Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 44
`Date: February 12, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` APPLE INC.,
`Petitioner
`
`v.
`
`QUALCOMM INC.,
`Patent Owner.
`____________
`
`IPR2018-01275
`Patent 9,203,940 B2
`____________
`
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER,
`and AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, 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)
`
`

`

`Case IPR2018-01275
`Patent 9,203,940 B2
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ................................................................................ 1
`A.
`Background ................................................................................ 1
`B.
`Related Matters .......................................................................... 2
`C.
`The ’940 Patent .......................................................................... 2
`D.
`The Claimed Subject Matter ...................................................... 3
`E.
`Evidence Relied Upon ................................................................ 4
`1. Maloney ........................................................................... 4
`2.
`Beghtol ............................................................................. 4
`3.
`Ishihara ............................................................................. 5
`4.
`Vertaschitsch .................................................................... 5
`5.
`Little ................................................................................. 5
`Grounds of Unpatentability ........................................................ 6
`F.
`ANALYSIS .......................................................................................... 6
`A.
`Level of Ordinary Skill in the Art .............................................. 6
`B.
`Claim Construction .................................................................... 7
`1.
`“pressing the power button” ............................................ 8
`a.
`Patent Owner’s Position .........................................8
`b.
`Petitioner’s Reply ...................................................9
`c.
`Patent Owner’s Sur-Reply ................................... 11
`d. Our Analysis ........................................................ 12
`Obviousness Analysis .............................................................. 16
`1.
`Claims 1 and 12 ............................................................. 17
`a.
`“[a] method for operating a mobile computing
`device including a display, a power button, a
`radio, and one or more processors, the method
`performed by the one or more processors
`of the mobile computing device” ........................ 17
`“when a telephone call is being received
`by the mobile computing device,
`
`C.
`
`b.
`
`i
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`

`Case IPR2018-01275
`Patent 9,203,940 B2
`
`
`c.
`
`presenting a notification on the display
`indicating the telephone call; and
`enabling a user to silence a ring associated
`with the telephone call by pressing the
`power button without turning off the
`mobile computing device” ................................... 18
`“when the telephone call is not being
`received by the mobile computing device,
`enabling the user to activate a backlight of
`the display by pressing the power button” .......... 21
`d. Reason to Combine .............................................. 27
`e.
`Conclusion Regarding Claims 1 and 12 .............. 30
`Claims 4 and 15 ............................................................. 31
`2.
`Claims 6 and 17 ............................................................. 32
`3.
`Claims 9 and 20 ............................................................. 33
`4.
`Claims 10, 11, 21, and 22 .............................................. 33
`5.
`Claims 2–3, 7, 8, 13–14, and 18 .................................... 35
`6.
`Conclusion on the Obviousness of the Original Claims 36
`7.
`D. Motion to Amend ..................................................................... 36
`1.
`“Tapping” ....................................................................... 37
`a.
`Patent Owner’s Identified Support ...................... 37
`b.
`Petitioner’s Opposition ........................................ 38
`c.
`Patent Owner’s Reply .......................................... 39
`d.
`Petitioner’s Sur-Reply ......................................... 40
`e. Our Analysis ........................................................ 40
`“Double Tap” ................................................................. 44
`2.
`Obviousness of the Substitute Claims ........................... 45
`3.
`Conclusion Regarding the Proposed Substitute Claims 46
`4.
`III. CONCLUSION .................................................................................. 47
`IV. ORDER ............................................................................................... 48
`
`ii
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`Case IPR2018-01275
`Patent 9,203,940 B2
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–4, 6–15, and 17–22 of U.S. Patent No. 9,203,940 B2 (Ex. 1001,
`“the ’940 patent”). Paper 2 (“Pet.”). Qualcomm Inc. (“Patent Owner”) filed
`a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`
`On February 14, 2019, we instituted an inter partes review of
`claims 1–4, 6–15, and 17–22. Paper 12 (“Inst. Dec.”), 18. Patent Owner
`then filed a Patent Owner Response (Paper 21, “PO Resp.”), Petitioner filed
`a Reply (Paper 28, “Pet. Reply”), and Patent Owner filed a Sur-Reply
`(Paper 34, “PO Sur-Reply”).
`Patent Owner has also filed a Contingent Motion to Amend (Paper 22,
`“Mot. to Amend”), Petitioner filed an Opposition (Paper 29, “Mot. to
`Amend Opp.”), Patent Owner filed a Reply (Paper 33, “Mot. to Amend
`Reply”), and Petitioner filed a Sur-Reply (Paper 38, “Mot. to Amend Sur-
`Reply”).
`An oral hearing was held on November 14, 2019, and a transcript of
`the hearing is included in the record. Paper 43.
`
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–4, 6–15, and 17–22 of the
`’940 patent are unpatentable, and we deny Patent Owner’s Motion to
`Amend.
`
`1
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`Case IPR2018-01275
`Patent 9,203,940 B2
`
`B.
`
`Related Matters
`The ’940 patent was at issue in Qualcomm Incorporated v. Apple
`Incorporated, Civil Action No. 3:17-cv-02403 (S.D. Cal.). See Pet. 45.
`According to PACER, the litigation was terminated in April of 2019, when a
`joint motion to dismiss was granted.
`Petitioner concurrently filed another petition, in IPR2018-01270,
`seeking inter partes review of claims 1, 3–5, 7, 8, 10–16, 18, 19, 21, and 22
`of the ’940 patent based on prior art different than that presented in this
`Petition. We declined to institute that case. See IPR2018-01270, Paper 12.
`
`C.
`
`The ’940 Patent
`The ’940 patent describes “a system and method for using an
`integrated device featuring functionality of both a PDA and cellular
`telephone.” Ex. 1001, 1:57–58. It describes a number of individual features,
`including “a power button offering control of both the computing and
`telephony functions of the device,” “a lid that turns the device on and off
`depending on its state, and can also be used to begin and terminate calls,”
`“a jog rocker that activates the device and is used to select from a variety of
`menu options,” and “application buttons that offer direct access to
`applications stored on the device, and which can be configured to operate in
`conjunction with secondary keys to offer added functionality.” Id. at 1:59–
`67.
`
`The claims of the patent are directed to a specific subset of the various
`described features: presenting a notification on the display that a telephone
`call is being received, enabling the user to silence the ring associated with
`the call by pressing the power button without turning off the mobile
`computing device, and enabling the user to activate a backlight of the
`
`2
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`Case IPR2018-01275
`Patent 9,203,940 B2
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`display by pressing the power button when a telephone call is not being
`received, also without turning the device off.
`
`D.
`
`The Claimed Subject Matter
`Of the challenged claims, claims 1 and 12 are independent. Claim 1 is
`directed to a method for operating a mobile device, and claim 12 is directed
`to a mobile device with memory storing instructions to perform steps
`analogous to those of claim 1. Claim 1, reproduced below, is thus
`illustrative of the subject matter addressed in this proceeding.
`1. A method for operating a mobile computing device including
`a display, a power button, a radio, and one or more processors,
`the method performed by the one or more processors of the
`mobile computing device and comprising:
`when a telephone call is being received by the mobile
`computing device,
`presenting a notification on the display indicating the
`telephone call; and
`enabling a user to silence a ring associated with the
`telephone call by pressing the power button without
`turning off the mobile computing device; and
`when the telephone call is not being received by the mobile
`computing device, enabling the user to activate a backlight
`of the display by pressing the power button.
`Ex. 1001, 10:48–61.
`
`3
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`Case IPR2018-01275
`Patent 9,203,940 B2
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`E.
`
`
`
`Evidence Relied Upon
`Petitioner relies on the following references:
`
`Reference
`US 6,453,169 B1
`Maloney
`US 6,253,075 B1
`Beghtol
`US 6,426,736 B1
`Ishihara
`Vertaschitsch US 2006/0095849 A1
`Little
`US 5,642,413
`
`Exhibit
`1017
`1020
`1018
`1007
`1012
`
`Petitioner also relies on a Declaration of Brad A. Myers (“Myers
`Decl.”), filed as Exhibit 1021. Patent Owner relies on a Declaration of
`Dr. Kevin Jeffay (“Jeffay Decl.”), filed as Exhibit 2002.
`
`1. Maloney
`Maloney concerns a communication device with “a power key located
`on an outer surface of the housing which may provide multiple functions,
`but is resistant to initiation of undesired handset functions.” Ex. 1017, code
`(57). “[C]ontrol circuitry performs a first function if the power key is
`depressed for a first duration, and performs a second function when the
`power key is depressed for a second duration.” Id. “For example,
`depression of the power key for a short period of time may silence [an]
`incoming call alert, whereas depression of the power key for a longer period
`of time will turn the communication device on or off.” Id.
`
`Beghtol
`2.
`Beghtol describes a “method and apparatus for rejecting incoming
`calls for use in a mobile communications device.” Ex. 1020, code (57). In
`pertinent part, Beghtol describes “a call alert” that “is activated and the user
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`is given the opportunity to manually reject the call.” Id. at 6:23–25. “The
`call alert occurs when controller 102 displays the incoming call
`identification information on display 110 and activates the call indicator
`114.” Id. at 6:25–27.
`
`Ishihara
`3.
`Ishihara describes “[a] portable telephone having a liquid crystal
`display with a backlight [that] includes a touch sensor arranged on a side
`surface of a main body, and an operation unit arranged on a front surface of
`the main body which has the liquid crystal display to input a telephone
`number or the like.” Ex. 1018, code (57). The portable telephone has two
`modes, “a touch mode for the touch sensor in lighting the backlight” and “a
`key operation mode by the operation unit in lighting the backlight.” Id.
`
`Vertaschitsch
`4.
`Vertaschitsch describes a “phone device” that includes “[a] display
`screen 230 . . . (preferably a touch sensitive screen) for display of Operating
`System prompts, buttons, icons, application screens, and other data, and for
`providing user inputs via tapping or touching . . . via a stylus or other touch
`mechanism” and a method of answering a call by “tapping on a phone icon”
`on the display screen. Ex. 1007 ¶¶ 28, 31.
`
`Little
`5.
`Little describes “a switch positionable in series electrical
`communication between a ring circuit power source and an audible ringer of
`the telephone or a vibration assembly coupled to the switch” and that “[v]ia
`the switch, either one of the audible ringer and vibration assembly can be
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`selected to alert the individual to a call or the ring circuit power source can
`be left absent a load.” Ex. 1012, code (57).
`
`F. Grounds of Unpatentability
`This trial was instituted on the following grounds:
`
`References
`
`Maloney, Beghtol, and Ishihara
`
`Maloney, Beghtol, Ishihara, and Vertaschitsch
`Maloney, Beghtol, Ishihara, and Little
`
`Basis
`
`§ 103
`
`§ 103
`§ 103
`
`Claims
`1–4, 6, 8–9, 12–
`15, 17, 19–20
`7, 18
`10, 11, 21, 22
`
`II. ANALYSIS
`
`We discuss below the level of skill in the art, claim construction, the
`patentability of the present claims, and the motion to amend.
`
`A.
`
`Level of Ordinary Skill in the Art
`Petitioner asserts that “[a] person of ordinary skill in the art as of the
`Critical Date of the ’940 patent (hereinafter a ‘POSITA’) would have had a
`Master of Science Degree in an academic area emphasizing electrical
`engineering, computer science, or an equivalent field (or a similar technical
`Master’s Degree, or higher degree) with a concentration in mobile
`computing and user interface design” or “a Bachelor’s Degree (or higher
`degree) in an academic area emphasizing electrical engineering, or computer
`science and having two or more years of experience in mobile computing
`and user interface design.” Pet. 6. Petitioner further asserts that
`“[a]dditional education in a relevant field, such as computer science, or
`electrical engineering, or industry experience may compensate for a deficit
`in one of the other aspects of the requirements.” Id. (citing Ex. 1021 ¶ 10).
`
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`
`Patent Owner does not offer a different formulation, and states that
`“[e]ven under Petitioner’s definition, Petitioner has failed to show that the
`Challenged Claims are invalid.” PO Resp. 6.
`Because Patent Owner does not dispute Petitioner’s characterization
`of the level of skill in the art, and because we find it generally consistent
`with the disclosures of the patent and the cited prior art, we adopt it for
`purposes of this analysis.
`
`B.
`
`Claim Construction
`In inter partes reviews filed before November 13, 2018, such as this
`one, claims of an unexpired patent are interpreted according to their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b) (2017); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2142–46 (2016); 83 Fed. Reg. 51,340. Under that
`standard, claim terms are generally given their ordinary and customary
`meaning, as would have been 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).
`The Petition asserted that “all terms should be given their plain
`meaning.” Pet. 6. In the Preliminary Response, Patent Owner “interpret[ed]
`the claims . . . in accordance with their plain and ordinary meaning under the
`required broadest reasonable interpretation standard.” Prelim. Resp. 12. We
`accordingly did not formally construe any terms in the Institution Decision.
`See Inst. Dec. 6.
`
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`
`“pressing the power button”
`1.
`In its full response, Patent Owner formally seeks construction of
`“pressing the power button.” See PO Resp. 7–8. Petitioner disputes Patent
`Owner’s construction. See Pet. Reply 2–7.
`
`Patent Owner’s Position
`a.
`Patent Owner argues that “‘[p]ressing’ the power button means
`‘tapping’ or ‘pressing and immediately releasing’ the power button,” and
`that it is “a distinct input from, for example, holding the power button for at
`least a threshold duration of time, at least in that the functionality is
`activated as soon as the press is detected.” PO Resp. 7 (citing Ex. 2002
`(Jeffay Decl.) ¶ 66).
`Patent Owner argues that “[t]he specification supports [its]
`construction,” as “[f]or example, the specification includes a section which
`defines the various pressing gestures available in the disclosed subject
`matter and distinguishes between ‘[p]ressing and holding the power
`button 110 [which] toggles the radio on/off,’ and ‘a single press of the power
`button 110 . . . [which] silences the ring but does not turn off the device
`100.’” PO Resp. 7 (citing Ex. 1001, 3:12–27; Ex. 2002 (Jeffay Decl.) ¶ 68).
`Patent Owner further argues that the specification “distinguishes between the
`situation[s] where ‘the power button is held down for longer than a threshold
`amount of time, e.g., 1 second,’ and where it is tapped and immediately
`released before that threshold elapses.” Id. (citing Ex. 1001, 3:33–34; Ex.
`2002 (Jeffay Decl.) ¶ 68). Patent Owner also points to “the provisional
`application to which the ’940 Patent claims priority,” which, it says, “defines
`a ‘normal single press’ as ‘[a] release after being held for less than one
`second.’” Id. at. 7–8 (citing Ex. 2004, 6; Ex. 2002 (Jeffay Decl.) ¶ 70.)
`
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`Case IPR2018-01275
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`
`Patent Owner further argues that “the extrinsic evidence also supports
`this construction” because “[f]or example, a Person of Ordinary Skill in the
`Art (‘POSITA’) would understand ‘pressing’ as entailing a relatively
`immediate release, not holding the button for a threshold duration.” PO
`Resp. 8 (citing Ex. 2002 (Jeffay Decl.) ¶¶ 72–74). According to Patent
`Owner, “the input of ‘pressing’ involves functionality that is activated upon
`detection of the press, not upon detection of the release or satisfaction of a
`threshold duration button depression.” Id. (citing Ex. 2002 (Jeffay Decl.)
`¶ 100). Patent Owner also points to Petitioner’s expert testifying that “a
`single press is a press for a length of time that’s shorter than pressing and
`holding” and that “‘single press and release’ is the equivalent of a ‘single
`tap,’” as well as its expert testifying similarly. See id. (citing Ex. 2005
`(Myers Tr.), 44:9–11, 45:3–11; Ex. 2002 (Jeffay Decl.) ¶¶ 66–75, 100).
`
`Petitioner’s Reply
`b.
`Petitioner argues that Patent Owner’s “construction is not supported
`by the disclosure of the ’940 patent, and is merely an attempt by Patent
`Owner to improperly import limitations from the specification in order to
`avoid the art cited in the Petition.” Pet. Reply 2. Petitioner contends that “a
`POSITA would understand the broadest reasonable interpretation of the term
`‘pressing the power button’ to be broad enough to include both ‘pressing and
`immediately releasing’ the power button and ‘pressing and holding’ the
`power button, which is consistent with the disclosure of the ’940 patent.” Id.
`(citing Ex. 1024 (Myers Decl.) ¶ 35; Ex. 1001, 3:13–26).
`Petitioner argues that “[t]he ’940 patent describes examples of
`functionality activated by a ‘single press and release’ of the power button, by
`‘pressing and holding’ the power button, and by a ‘single press’ of the power
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`button.” Pet. Reply 2 (citing Ex. 1001, 3:16–26). Petitioner contends that
`“[t]hese passages indicate that [the] ’940 patent does not use the term
`‘pressing’ to describe only a ‘pressing and immediately releasing’ action as
`Patent Owner argues” but “[i]nstead, the ’940 patent explicitly describes an
`action as a ‘press and release’ if a release follows the initial press, as a ‘press
`and hold’ if a hold follows the initial press, or as simply a ‘press’ if no action
`or an indeterminate action follows the initial press.” Id. at. 2–3 (citing
`Ex. 1024 (Myers Decl.) ¶ 36). Petitioner also argues that “Patent Owner’s
`expert agreed that a ‘press and release’ involves a ‘press’ followed by a
`‘release,’ and that a ‘press and hold’ involves a ‘press’ followed by a
`‘hold.’” Id. at 3 (citing Ex. 1025 (Jeffay Tr.), 23:11–16).
`Petitioner also argues that Patent Owner’s construction “would make
`portions of the disclosure of the ’940 patent disclosure nonsensical” in that,
`for example, “the ’940 patent’s description of a ‘single press and release’ of
`the power button would describe pressing and immediately releasing the
`power button, followed by releasing the power button again.” Pet. Reply 3–
`4 (citing Ex. 1001, 3:16–17).
`Petitioner further argues that “[t]he structure of the ’940 patent claims
`themselves also supports this interpretation” because “[t]he preambles of all
`claims of the ’940 patent include the transitional phrase ‘comprising’” and
`“[t]hus, by definition, the limitation of ‘pressing the power button’ in the
`claims of the ’940 patent can be met by disclosures that describe additional
`actions performed after the power button is pressed, such as releasing or
`holding the power button.” Pet. Reply 4–5. Petitioner argues that “the
`limitation of ‘pressing the power button’ in the claims of the ’940 patent can
`be met by disclosures that describe additional actions performed after the
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`power button is pressed, such as releasing or holding the power button.” Id.
`at 5.
`
`Petitioner next argues that “neither Patent Owner nor its expert cite[s]
`any evidence supporting that a POSITA would understand ‘pressing’ to
`mean ‘pressing and immediately releasing.’” Pet. Reply at 5.
`Regarding the provisional application, Petitioner argues that “a
`‘normal single press’ includ[ing] a ‘release after being held for less than one
`second’” and “[h]olding the button for one second before releasing” [do] not
`conform with Patent Owner’s proposed construction of ‘pressing’ as
`including an ‘immediate release.’” Pet. Reply 6 (citing Ex. 2004, 6; Ex.
`1024 ¶ 38).
`Petitioner concludes that Patent Owner has not identified any
`language demonstrating a clear intention to limit “pressing the power
`button” to “pressing and immediately releasing the power button” and that,
`“[i]nstead, Patent Owner’s construction merely attempts to improperly
`import limitations from the ’940 patent into the claims, a practice the Federal
`Circuit has repeatedly cautioned against.” Pet. Reply 6–7.
`
`Patent Owner’s Sur-Reply
`c.
`Patent Owner responds that “Petitioner attempts to muddy the waters
`by interchangeably referring to the claim language being construed as
`‘pressing’ and ‘pressing the power button,’ which confuses the issues and
`misconstrues Patent Owner’s position.” PO Sur-Reply 1. Patent Owner
`argues that “the term being construed is the phrase ‘pressing the power
`button,’ not the single word ‘pressing,’ which has varied meaning depending
`on the context in which it is used” and that “Petitioner’s arguments with
`respect to the meaning of the word ‘press,’ devoid of context, fail.” Id. at 2.
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`
`According to Patent Owner, “[t]he phrase ‘pressing the power button’
`in the claims is a user interface mechanism that invokes device functionality
`based upon a button press, not one that invokes functionality only upon the
`completion of a subsequent hold, after the button is pressed” and “[t]he latter
`user interface mechanism is referred to in the claims as ‘pressing the power
`button for a duration of time.’” PO Sur-Reply 2. Patent Owner contends
`that “[p]roperly construed, the phrase “pressing the power button” without
`more, means the user interface mechanism of ‘tapping’ or ‘pressing and
`immediately releasing’ the power button.” Id.
`Patent Owner argues that the problem of the claims being nonsensical
`under its proposed construction “is avoided by focusing on the claimed
`phrase ‘pressing the power button.’” PO Sur-Reply 2. Patent Owner also
`argues that “Petitioner’s arguments with respect to the transitional phrase
`‘comprising’ also fail” because “[p]roperly construed, the claims require
`‘pressing the power button,’ i.e., pressing and immediately releasing the
`power button, to trigger a particular effect—e.g., silencing a ring” and
`“[t]hat claim element cannot be met by disclosure that silences a ring only
`after the power button is held, rather than silencing a ring upon being
`pressed, regardless of the transitional phrase.” Id. at 3.
`
`Our Analysis
`d.
`We start with the language of claim 1 itself, which recites “enabling a
`user to silence a ring associated with the telephone call by pressing the
`power button” and “enabling the user to activate a backlight of the display
`by pressing the power button.” Ex. 1001, 10:56–61 (emphasis added).
`Nothing in the claim appears to preclude Patent Owner’s construction but, at
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`the same time, nothing suggests that “pressing” should be replaced with
`“tapping” or supplemented with “and immediately releasing.”
`So we turn to the specification. Patent Owner points to column 3,
`which states that “[a] single press and release of the power 110 button
`toggles device 100 on/off,” “[p]ressing and holding the power button 110
`toggles the radio on/off,” “[d]ouble-tapping the power button 110 toggles a
`backlight on/off,” “[t]riple-tapping the power button 110 inverts the display
`118 and insures that the backlight is on,” and “[a] single press of the power
`button 110 when an incoming call is ringing silences the ring but does not
`turn off the device 100.” Ex. 1001, 3:15–26. It also describes the operation
`as follows:
`Initially, the device 100 is off and the power key is pressed 300.
`If the key is being pressed for the first time within a given
`period 302 (e.g., it has not been pressed for at least the previous
`half second), the device 100 is switched on 304. If the power
`button is held down for longer than a threshold amount of time,
`e.g., 1 second 306 then the radio is toggled on or off 308. If the
`power button is held down for less than the threshold
`amount 306, then upon release a countdown of predetermined
`length, e.g., ½ second, is begun 310. If the power button is
`pressed 312 during the countdown, then the backlight is toggled
`on or off 314. If the cycle is repeated and the power button is
`pressed for a third time during the countdown 312, then the
`display 118 is inverted 316, and the backlight is preferably turned
`on if it is not already on. If the power button is not pressed 312
`during the countdown, then no additional actions take place as a
`result of the power button press. After the display is inverted in
`step 316, the countdown is once again begun 318. However, if
`the power button is pressed during this or subsequent
`countdowns 320, the display is again inverted at step 316. This
`countdown cycle continues until the power button is not pressed
`during the countdown 320.
`Id. at 3:28–50.
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`
`We agree with Patent Owner that these passages distinguish between
`“pressing and holding the power button” and “a single press of the power
`button,” but we fail to see how they support Patent Owner’s contention that
`“pressing” is the same as “tapping” or that “pressing” should be
`supplemented with “and immediately releasing.” Instead, they appear to use
`“press” and “pressing” as a general term for the user touching the button,
`without regard to the duration of the touch. We also agree that the text
`distinguishes between the power button being held down for more or less
`than a threshold amount of time (see PO Resp. 7), but we again fail to see
`how that shows “pressing” in the claim means “tapping” or “pressing and
`immediately releasing.” In fact, given that “pressing” and “tapping” are
`both used, they appear to refer to different actions, as Patent Owner argues
`in connection with the motion to amend. See Section II.D.1.
`Nor do we find the provisional application supportive of Patent
`Owner’s position. Even if it does define “a normal single press” as “[a]
`release after being held for less than one second” (PO Resp. 7–8), Patent
`Owner is not asking us to construe “pressing” to mean “pressing and
`releasing after being held for less than one second.” The provisional
`application does not define “pressing” to mean “tapping” or “pressing and
`immediately releasing” the power button.
`Although Patent Owner’s expert, Dr. Jeffay, testifies that “[t]he
`extrinsic evidence also supports the construction of ‘pressing the power
`button’ as ‘tapping’ or ‘pressing and immediately releasing’ the power
`button,” we give that testimony little weight because he does not actually
`identify any such evidence. See Ex. 2002 ¶ 72 (stating only that “[a]
`POSITA would understand ‘pressing’ as used in the claims to consist of a
`
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`Patent 9,203,940 B2
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`press and relatively immediate release, as opposed to holding the button for
`a threshold duration”). We also note that extrinsic evidence “is generally of
`less significance than the intrinsic record.” Wi-Lan, Inc. v. Apple, Inc., 811
`F.3d 455, 462 (Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d
`1303, 1317 (Fed. Cir. 2005)).
`Nor are we persuaded by Dr. Jeffay’s testimony––and Patent Owner’s
`corresponding argument––that “the input of ‘pressing’ involves functionality
`that is activated upon detection of the press, not upon detection of the
`release or satisfaction of a threshold duration button depression” (Ex. 2002
`¶ 72), because this speaks to neither “tapping” nor the duration of the touch.
`In fact, it suggests that the pressing required in the claims is independent of
`any duration.
`We also find Patent Owner’s proposed constructions inappropriate
`because they are vague. We cannot tell, and Patent Owner does not explain,
`how a “tap” is different from a “press,” nor can we tell what it means to
`“immediately release.” See, e.g., Hitkansut LLC v. U.S., 114 Fed. Cl. 410,
`418 (Fed. Cl. 2013) (rejecting a proposed construction that was “vague and
`of limited assistance in understanding the scope of the claims”).1 This is
`particularly true if, as Patent Owner argues, all that matters is detection of
`the touch, not its duration.
`Regarding Patent Owner’s sur-reply argument that “the term being
`construed is the phrase ‘pressing the power button,’ not the single word
`‘pressing,’” we observe that the Response appears to have requested
`construction of “pressing” not “pressing the power button.” See PO Resp. 6
`
`
`1 In arguing the motion to amend, Patent Owner equates “tap” with “a press
`and an immediate release.” See Section II.D.1.
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`(“‘Pressing’ the power button means ‘tapping’ or ‘pressing and immediately
`releasing’ the power button.”). In any event, we find the argument
`unpersuasive because we do not find a material difference between
`construing “pressing” and “pressing the power button.” In either case, there
`is no basis for substituting “tapping” or adding “and immediately releasing.”
`The specific functions performed by the claimed “pressing”––silencing a
`ring and activating the backlight––are described in the specification as being
`implemented by a “single press” and if the power button is “pressed,” not by
`“tapping,” and without regard to the duration of the press.
`For these reasons, we agree with Petitioner that the broadest
`reasonable interpretation of the term “pressing” includes both “pressing and
`immediately releasing” and “pressing and holding.” Id. We do not agree
`with Patent Owner that “pressing” means “tapping” or “pressing and
`immediately releasing.”
`
`C. Obviousness Analysis
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`One seeking to establish obviousness based on a combination of multiple
`references also must articulate sufficient reasoning with rational
`underpinning to combine