Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 39
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`
` Entered: May 12, 2021
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01620
`Patent 7,821,505 B2
`____________
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`571-272-7822
`
`
`
` Paper 39
`
`
` Entered: May 12, 2021
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01620
`Patent 7,821,505 B2
`____________
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2019-01620
`Patent 7,821,505 B2
`
`
`I. INTRODUCTION
`
`In this inter partes review (“IPR”), instituted pursuant to 35 U.S.C.
`
`§ 314, Roku, Inc. (“Petitioner”) challenges the patentability of claims 5–7, 9,
`
`10, 12, 49, and 51 (the “challenged claims”) of U.S. Patent No. 7,821,505
`
`B2 (Ex. 1001, “the ’505 patent”),1 owned by Universal Electronics, Inc.
`
`(“Patent Owner”). This Final Written Decision is entered pursuant to
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
`
`we determine Petitioner has shown by a preponderance of the evidence that
`
`claims 5–7, 9, 10, 12, 49, and 51 of the ’505 patent are unpatentable.
`
`II. BACKGROUND
`
`A. Procedural History
`
`On September 18, 2019, Roku, Inc. (“Petitioner”) filed a Petition
`
`(Paper 1, “Pet.”) requesting an inter partes review of the challenged claims
`
`of the ’505 patent. Patent Owner filed a Preliminary Response (Paper 6,
`
`“Prelim. Resp.”).
`
`On May 13, 2020, applying the standard set forth in 35 U.S.C.
`
`§ 314(a), which requires demonstration of a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one challenged claim, we
`
`instituted an inter partes review of all challenged claims of the ’505 patent
`
`based on all grounds presented in the Petition. Paper 12 (“Inst. Dec.”), 45–
`
`46.
`
`
`1 Claims 49 and 51 were added to the ’505 patent as a result of an inter
`partes reexamination of the ’505 patent. Ex. 1003 (Inter Partes
`Reexamination Certificate No. US 7,821,505 C1), 1:19–20, 3:46–50, 3:54–
`57.
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`2
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`After institution, Patent Owner filed a Patent Owner Response
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`(Paper 17, “PO Resp.”), Petitioner filed a Corrected Reply to the Patent
`
`Owner Response (Paper 20, “Pet. Reply”), and Patent Owner filed a
`
`Corrected Sur-reply (Paper 23, “PO Sur-reply”). An oral hearing was held
`
`on February 4, 2021, and a copy of the hearing transcript has been entered
`
`into the record. Paper 38 (“Tr.”). After the hearing, with the Board
`
`authorization (Paper 34), the parties filed supplemental briefing to address
`
`alleged improper new arguments and evidence included in Petitioner’s
`
`Reply. Papers 36, 37.
`
`B. Related Matters
`
`According to Petitioner, the ’505 patent has been asserted in the
`
`following patent infringement cases: Universal Electronics, Inc. v. Logitech
`
`Inc., 8-11-cv-01056 (C.D. Cal. 2011) (terminated); Universal Electronics,
`
`Inc. v. Peel Technologies, Inc., 8-13-cv-01484 (C.D. Cal. 2013)
`
`(terminated); and Universal Electronics, Inc. v. Roku, Inc., 8:18-cv-01580
`
`(C.D. Cal. 2018) (pending) (“the related litigation”). Pet. 1–2. Patent
`
`Owner identifies the same cases as related matters. Paper 3, 2.
`
`The ’505 patent is one of several patents owned by Patent Owner that
`
`are challenged by Petitioner in various petitions for inter partes review,
`
`including in IPR2019-01595, IPR2019-01608, IPR2019-01612, IPR2019-
`
`01613, IPR2019-01614, IPR2019-01615, IPR2019-01619, and IPR2019-
`
`01621. See id. The parties also note that the ’505 patent has been the
`
`subject of Inter Partes Reexamination No. 95/001,761 (“the ’505 Patent
`
`Reexamination Proceeding” or “the ’505 Patent Reexamination”) (Pet. 2;
`
`Paper 3, 3), which confirmed the patentability of claims 1–12 (Ex. 1003,
`
`1:17).
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`C. The ’505 Patent
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`The ’505 patent, titled “CONTROLLING DEVICE WITH DUAL-
`
`MODE, TOUCH-SENSITIVE DISPLAY,” issued October 26, 2010, from
`
`U.S. Patent Application No. 12/797,695, filed June 10, 2010 (“the ’695
`
`application”). Ex. 1001, codes (21), (22), (45), (54). The ’695 application is
`
`a continuation of U.S. Patent Application 12/103,895, filed on April 16,
`
`2008 (issued as U.S. Patent No. 7,782,309 (“the ’309 patent”)), which is a
`
`continuation of U.S. Patent Application No. 11/290,358, filed on November
`
`30, 2005 (issued as U.S. Patent No. 7,432,916). Id. at code (63). The ’505
`
`patent also claims the benefit of U.S. Provisional Patent Application No.
`
`60/634,680, filed on December 9, 2004. Id. at code (60).
`
`The ’505 patent describes a universal controlling device having a
`
`dual-mode, touch-sensitive display. Id. at 1:16–18, 2:12–15.
`
`Figure 2 of the ’505 patent is reproduced below.
`
`Figure 2 depicts an exemplary universal controlling device of the
`
`’505 patent. Id. at 2:39–41.
`
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`As shown in Figure 2, universal controlling device 100 comprises
`
`dual-mode touch-sensitive display 504 and hard keys (or mechanical
`
`buttons) 342. Id. at 4:41–47, 4:57–60. In an embodiment, mechanical
`
`buttons 324 include pointer mode activation button 512, which is used to
`
`toggle universal controlling device 100 between a first operational mode and
`
`a second operational mode, also called the pointer control mode. Id. at
`
`5:38–42. According to the ’505 patent, in the first operational mode,
`
`universal controlling device 100 is used to command conventional
`
`operational functions of home appliances. Id. at 5:17–19. In the second
`
`operational mode, universal controlling device 100 accepts input from a user
`
`to “control[] a cursor or pointer on a larger, second device, such as a
`
`personal computer, television, or the like.” Id. at 2:54–58.
`
`Figure 3 of the ’505 patent is reproduced below.
`
`Figure 3 illustrates an exemplary system environment in which the
`
`exemplary universal controlling device of Figure 2 may be utilized. Id. at
`
`
`
`2:42–44.
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`Patent 7,821,505 B2
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`As depicted in Figure 3, universal controlling device 100 can be used
`
`to command functional operations of various appliances typically found in a
`
`home entertainment center, such as VCRs 400, DVD and CD players 402,
`
`cable set-top boxes and satellite receivers 404, AV receivers 406,
`
`television 408, and home theater personal computer (“HTPC”) 410. Id. at
`
`4:14–25. The ’505 patent describes that HTPC 410 is typically a PC that is
`
`set up at the home entertainment center and is used for home entertainment
`
`functions, such as playing back music and video files, playing DVDs, and
`
`viewing digital photos. Id. at 4:25–29.
`
`The ’505 patent further describes that, in the first operational mode,
`
`universal controlling device 100 may be used to select a specific media
`
`playback device, such as DVD player 402, as the input to AV receiver 406,
`
`resulting in the display of the DVD output on TV 408. Id. at 5:17–23. In
`
`addition, the operation of DVD player 402, AV receiver 406, TV 408, etc.,
`
`may be controlled by using soft buttons displayed on display 504, as well as
`
`mechanical buttons 342, of universal controlling device 100. Id. at 5:23–26.
`
`For example, when operating in the first operational mode, the application
`
`software of universal controlling device 100 presents on display 504 a
`
`graphical user interface comprised of icons to control one or more of a
`
`plurality of audio-visual equipment (target devices), including a TV, VCR,
`
`DVD, satellite box, AV receiver, and a HTPC. Id. at 5:8–14. The ’505
`
`patent describes that when the user activates a mechanical button or soft
`
`button, a command code specific to an operational function on a specific
`
`target device is sent to the target device. Id. at 5:30–34.
`
`According to the ’505 patent, in the second operational mode, i.e., the
`
`pointer control mode, the touch-sensitive digitizing sub-system on universal
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`controlling device 100 is used as a “mousing (pointer control) input device”
`
`for HTPC 410. Id. at 5:35–38.
`
`Figure 4 of the ’505 patent is reproduced below.
`
`
`
`Figure 4 illustrates an exemplary flow of data within the exemplary system
`
`environment of Figure 3. Id. at 2:45–46. As depicted in Figure 4,
`
`communications with HTPC 410 may be made by means of USB RF
`
`transceiver and converter 412, which receives and converts a data-stream
`
`transmitted by universal controlling device 100 into USB messages for
`
`HTPC 410. Id. at 4:34–40.
`
`The ’505 patent describes that when universal controlling device 100
`
`is placed into the pointer control mode, position information output from the
`
`touch-sensitive digitizer sub-system is converted into a data-stream, which is
`
`sent via a transmitter to receiver and converter 412 connected to a USB port
`
`on HTPC 410. Id. at 5:48–53. The ’505 patent further describes that USB
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`receiver and converter 412 converts the received data-stream into mouse
`
`position messages that are sent to the Windows operating system of
`
`HTPC 410 via the USB connection. Id. at 5:53–56. According to the
`
`’505 patent, HTPC 410 may then use the data provided by the
`
`touch-sensitive digitizing sub-system of universal controlling device 100 in
`
`the same way as data received from a USB mouse to control the movement
`
`of a displayed pointer. Id. at 5:56–60. Referencing Figure 4, the ’505 patent
`
`describes that, as illustrated in Figure 4, when stylus 506 is moved across
`
`dual-mode display 504, displayed pointer 420 is moved in a corresponding
`
`direction on HTPC desktop 422 displayed on TV 408. Id. at 5:60–63. The
`
`’505 patent refers to HTPC desktop 422 as “HTPC GUI [graphical user
`
`interface] desktop 422.” Id. at 5:63–6:2.
`
`D. Illustrative Claim
`
`Independent claim 5 is illustrative of the challenged claims and is
`
`reproduced below with bracketing used by Petitioner.
`
`5. A non-transitory computer-readable media embodied in a
`physical memory device having stored thereon instructions for
`causing a universal controlling device comprised of a display
`having a touch-sensitive surface and adapted to transmit data to
`one or more appliances located remotely from the controlling
`device to perform steps comprising:
`
`[5.1] displaying in the display of the universal controlling device
`one or more graphical user interfaces comprised of graphical
`user interface icons;
`
`[5.2] accepting via the touch-sensitive surface of the universal
`controlling device a first input type indicative of a selection
`of a displayed graphical user interface icon;
`
`[5.3] initiating a transmission by the universal controlling device
`to the one or more appliances first data representative of the
`displayed graphical user interface icon selected by the first
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`input type;
`
`[5.4] accepting via the touch-sensitive surface of the universal
`controlling device a second input type indicative of a motion
`made across the touch-sensitive surface;
`
`[5.5] initiating a transmission by the universal controlling device
`to the one or more appliances second data representative of
`the motion made across the touch-sensitive surface provided
`by the second input type; and
`
`[5.6] allowing the universal controlling device to distinguish the
`first input type received via the touch-sensitive surface from
`the second input type received via the touch-sensitive surface.
`
`Ex. 1001, 7:50–8:21.
`
`E. Evidence
`
`1. Applied References
`
`Petitioner relies upon the following references in its challenges
`
`to patentability.
`
`Reference
`
`Date
`
`Designation Exhibit No.
`
`U.S. Patent No. 6,407,779 B1
`
`Issued
`June 18, 2002
`
`Herz
`
`1006
`
`European Patent Application
`Publication No. 0536554 A1
`
`Published
`Apr. 14, 1993
`
`Zetts
`
`1007
`
`U.S. Patent No. 6,025,841
`
`U.S. Patent No. 6,285,357 B1
`
`
`
`Issued
`Feb. 15, 2000
`
`Issued
`Sept. 4, 2001
`
`Finkelstein2 1008
`
`Kushiro
`
`1016
`
`
`2 For clarity and ease of reference, we only list the first named inventor.
`
`9
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`2. Testimonial Evidence
`
`Petitioner relies on two Declarations from Nathaniel Polish, Ph.D. in
`
`support of its Petition and Reply. Ex. 1004 (“Polish Declaration”); Ex. 1024
`
`(“Polish Reply Declaration”). Patent Owner cross-examined Dr. Polish by
`
`deposition. Ex. 2012 (“Polish Dep.”).
`
`In support of its Patent Owner Response, Patent Owner relies on the
`
`Declaration of Eric J. Gould Bear. Ex. 2007 (“Bear Declaration”).
`
`Petitioner cross-examined Mr. Bear by deposition. Ex. 1028 (“Bear Dep.”).
`
`F. Instituted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 12):
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`5–7, 9, 12, 51
`
`103(a)3
`
`Herz, Zetts
`
`10
`
`49
`
`103(a)
`
`Herz, Zetts, Finkelstein
`
`103(a)
`
`Herz, Zetts, Kushiro
`
`
`We instituted an inter partes review of all challenged claims on all grounds
`
`presented in the Petition. Inst. Dec. 45–46.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
`’505 patent has an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA version of § 103.
`
`10
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`III. ANALYSIS
`
`A. Relevant Principles of Law
`
`To prevail in challenging Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`
`review], the petitioner has the burden from the onset to show with
`
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`
`particularity . . . the evidence that supports the grounds for the challenge to
`
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter 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 the subject matter
`
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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
`
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`Patent 7,821,505 B2
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`of skill in the art; and (4) where in evidence, so-called secondary
`
`considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“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) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”)); see Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
`
`F.3d 1342, 1366–67 (Fed. Cir. 2012) (holding that “some kind of motivation
`
`must be shown from some source, so that the [trier of fact] can understand
`
`why a person of ordinary skill would have thought of either combining two
`
`or more references or modifying one to achieve the patented [invention]”)).
`
`Petitioner cannot satisfy its burden of proving obviousness by employing
`
`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1380 (Fed. Cir. 2016).
`
`We analyze Petitioner’s asserted grounds based on obviousness with
`
`the principles identified above in mind.
`
`B. Level of Ordinary Skill in the Art and Petitioner’s Challenge to Patent
`Owner’s Declarant Testimony
`
`We begin our analysis by addressing the level of ordinary skill in the
`
`art. Supported by the testimony of Dr. Polish, Petitioner proposes that a
`
`person of ordinary skill in the art “would have had a bachelor’s degree in
`
`electrical engineering, computer engineering, computer science, or a related
`
`
`4 The parties do not address secondary considerations, which therefore do
`not constitute part of our analysis.
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`subject, and two to three years of work experience in software
`
`programming.” Pet. 11 (citing Ex. 1004 ¶¶ 19–20). According to Petitioner,
`
`“[l]ess experience can be remedied with additional education (e.g., a
`
`master’s degree), and likewise, less education can be remedied with
`
`additional work experience (e.g., 5–6 years).” Id. (citing Ex. 1004 ¶¶ 19–
`
`20).
`
`Patent Owner proposes instead that a person of ordinary skill in the art
`
`would have had “(i) a bachelor’s degree that involved coursework in at least
`
`user interface design and computer programming, and (ii) at least one year
`
`of demonstrated real-world work experience in the field of computer user
`
`interface design.” PO Resp. 8 (citing Ex. 2007 ¶ 52). According to Patent
`
`Owner, “[a]dditional education might substitute for some of the experience,
`
`and substantial experience, such as expertise in and appreciation of human
`
`factors in computing systems sufficient to draft human-computer interaction
`
`specifications, might substitute for some of the educational background.” Id.
`
`(citing Ex. 2007 ¶ 52).
`
`We adopt Petitioner’s articulation. Although Patent Owner asserts
`
`that Petitioner’s proposed definition is overly broad because it omits critical
`
`skills, such as human factors considerations (PO Resp. 9), Patent Owner’s
`
`declarant, Mr. Bear, states that he performed his analysis from both points of
`
`view of a person of ordinary skill in the art, as defined by Petitioner and
`
`Patent Owner, and the differences between them did not affect his overall
`
`conclusions (Ex. 2007 ¶ 56). Likewise, our analysis and conclusions in this
`
`Final Written Decision would be the same regardless of whether Petitioner’s
`
`or Patent Owner’s definition of the level of ordinary skill in the art is
`
`adopted.
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`Nonetheless, Petitioner asserts that a person of ordinary skill in the art
`
`under Patent Owner’s proposed definition would not have understood “much
`
`(if any) of the programing necessary to implement the techniques of the ’505
`
`patent.” Pet. Reply 5. Petitioner argues that we should assign little weight
`
`to Mr. Bear’s testimony because his analysis is performed from “an
`
`unsuitable perspective.” Id. at 6. Patent Owner counters that Mr. Bear’s
`
`testimony should be afforded substantial weight because Mr. Bear is
`
`qualified under both parties’ proposed definitions of a person of ordinary
`
`skill in the art. PO Sur-reply 24.
`
`We are not persuaded by Petitioner’s argument. First, as discussed
`
`above, Mr. Bear states that he performed his analysis from both points of
`
`view of a person of ordinary skill in the art, as defined by Petitioner and
`
`Patent Owner. See Ex. 2007 ¶ 56. Thus, we disagree with Petitioner’s
`
`argument that Mr. Bear’s analysis is performed from “an unsuitable
`
`perspective.” Second, to the extent the qualifications of Mr. Bear have been
`
`called into question (see Tr. 33:2–3 (Petitioner’s counsel asserting that Mr.
`
`Bear is “unqualified”)), we find that Mr. Bear qualifies as a person of at least
`
`ordinary skill in the art under Petitioner’s definition, which states that “less
`
`education can be remedied with additional work experience (e.g., 5–6
`
`years).” Pet. 11 (citing Ex. 1004 ¶¶ 19–20). As stated in the Bear
`
`Declaration, Mr. Bear’s work experience includes at least 9 years of
`
`computer software programming using a variety of coding languages, such
`
`as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2007
`
`¶¶ 6–8. Thus, Mr. Bear is qualified to testify from the perspective of a
`
`person of ordinary skill in the art under Petitioner’s definition of a person of
`
`ordinary skill in the art, and we give Mr. Bear’s testimony due weight.
`
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`C. Claim Construction
`
`In an inter partes review, we apply the same claim construction
`
`standard that would be used in a civil action under 35 U.S.C. § 282(b),
`
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc). 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, 51,358 (Oct. 11, 2018) (amending
`
`37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
`
`37 C.F.R. § 42.100(b) (2019)). In applying such standard, claim terms are
`
`generally given their ordinary and customary meaning, as would be
`
`understood by a person of ordinary skill in the art, at the time of the
`
`invention and in the context of the entire patent disclosure. Phillips, 415
`
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`
`1312–17).
`
`In the Institution Decision, we preliminarily construed two claim
`
`terms recited in claim 5 as follows.
`
`Term
`
`Construction
`
`“second input type indicative of
`a motion made across the touch-
`sensitive surface”
`
`“second input type indicative of
`continuous contact from a first location to
`a second location on the touch-sensitive
`surface” (Inst. Dec. 21)
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`Term
`
`Construction
`
`“second data representative of
`the motion made across the
`touch-sensitive surface”
`
`“second data representative of the
`continuous contact from the first location
`to the second location on the touch-
`sensitive surface” (Inst. Dec. 21–24)
`
`
`The parties agree with our preliminary construction of “second input
`
`type indicative of a motion made across the touch-sensitive surface.”
`
`Pet. 15; PO Resp. 15. Upon considering the complete record, we discern no
`
`reason to deviate from our preliminary construction and, therefore, adopt the
`
`construction as set forth above for this Final Written Decision.
`
`As for the construction of the term “second data representative of the
`
`motion made across the touch-sensitive surface,” the parties nominally agree
`
`with our preliminary construction of the term as set forth above. See PO
`
`Resp. 16; Pet. Reply 2, 4; PO Sur-reply 1. Petitioner argues, however, the
`
`construction should not be further limited to require streaming of data,
`
`indication of the path from the first location to the second location, or
`
`transmission of data during the “second input” recited in claim 5. Pet. Reply
`
`2–4. Patent Owner denies that it seeks such limiting constructions but
`
`nonetheless argues that “data that indicates nothing more than the location
`
`where a user terminates his or her dragging gesture on a touch screen display
`
`cannot represent continuous contact from a first location to a second
`
`location on a touch sensitive surface.” PO Sur-reply 1. Although the
`
`parties’ dispute raises an issue of claim construction, the dispute is closely
`
`related to the issue of whether Herz teaches the limitation “initiating a
`
`transmission by the universal controlling device to the one or more
`
`appliances second data representative of the motion made across the touch-
`
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`Patent 7,821,505 B2
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`sensitive surface provided by the second input type” recited in claim 5. See
`
`PO Resp. 23–28; Pet. Reply 6–12; PO Sur-reply 1–6. Thus, for efficiency
`
`and completeness, we address this issue in the context of the patentability
`
`discussion below, Section III.E.2.d. As discussed below, we discern no
`
`reason to deviate from our preliminary construction and, therefore, adopt the
`
`construction as set forth above for this Final Written Decision.
`
`Apart from the two terms discussed above, no other claim terms need
`
`to be construed expressly for purposes of this Final Written Decision. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (holding that only terms that are in controversy need to be construed,
`
`and “only to the extent necessary to resolve the controversy”); see also
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`
`review).
`
`D. Scope and Content of the Prior Art
`
`1. Overview of Herz (Ex. 1006)
`
`Herz describes a universal remote control system (Ex. 1006, Abstr.)
`
`“for remotely controlling various electronic devices such as television and
`
`audio visual (‘AV’) systems using a single remote control” (id. at 1:6–9).
`
`The remotely controlled AV devices include “videocassette recorder
`
`(‘VCR’), stereo system, and digital versatile disc (‘DVD’) components, etc.”
`
`Id. at 2:62–65.
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`17
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`Figure 5 of Herz is reproduced below.
`
`
`
`Figure 5 shows an exemplary remote control of Herz. Id. at 2:34–35.
`
`As depicted in Figure 5, remote control 500 comprises display
`
`screen 510 for interfacing with a user, stylus 516 for writing on display
`
`screen 510, and buttons 512a–d & 514a–d for issuing commands and/or
`
`entering data into remote control 500. Id. at 4:49–54. In an embodiment,
`
`display screen 510 is connected to a handwriting recognition mechanism that
`
`allows the user to issue commands and/or enter data to remote control 500
`
`by writing onto display screen 510. Id. at 4:59–64. The display screen may
`
`include touch screen display with pressure sensing ability for sensing user
`
`inputs on the screen. Id. at 5:7–13.
`
`In another embodiment, Herz describes a soft graphical user interface
`
`(“Soft GUI”) that displays emulated buttons on the display screen of the
`
`remote control to emulate the control interface of electronic components or
`
`devices connected to the remote control. Id. at 9:49–10:2. According to
`
`Herz, when an emulated button displayed on the screen is pressed by the
`
`user, the remote control translates the user command to the corresponding
`
`18
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`control function and “sends the corresponding control signals to the
`
`specified audio/video device(s).” Id. at 10:2–7. For example, Figure 9b of
`
`Herz (not reproduced herein) shows the remote control displaying “VCR
`
`control buttons (e.g. Play, Forward, Backward, Record, and Pause, etc.) on
`
`the remote control display screen.” Id. at 10:13–17. The user can then
`
`control the displayed VCR functions by pressing the corresponding control
`
`buttons. Id. at 10:17–20. For instance, the user may choose the “Play”
`
`function by pressing the corresponding button on the display screen with a
`
`stylus, which causes the remote control to send the corresponding control
`
`signal for activating the Play function of the VCR. Id. at 10:20–25.
`
`In yet another embodiment, the remote control of Herz provides
`
`expanded control functions for a television set. Id. at 10:60–13:21. In a
`
`specific example of this embodiment, Herz describes the remote control
`
`controlling various aspects of a PIP (picture-in-picture) window displayed
`
`on a television set. Id. at 10:65–12:30. Herz describes that “instead of
`
`transmitting specific predefined commands . . . from the remote control to
`
`the television set,” the remote control can directly control the size and
`
`location of a PIP window displayed on a television by sending
`
`corresponding control signals. Id. at 10:65–11:6, 11:35–12:3.
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`Figure 10c of Herz is reproduced below.
`
`
`
`Figure 10c shows remote control 1010 coupled to television set 1020 (id. at
`
`11:11–15) to allow users control the size of the PIP window displayed on the
`
`television set from the remote control (id. at 11:44–54).
`
`In this example, the user is able to adjust the size of the PIP window
`
`displayed on the television set by resizing the PIP window on the simulated
`
`television screen displayed on the remote control. Id. at 11:44–49. As
`
`shown in Figure 10c, when the user adjusts the size of the PIP window on
`
`the simulated television screen on remote control 1010, the corresponding
`
`PIP window on the television set 1020 is resized accordingly. Id. at 11:49–
`
`52. In an alternative embodiment, the user can resize the PIP window “on
`
`the on-screen display on the television set 1020” by using the remote
`
`control. Id. at 11:49–54.
`
`In another example, which is illustrated in Figure 10d (not reproduced
`
`herein), the user is able to move the location of the PIP window on the
`
`television screen by dragging the emulated PIP window on remote control
`
`1010, or in an alternative embodiment, by dragging the PIP window “on the
`
`on-screen display on the television set 1020.” Id. at 11:55–60. According to
`
`20
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`Herz, in response to the command to reposition the PIP window, the remote
`
`control issues the corresponding repositioning control signals to the
`
`television set by transmitting the new location and/or size of the PIP window
`
`as entered by the user. Id. at 11:64–12:1.
`
`2. Overview of Zetts (Ex. 1007)
`
`Zetts is directed to a method and apparatus for “efficiently
`
`distinguishing between different types of input signals simulated by a
`
`pointing device coupled to a multi-tasking computer system.” Ex. 1007,
`
`code (57). Specifically, Zetts describes “a touch input device (e.g., a touch
`
`workpad) for a data processing system.” Id. at 2:28.
`
`Figure 1 of Zetts is reproduced below.
`
`
`
`Figure 1 shows the front view of a “touch workpad” of Zetts used for the
`
`detection of finger touch and stylus position. Id. at 3:40–42.
`
`As described in Figure 1, Zetts’s touch workpad comprises liquid
`
`crystal display (LCD) 18 and stylus 20 connected to the touch workpad via
`
`cable 22. Id. at 3:55–58, 4:7. Zetts further describes that, in the touch input
`
`21
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`device (i.e., the touch workpad), “input signals generated from a pointing
`
`device, such as a stylus or finger, can be categorized either as a mouse input
`
`signal or as a gesture or handwriting input signal.” Id. at 2:29–31. Zetts
`
`describes that “[w]here such input signals are intended to emulate the
`
`behavior of a mouse and represent commands, such as mouse button down
`
`and mouse button up, the stylus or finger is respectively touched down and
`
`lifted off the surface” (id. at 2:31–33) but “[w]here the input signal is part of
`
`a gesture, a series of such input signals resembling a geometric figure, such
`
`as a circle, a right-hand or a left-hand arrow, are indicative of an action to be
`
`taken by the computer system” (id. at 2:35–37).
`
`According to Zetts, “[o]ne method of differentiating between the types
`
`of input signals is by timing.” Id. at 2:42. Zetts describes that
`
`If the user, after initiating contact between a pointing device and
`the touch sensor, moves the pointing device to a desired position
`and stops motion for a predetermined time period without losing
`contact between the device and the touch sensor (hereinafter
`referred to as “lift-off”), the operating system will recognize an
`input signal at the desired position as a mouse command. For
`example, if the user stops moving the pointing device at a given
`position for 200 milliseconds, a mouse command at the given
`position is recognized.
`
`Id. at 2:42–47 (emphasis added). Zetts further describes that
`
`If, on the other hand, the user does not stop at any given position
`for the specified time delay period and inst
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