claim language. Slide 19, please.
`Sorry, Slide 20, please. So - Slide 22, sorry. This is Slide 22, I
`apologize.
`So as I said, Patent Owner’s construction merely attempts to
`improperly import limitations from the ’940 Specification into the Claims
`and it amounts to, effectively, a modification of the Claim language of the
`form, shown here, where the extra, extra concept of and immediately
`releasing is inserted into the Claim, after the recitation of pressing.
`Can I get Slide 20, please? So as I was saying, the - when the
`Specification refers to pressing, it is not exclusively referring to a press and
`release. As shown here, when the Patent is describing this particular type of
`functionality, it is referring to presses and releases, as separate actions, as
`noted by the conjunction, and, between those two words, in the disclosure.
`It does the same thing, with respect to actions of pressing and
`holding, as shown in the quote, there, from the Patent. When the Patent
`doesn’t want to describe a sequence of actions that includes, both, the press
`and release, it simply recites the plain description of the word press.
`So as used in Specification, the term press does not imply the
`subsequent action of release, or, in fact, any subsequent action, after the
`initial press.
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`JUDGE MOORE: Now what – doesn’t there always have to be a
`release? I mean, you have to let it go, at some point, right?
`MR. SMITH: Technically, yes, Your Honor, at some point there has
`to be a release, even if you’re performing a press and hold, right?
`At some point, you know, after the hold begins, you know, unless
`you hold it until the end of time, there will be a release. The thing about a
`recitation of just a press, here, is that it doesn’t specify that the next action
`that occurs has to be a release.
`And it also doesn’t imply that the next action has to be an immediate
`release, as Patent Owner is proposing, with its construction.
`JUDGE MOORE: So it is - what is a press?
`MR. SMITH: I believe, we have briefing on this. A press would be,
`when the power button is physically depressed. I don’t want to use the
`word, press, again, to describe what that means.
`But, when it is pushed down, but to the point where, I guess,
`completely pushed down. That would be the action of pressing. So once the
`power button is, is completely, you know, completely engaged, I guess you
`could say, it --
`JUDGE MOORE: So you --
`MR. SMITH: - that would be a typical press.-
`JUDGE MOORE: - would be combining those between -- sorry.
`Are you drawing that distinction ---
`MR. SMITH: Sure.
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`JUDGE MOORE: -- between the act of pressing and then, the
`period during which it’s held, and then, the act of releasing, are those the
`three different things that we’re talking about here?
`(Simultaneous speaking.)
`MR. SMITH: Yes, sir. Yes, Your Honor.
`JUDGE MOORE: Okay.
`MR. SMITH: Did that - did I, did I answer, answer your questions,
`did you ---
`JUDGE MOORE: Yes.
`MR. SMITH: -- did you have anymore, on that point? Okay, thank
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`you.
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`(Simultaneous speaking.)
`JUDGE MOORE: Yes.
`JUDGE WORMMEESTER: Yes, I just have one followup,
`does -your --
`MR. SMITH: Yes, ma’am.
`JUDGE WORMMEESTER: -- your interpretation of press, though,
`encompasses the pressing, and then immediately holding, or pressing, and
`then immediately releasing, or is press different than pressing and
`immediately holding, pressing and immediately releasing?
`MR. SMITH: I think that -- so, so pressing, the act of, the act of
`actually pressing, would be, would be different than, than the act of, either, a
`hold, or a release.
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`I think the, the, the - I do think that the -- that -- as, as I mentioned,
`kind of, at the top, the, when you press the power button, there is ---
`JUDGE WORMMEESTER: Okay.
`MR. SMITH: -- some duration that the power button is held, right,
`because, the fact -- the act of pressing and then immediately releasing the
`power button, there has to be some duration, in which it’s fully depressed.-
`JUDGE WORMMEESTER: Right.
`MR. SMITH: So, you know, if you -- I think, I think that that would
`be, what, what you described, as a, a press, and then, some duration of hold,
`maybe, a small duration of hold, and then a release, would be, you know,
`would be consistent with what we’re saying.
`I think the, the, the key thing, I think, to, to, that, to realize, here, is
`that, in the Claim, it doesn’t, it doesn’t specify any, you know, it doesn’t
`specify any particular action that has to happen, after the press occurs, right,
`it could be a hold, it could be a release, it could be throwing your phone into
`the lake, it could be anything.
`JUDGE WORMMEESTER: Okay.
`MR. SMITH: And, and I think that’s, really our main point here, is
`that Patent Owner is trying to read in this concept of an immediate release,
`where none is specified in the Claim.
`JUDGE WORMMEESTER: Okay. Thank you.
`JUDGE MOORE: So is the tap an immediate release?
`MR. SMITH: I think, as, as Patent Owner has proposed construing
`that word, yes, I believe, it is an immediate release. I think the - their ---
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`JUDGE MOORE: Okay, but would, would you agree that, a tap is
`an immediate - is a ---
`MR. SMITH: Oh it --
`JUDGE MOORE: - press and immediate release?
`(Simultaneous speaking.)
`MR. SMITH: I don’t think it’s an immediate release. As, as I, as I
`said, at the top, there has to be some, whether it’s, you know, it, some, some
`small duration of a hold, just simply, it’s, it’s just not physically possible to
`release the, release the button at the same, same time that you, that you
`completely depress it.
`But, I think, the Patent Owner has correlated that those two concepts,
`the press and release, you know, pressing and immediately releasing and
`tapping, in their argument, in their Patent Owner Response.
`So I would say, you know, for the purposes of this proceeding that,
`you know, that’s, that’s their position, yes.
`JUDGE MOORE: And so what is - you have a view on what -- the
`specification used the term tap, or tapping, right?
`MR. SMITH: Yes. Yes it does.
`JUDGE MOORE: So what, what does that mean, in your view?
`MR. SMITH: In my view, I think that means a - that means a -- it
`means a, where the button is depressed, for a duration that is relatively short,
`possibly, followed by another tap, like in a double tap, or a triple tap
`scenario.-
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`I do think that - I -- and I think we have, this is in our, in our
`positions in the opposition that my colleague, Mr. Renner will get into.
`The, you know, tap, tap is encompassed by, I think, it’s a species of a
`press. It’s a particular type of press that has - that implies with it a short, a
`short duration.
`But it is not, you know, it, as my colleague will show, it can’t be,
`you know – it’s problematic if it is, in fact, equivalent with, with press for
`the substitute claims.
`JUDGE MOORE: So is a tap a press, followed by a very short hold?
`MR. SMITH: I think that would - that would be accurate, a tap
`would be a press, followed by a very short hold, followed by a release.
`JUDGE MOORE: Okay.
`JUDGE FISHMAN: This is Judge Fishman. Is there anything in the
`record, for extrinsic evidence, for industry standard definitions of these
`terms?
`
`MR. SMITH: There is, I believe, we have a dictionary definition,
`with respect to the, at least, with respect to the meaning of press.
`And, honestly, honestly, my – I’m going to defer to my colleague,
`Mr. Renner, on the, on the argument about the difference between press and
`tap, as he’s going to be presenting that issue.
`And I think - I believe, he may have that particularly identified to, to
`show you guys. I will say that, we do have testimony, on the record, as to
`the plain and ordinary meaning of the word press, from our expert that, that
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`it does not imply an immediate release, or a, you know, any type of short
`duration, or any type of, you know, duration, at all.
`I apologize, did that, did that, did that answer your question, or did
`that, you know, can I allow my colleague, Mr. Renner, to address that
`question?
`JUDGE FISHMAN: Sure.
`MR. SMITH: Thank you.
`JUDGE FISHMAN: Sure.
`MR. SMITH: Okay, so as I was saying, the issue, on Slide 20, you
`know, when the Patent wants to describe a, you know, kind of, a generic
`press, it doesn’t imply, you know, any subsequent action, it uses that, that
`particular term.
`The last, the last quote that we have here, you know, the single press
`of the power button, it would be that. We can also have, you know, a
`description of a single press and release and a pressing and holding.
`And one thing to note is that, the only one of those actions that is
`associated in Specification, with the functionality of silencing the ring, is the
`single press.
`And, again, my colleague, Mr. Renner, will get into that a little bit
`more, with respect to the substantive claims.
`JUDGE MOORE: So is a single press a tap, or is that something
`different?
`MR. SMITH: The single press would be broader than a tap, it would
`be a broader --
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`JUDGE MOORE: You think that it’s --
`MR. SMITH: - concept.-
`(Simultaneous speaking.)
`JUDGE MOORE: Oh, because there’s a longer hold, after the initial
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`press?
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`MR. SMITH: Because there could be a longer hold. Right? So I
`think a single press is a broader concept that, that includes a tap, or that, you
`know, --
`JUDGE MOORE: Oh.
`MR. SMITH: - that, you know, that, a tap would be a, you know,
`kind of, a specific species of press.
`JUDGE MOORE: So a tap is a single press, other than, maybe, a
`single press, too. But, a tap is a single press?
`MR. SMITH: A tap is a - a tap is a specific type of single press. I
`think, the key thing is to - and I apologize, I’m not trying to be elusive on
`that.
`
`I think the difference, in the way that I’m saying it is that, the two
`things are not equivalent. I would say that a, you know, the concept of a
`single press would include, you know, could, you know, could include a, a
`tap could include a press, with a longer hold, et cetera.
`But, the two, the two terms are not, are not equivalent. Right? The
`recitation of a single press, does not imply a, an immediate release, or a, you
`know, a very short duration and then a quick release.
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`JUDGE MOORE: And so why - how do we know that? Why do
`you say that?
`MR. SMITH: Because, the Patent uses the terms, uses the two terms
`differently. Right? The Patent, whenever, you know, the Patent has
`disclosure of double tapping, of triple tapping, et cetera.
`It also has disclosure of press. And it consistently assigns different
`functions to those, or different, you know, different functions that are
`triggered by this.
`For example, you know, a single press is going to trigger the
`silencing of the ringer. A double tap, I believe, is going to trigger the
`backlights, some toggling of the backlight, or some other functionality.
`But it’s consistent with respect to which functions are triggered by
`those different actions.
`And, I think, another way that we know that they’re different, I
`mean, they are, you know, they’re different words. So you know, we,
`they’re, we, at least, you know, without, you know, other evidence, we
`assume that they have different meanings.
`And another, another point that I’ll foreshadow for my colleague,
`Mr. Renner’s, presentation is that, the subsequent claims used both of those
`terms.
`
`They used tapping in the independent claim and then, in one of the
`later dependent claims, they used the word pressing, you know, so Mr.
`Renner will explain that more, more thoroughly.
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`But, you know, claim differentiation says that, at least, in that
`context, those two words would presume tap - they presume to have a
`different meaning.
`JUDGE MOORE: Okay.
`MR. SMITH: Okay. So let’s - so this is Slide 21. As I was saying,
`the -- so the Patent Owner’s expert confirms our, this understanding of press
`and release being separate actions.-
`And press, you know, so basically, a press and release involves a
`press, followed by a hold, and a press and hold involves a press – I’m sorry.
`I need to slow down. A press and release involves a press, followed
`by a release, and a press and hold involves a press, followed by a hold.
`Next slide, please. So this is Slide 23. Our position, here, is simply
`that the Claim language should be interpreted to mean what it says, as it was
`in the petition.
`So if the Claim says, pressing the power button, it should be
`interpreted to cover, or, you know, it should be interpreted to mean, pressing
`the power button. Next slide, please. Okay. So I’m going to move on to --
`JUDGE MOORE: And so --
`MR. SMITH: Yes, go ahead.
`(Simultaneous speaking.)
`JUDGE MOORE: Sorry. And so merely pressing the power
`button - is pressing the power button independent of the duration of any
`subsequent hold?
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`MR. SMITH: I’m just making sure that, that I heard that. Yes, I
`think that’s correct.
`JUDGE MOORE: Okay.
`MR. SMITH: So moving on to our second issue, the - so Patent
`Owner, Patent Owner’s attacks on the prior art combinations are
`unpersuasive. Next slide, please.
`Slide 25. So when Patent Owner’s faced with a combination, they
`are, they’re employing, kind of, a - seem to be kind of employing a standard
`strategy, with respect to arguing that it’s, that it, that it’s improper,
`regardless of how it was presented in the, in the petition.-
`They are repeatedly, kind of, boiling down the combination to a, you
`know, to a simple statement, saying that that’s all that’s described in the
`petition, and then saying that it’s, that it’s purely motivated by hindsight.
`Without – I’m sorry, did you -- -no? I’m sorry. Without any - yes,
`without any real analysis, or any, any other explanation, as to why it -- why
`hindsight would be what is motivating the, the combination. They,
`also -- go ahead.-
`JUDGE MOORE: Is it your position that Maloney teaches, or
`suggests, tapping?
`MR. SMITH: Yes, Your Honor, it is. The - so ---
`JUDGE MOORE: Okay.
`MR. SMITH: So in, in Maloney - I can address that, just real quick.
`In Maloney the, I think, one of the, the arguments that Patent Owner was
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`deploying against Maloney in that context, was that there’s a, there’s this
`guard timer that would filter out inadvertent presses.
`And they were saying that, you know, since a, since a tap is a press
`and an immediate release, with no duration, that guard timer would prevent
`the, the circuitry from detecting the tap.
`I think there’s, there’s, you know, two ways, in the briefing that we,
`that we address that. You know, first of all, there - the, the idea of a zero, of
`a zero duration is just, you know, is not, not physically possible, so an
`immediate release is not something that, that you would, that would come,
`come about in the real world.-
`The, the other, the other point is that that, the timer, in Maloney,
`does not have a, does not have one duration. In fact, a POSITA would’ve
`been, you know, it would’ve looked, would’ve known from the, from the
`disclosure of Maloney that you could set that timer to be, you know, longer,
`or shorter, to, you know, to only filter out, you know, activations of a button
`that had a hold of a, of a, you know, of a shorter, or longer time.
`I believe, we cite - we showed that Lui specifically teaches those
`type of changing that the duration, the duration of the different periods of the
`timers.
`
`So, you know, a POSITA would’ve known that, if you wanted your,
`if you wanted your circuitry to be more sensitive to, to pick up shorter
`durations of button actions, you would just simply set that guard timer to
`have a shorter duration.
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`JUDGE MOORE: So by that, you mean, T1, the timer T1, in
`Maloney?
`MR. SMITH: I believe, it is T1, yes.
`JUDGE MOORE: And so then, you – it’s your view that, Maloney
`teaches and suggests setting T1 to a low enough value that it would detect
`just a tap?
`MR. SMITH: I believe so yes. I believe so. I think that, you know,
`there’s no absolute value for that timer specified in Maloney. It doesn’t say
`it has to be, you know, a second to dada-da speed, you know, anything like
`that.
`
`And I, you know, I believe that, that I think that we have evidence,
`you know, testimonial evidence and argument that, that a POSITA
`would’ve, it would’ve been within the capabilities of POSITA and a
`POSITA would’ve - it would’ve been obvious to a POSITA to adjust that
`timer.
`
`JUDGE MOORE: Okay.
`MR. SMITH: Yes. So just jumping back in, on Slide 25, the - what
`Patent Owner is doing, with respect to our combinations, is ignoring the
`description and the explanation in the, in the petition.
`We have, you know, a nearly three page explanation, we have
`sections that, you know, specifically title the combination of Maloney,
`Beghtol, and Ishihara, another one titled, you know, the Reasons to combine
`Maloney, Beghtol, and Ishihara, and Patent Owner does not address the
`descriptions and the justifications in those sections.
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`Go to the next slide, please. And just real quick, the - and just, just
`real quick, the, with respect to -- with respect to Beghtol, you know, here,
`you know, we have laid out the, the reasons we specified to, to combine
`Maloney and Beghtol.
`We’re bringing - the special item we’re bringing in is, you know, the
`Caller ID being displayed on the display of the device and you would’ve
`done, a person fully-skilled in the art would have been motivated to do that,
`to allow them to selectively answer calls, to avoid wasting time.
`Go to the next slide, please. This is Slide 15. With respect to
`Ishihara, you know, you would, POSITA would’ve incorporated this, the
`backlight functionality, to allow the device to be immediately operated, even
`in a dark place and, as Ishihara discloses, it would improve operability of the
`device. Go to the next slide, please.
`So - -so with respect to, with some of the arguments that, that Patent
`Owner’s feelings, with respect to Maloney, they are attacking Maloney,
`exclusively, under their improper construction of pressing, you know, and
`simply alleging that Maloney doesn’t teach pressing and immediately
`releasing.
`But when, you know, when the Claim is interpreted meaning what it
`says, as we, as we proposed, Your Honors, we, you know, showed, in the
`previous slides, you know, these arguments are unpersuasive.
`So with that, I’m going to turn it over to my co-counsel, Grace Kim,
`unless, unless you have any other questions, with respect to the things we’ve
`already discussed?
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`She’s going to discuss the secondary references to Beghtol and
`Ishihara and Patent Owner’s arguments, with respect to those.
`MS. KIM: Thank you, Dan. Good morning, Your Honors. As my
`co-counsel, Dan, has outlined for us, Qualcomm ignored our combination, as
`presented, in our petition.
`Our petition indicates that a modification of Maloney, to incorporate
`the techniques described in Beghtol, such that the combination device
`displays an incoming call identification information, such as Caller ID.
`But, rather than pursing arguments that might have addressed the
`combination, as presented in our petition, Qualcomm’s arguments are
`directed to silencing the ring.
`In fact, the arguments presented on this slide, Slide 27, are not
`persuasive in arguing that this would lead a POSITA to a proposed
`combination.
`What Qualcomm is doing here, is basing part of Beghtol that was not
`incorporated in our combination, as proposed in the original petition. Dan,
`could you move us to Slide 29?
`Your Honors, this argument might sound familiar to you, because
`Qualcomm previously presented a similar flavor of this argument in its
`preliminary response.
`This argument has not substantively changed, besides Qualcomm’s
`admission of a mirroring expert dec. You may remember this argument,
`since you previously found it unpersuasive in your Institution Decision.
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`Slide 30, please. Qualcomm similarly argues that Ishihara teaches
`away from our proposed combination. But, as you can see here, in text
`found in Ishihara states that in a conventional portable telephone, the
`backlight is lit up for a predetermined period of time, only when the user
`presses any key.
`However, the arguments made by Qualcomm state that Ishihara
`directly disparages activation of the backlight by merely pressing a key, by
`its indication of being inconvenient and battery wasting and goes to a step of
`saying that Ishihara actively teaches away.
`Next slide, Slide 31. We said, in our petitioner reply that any
`inconvenience was not sufficient to display a POSITA from utilizing this
`approach, as indicated by Ishihara’s description of the feature being
`conventional.
`Because, if a POSITA was dissuaded, then their approach wouldn’t
`have been widely used in the art. Next slide, Slide 32.
`Like before, you’ve already looked at this argument. This logic
`made sense to you. That, Ishihara explains that you have to press a key, in
`the dark, which could result in an inconvenience.
`Next slide, Slide 33. Also, with respect to Ishihara, Qualcomm
`argues that Ishihara requires a touch sensor. Their arguments are directed to
`Ishihara not disclosing the activation of backlight with any key and the
`absence of the signal from a touch sensor.
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`Here, Qualcomm is focusing on an embodiment of Ishihara that
`describes a user pressing a touch sensor, but fails to consider the reference
`for all it teaches, as we must, according to law.
`The disclosure of the touch sensor does not allow us to negate the
`disclosure of Ishihara. Next slide, Slide 34.
`Next, Qualcomm’s arguments, related to the power switch of
`Ishihara, are simply unpersuasive. Patent Owner states in their response
`that, the power
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