Sony Computer Entertainment America LLCv.APLIX IP HOLDINGS CORPORATION

Patent Trial and Appeal Board

May 23, 2016

12329411 (P.T.A.B. May. 23, 2016)

Trials@uspto.gov Paper 36
571-272-7822 Date Entered: May 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY COMPUTER ENTERTAINMENT AMERICA LLC,
Petitioner,

v.

APLIX IP HOLDINGS CORPORATION,
Patent Owner.
____________

Case IPR2015-00229
Patent 7,667,692 B2
____________

Before SALLY C. MEDLEY, BRYAN F. MOORE, and
JASON J. CHUNG, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
shown by a preponderance of the evidence that claims 1–3, 5–13, and 15–20
of U.S. Patent No. 7,667,692 B2 are unpatentable.
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A. Procedural History
Petitioner, Sony Computer Entertainment America LLC, filed a
Petition requesting an inter partes review of claims 1–3, 5–13, and 15–20 of
U.S. Patent No. 7,667,692 B2 (Ex. 1001, “the ’692 patent”). Paper 2
(“Pet.”). Patent Owner, Aplix Holdings Corporation, filed a Preliminary
Response. Paper 14 (“Prelim. Resp.”). Upon consideration of the Petition
and Preliminary Response, on May 29, 2015, we instituted an inter partes
review of claims 1–3, 5–13, and 15–20, pursuant to 35 U.S.C. § 314. Paper
15 (“Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 18 (“PO Resp.”)) and Petitioner filed a Reply (Paper 24
(“Pet. Reply”)).
Patent Owner filed a Motion for Observations (Paper 29) and
Petitioner filed a Response to the Observations (Paper 33).
An oral hearing was held on January 19, 2016, and a transcript of the
hearing is included in the record (Paper 35 (“Tr.”)).
B. Related Proceedings
The ’692 patent is involved in the following lawsuit: Aplix IP
Holdings Corp. v. Sony Computer Entertainment, Inc., No. 1:14-cv-12745
(MLW) (D. Mass.). Pet. 59.
C. The ’692 Patent
The ’692 patent relates to hand-held electronic devices, such as cell
phones, personal digital assistants (“PDAs”), pocket personal computers,
smart phones, hand-held game devices, bar-code readers, and remote
controls having a keypad or one or more input elements. Ex. 1001, 1:15–21.
The hand-held device includes, on one surface, one or more software
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configurable input elements that can be manipulated by a user’s thumb(s) or
stylus, and on the other surface, one or more software configurable selection
elements that can be manipulated by a user’s finger(s). Id. at Abstract.
D. Illustrative Claim
Of the challenged claims, claims 1 and 12 are the only independent
claims. Claims 2, 3, 5–11, and 20 depend either directly or indirectly from
claim 1 and claims 13, and 15–19 depend either directly or indirectly from
claim 12.
Claim 1, reproduced below, is illustrative.
1. A method for configuring a human interface and input system
for use with a host hand-held electronic device configured to run
applications, wherein at least one of the applications is associated
with multiple input functions, the method comprising:
selectively disposing on a first surface of the system a first
input assembly having input elements configured to receive input
from a human user through manipulation of the input elements,
wherein at least one of the input elements of the first input
assembly is further configured to map to one or more of the input
functions associated with a selected one of the applications;
disposing on a second surface a second input assembly
having one or more input elements configured to be manipulated
by one or more of the human user's fingers, wherein at least one
of the input elements of the second input assembly is further
configured to selectively map to one or more of the input
functions associated with the selected application; and
selectively arranging the first input assembly and the
second input assembly in substantial opposition to each other.
Ex. 1001, 15:33–55.

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E. Grounds of Unpatentability
We instituted an inter partes review of claims 1–3, 5–13, and 15–20
on the following grounds:
Claims Basis References
1–3 and 5–10 § 103(a) Liebenow1 and Armstrong2
11–13 and 15–20 § 103(a) Liebenow and Hedberg3

II. ANALYSIS
A. Level of Skill of Person in the Art
We find that the level of ordinary skill in the art is reflected by the
prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
Oelrich, 579 F.2d 86, 91 (CCPA 1978).
B. Claim Interpretation
In an inter partes review, we construe claim terms in an unexpired
patent 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); see
also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (2016). Consistent with the broadest reasonable construction,
claim terms are presumed to have their ordinary and customary meaning as
understood by a person of ordinary skill in the art in the context of the entire

1 US 2002/0118175 A1 (Aug. 29, 2002) (Ex. 1003).
2 US 6,469,691 B1 (Oct. 22, 2002) (Ex. 1004).
3 WO 99/18495 (Apr. 15, 1999) (Ex. 1005).
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patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Also, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“limitations are not to be read into the claims from the
specification”). However, an inventor may provide a meaning for a term
that is different from its ordinary meaning by defining the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner proposes a construction for the claim term “delineated
active area.” Pet. 7–8, 22. In our Decision to Institute, we determined that it
was not necessary to construe “delineated active area” (claims 3, 5, and 13).
Dec. 5. Neither party has indicated that our determination in that regard
was improper and we do not perceive any reason or evidence that now
compels any deviation from our initial determination. Additionally, no other
terms need to be construed explicitly for the purpose of this Decision.
C. Obviousness Over Liebenow and Armstrong
Petitioner contends that claims 1–3 and 5–10 are unpatentable under
35 U.S.C. § 103 based on Liebenow and Armstrong. Pet. 27. To support its
contentions, Petitioner provides a detailed showing mapping limitations of
claims 1–3 and 5–10 to structures described by Liebenow and Armstrong.
Pet. 10–30. Petitioner also relies upon the Declaration of Dr. Gregory F.
Welch (Ex. 1008) to support its position. Patent Owner only makes
substantive arguments specific to claims 3 and 5.
Liebenow describes an electronic hand-held information appliance
having a display disposed on a first surface and an input device disposed on
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a second surface opposed to the first surface for inputting information.
Ex. 1003, Abstract. Figure 1 of Liebenow is reproduced below.

As shown in Figure 1 of Liebenow, digital information appliance 100
is sized and shaped to be held by a user in both hands. Housing 102 includes
front surface 104 and back surface. Id. ¶ 25. One or more function keys
such as 150, 152, and 154 may be mounted on front surface 104. Display
116 may be a touch-screen for touch or pen input of information and data.
Id. ¶¶ 26, 33. Figure 5 of Liebenow is reproduced below.

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As shown in Figure 5, back surface may be comprised of one or more
touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
defined as keys of a keyboard (emulated as an electromechanical keyboard
seen in Figure 2) so that a user touching the panel within such an area would
accomplish actuation of a key. Id. In particular, panel 140 may be divided
into left and right key ranges 142 and 144, such that fingers of a user’s left
and right hands may be positioned over the touch sensitive panel to be in
position for typing. Various key configurations may be defined as desired
by the user or as required by the applications executed by the digital
information appliance. Id.
Armstrong teaches a handheld electronic device, such as a
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PDA, with a display and a number of input elements for accepting user
inputs. Ex. 1004, 2:5–15, 6:4–16.
Claim 14
Claim 1 requires configuring a human interface and input system for
use with a host hand-held electronic device configured to run applications,
wherein at least one of the applications is associated with multiple input
functions. Ex. 1001, 15:34–37. For these limitations, Petitioner contends
that Liebenow discloses a hand-held device (Liebenow appliance 100)
configured to process an application (Liebenow word processing
application) having two or more functions (“Space Bar,” “Ctrl,” “Alt,” and
“Shift” functions). Pet. 10–12 (citing Ex. 1003 ¶¶ 25, 34, 36, 44, 48, 56, 60,
66, 69, Figs. 2, 3, 8, 9, 12, 13, 15). We are persuaded by Petitioner’s
showing, which we adopt as our own, that Liebenow discloses configuring a
human interface and input system for use with a host hand-held electronic
device configured to run applications, wherein at least one of the
applications is associated with multiple input functions.

4 Patent Owner argues that we should not rely on Petitioner’s anticipation
arguments to evaluate obviousness, but that we should observe that no
evidence has been presented about how any proposed combination of prior
art references renders obvious claims 1–3, 5, 7–10, 12, 13, 15–18, and
20. PO Resp. 3–5. We decline to do so. Although Petitioner alleges these
claims are unpatentable as obvious, yet appears to present a case of
anticipation, we determine that such a presentation is not a basis for
dismissing the petition. It is axiomatic patent law that a disclosure that
anticipates under 35 U.S.C. § 102 also may render the claim unpatentable
under 35 U.S.C. § 103, because anticipation is the epitome of obviousness.
See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled
that ‘anticipation is the epitome of obviousness.’” (quoting Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983))).

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Petitioner also contends that Liebenow describes a first surface of a
first input assembly (front surface 104 seen above) having input elements
(e.g., 146, 148, 150, etc.) wherein at least one of the input elements of the
first input assembly is further configured to map to one or more of the input
functions (“Space Bar,” “Ctrl,” “Alt,” and “Shift” functions) associated with
a selected one of the applications (word processing application) as recited
per claim 1. Pet. 12–14. We are persuaded by Petitioner’s showing, which
we adopt as our own, that Liebenow describes selectively disposing on a
first surface of the system a first input assembly having input elements
configured to receive input from a human user through manipulation of the
input elements, wherein at least one of the input elements of the first input
assembly is further configured to map to one or more of the input functions
associated with a selected one of the applications.
Petitioner further contends with respect to claim 1 that Liebenow
discloses a second surface of a second input assembly (Liebenow back
surface 106) having one or more input elements configured to be
manipulated by one or more of the human user’s fingers (back-surface input
device 130) wherein at least one of the input elements of the second input
assembly (touch sensitive panels 140) is further configured to map
selectively to one or more of the input functions (Fig. 3 input of keys 132
and 134) associated with the selected application (word processing
application). Pet. 14–18. We are persuaded by Petitioner’s showing, which
we adopt as our own, that Liebenow describes disposing on a second surface
a second input assembly having one or more input elements configured to be
manipulated by one or more of the human user’s fingers, wherein at least
one of the input elements of the second input assembly is further configured
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to map selectively to one or more of the input functions associated with the
selected application.
Petitioner further contends with respect to claim 1 that Liebenow
discloses arranging selectively the first input assembly and the second input
assembly in substantial opposition to each other (front surface 104 opposed
to Liebenow back surface 106). Pet. 18–19. Based on the record before us,
Petitioner has shown by a preponderance of the evidence that Liebenow
describes arranging selectively the first input assembly and the second input
assembly in substantial opposition to each other.
Claims 2 and 7–10
For claims 2, and 7–10 each of which depends directly from claim 1,
Petitioner relies on Liebenow to meet the additional limitations of those
claims. Pet. 28–29, 30. We agree with Petitioner’s showing, which we
adopt as our own, that Liebenow discloses the additional limitations of
claims 2, and 7–10. Patent Owner does not argue these claims separately.
PO Resp. 15–25.
Claims 3 and 5
Claim 3 depends directly from claim 1 and includes “selectively
disposing the second input assembly to include at least one sensor pad
comprising a selectively configurable sensing surface that provides more
than one delineated active area based on the selected application.” Ex. 1001,
15:61–66. Claim 5, which depends from dependent claim 3 further includes
“selectively arranging the first delineated active area and the second
delineated active area based on the user’s hand.” Id. at 16:3–5. Petitioner
contends with respect to claims 3 and 5 that Liebenow discloses disposing
selectively the second input assembly to include at least one sensor pad
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(touch sensor 140) comprising a selectively configurable sensing surface
(variety of key configurations, Ex. 1003 ¶ 48) that provides more than one
delineated active area (a box, circle, etc. displayed over the key
representation, Ex. 1003, ¶ 66) based on the selected application. Pet. 20–
23.
Patent Owner disagrees that Liebenow discloses selectively
configurable sensing surface that provides more than one delineated active
area based on the selected application as required by claim 3. PO Resp. 16–
20. In particular, Patent Owner argues that one skilled in the art would not
have considered Liebenow to provide more than one delineated active area
based on a selected application because the function of such keys are defined
at the device or operating system level, and not at the application level. PO
Resp. 18. We have considered the testimony to which we are directed in
that regard. PO Resp. 18; Ex. 2003 ¶¶ 59–61. Dr. MacLean’s testimony,
however, is based on her “view” that the claim language indicates that
mapping is specified at the level of the application and not at the device or
operating system level, resulting in different applications having different
mappings, because, in part, of the use of the word “provides” rather than the
word “selects.” Ex. 2003 ¶¶ 57–58. However, neither Patent Owner nor Dr.
MacLean explains sufficiently why we should construe claim 3 or claim 5
that way. In particular, there is nothing in claim 3 or claim 5 that suggests
how the mapping is specified, much less that the mapping is specified at the
level of the application and not at the device or operating system level
resulting in different applications having different mappings as asserted.
The argument, and Dr. MacLean’s testimony in support of the argument, are
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not commensurate in scope with the language of claims 3 and 5, and in any
event are conclusory, not supported by record evidence.
For example, Patent Owner has not directed us to where in the ’692
patent the language of claim 3 or claim 5 requires us to read into either claim
that mapping is specified at the level of the application and not at the device
or operating system level. The portion of the Specification of the ’692
patent to which the parties direct our attention (PO Resp. 19; Pet. Reply 14)
describes that the mapping of input elements to particular input functions for
a given software application of “the pressure sensor pad 354 may be
configured in software to represent one or more delineated active areas
corresponding to different programmable functions depending on the
application.” Ex. 1001, 9:24–27 (emphasis added). We disagree with Patent
Owner that this passage would have indicated to a person of ordinary skill in
the art that the selected application must be customized at the application
level. The language “may” recited in the Specification of the ’692 patent
(id.) is not a special definition; rather, it is permissive such that the pressure
sensor pad “may be configured” in software. A person of ordinary skill in
the art would have understood that the functionality of the selected
application may be programmed at the application level or when the hand-
held device is manufactured, for example, at the device or operating system
level. In any event, as noted above, the claim language does not include any
specificity with respect to when or how the device is customized. Based on
the record before us, Petitioner has shown by a preponderance of the
evidence that Liebenow describes a first input element mapped to at least a
first function of the selected application.
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Claim 6
Petitioner relies on Armstrong for its description of positioning an
input element with a “resilient dome cap(s) for providing tactile feedback to
the finger depressing the depressible surface” on a hand-held electronic
device. Pet. 28; Ex. 1004, 6:10–14, 9:11–15. Specifically, Petitioner relies
on Armstrong’s input elements that provide tactile feedback to meet the
limitation of claim 6 to “a palpable detent with at least one input element . . .
so as to provide tactile feedback when manipulated by the human user.” Pet.
28–29. Petitioner concludes that one of ordinary skill in the art would have
recognized that the hand-held device of Liebenow’s input elements could be
replaced with input elements that provide tactile feedback, like Armstrong’s
input elements, as a simple substitution of one known element for another
known element. Pet. 28–29; Ex. 1008 ¶¶ 39–42. Based on the record before
us, Petitioner has shown by a preponderance of the evidence that the
combination of Liebenow and Armstrong describe a palpable detent with at
least one input element of the first input assembly or the second input
assembly so as to provide tactile feedback when manipulated by the human
use.
D. Obviousness Over Liebenow and Hedberg
Petitioner contends that claims 11–13, and 15–20 are unpatentable
under 35 U.S.C. § 103 based on Liebenow and Hedberg. Pet. 30. To
support its contentions, Petitioner provides a detailed showing mapping
limitations of claims 11–13, and 15–20 to structures described by Liebenow
and Hedberg. Id. at 26–27, 30–32. Petitioner also relies upon the
Declaration of Dr. Welch (Ex. 1008) to support its position.
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Hedberg describes a hand-held display device that includes control
buttons 3 on the display connected to control circuits and a gyroscope 6
incorporated in the display device and connected to the control circuits.
Ex. 1005, Abstract. The display device is responsive to movements in the
space for displaying an image in different magnification and/or in different
parts. Id. Hedberg describes that an equilibrium of force accelerometer may
be used in place of the gyroscope. Id. at 3:26–32.
Each of claims 11 and 20 depends directly from claim 1. Each of
claims 13 and 15–19 depends directly from independent claim 12.
Analogous Art
We first address whether Hedberg is analogous art. Patent Owner
argues that Hedberg is not analogous art because it is neither in the same
field of endeavor as the ’692 patent nor reasonably pertinent to the particular
problem addressed by the ’692 inventors. PO Resp. 6–12. We have
considered Patent Owner’s arguments, but do not find them persuasive.
The test for determining whether a prior art reference constitutes
analogous art to the claimed invention is: (1) whether the prior art is from
the same field of endeavor, regardless of the problem addressed, or (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004).
Patent Owner conflates the two prong analogous art test. In defining
the field of invention of the ’692 patent, Patent Owner looks to the problems
solved by the inventors and argues that the field of endeavor of the ’692
patent is ergonomic and versatile data input on a hand-held device. PO
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Resp. 12–15. Such a showing is insufficient to establish the field of
endeavor.
In determining the field of endeavor, we look to the ’692 patent’s
written description and claims, including the structure and function of the
invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in
defining the field of invention, and in determining the relevance of Hedberg
to the obviousness inquiry, here a broad approach should be taken. Pet.
Reply 6–7. Indeed, the Supreme Court provided guidance in determining
the applicability of a reference’s teachings in an obviousness inquiry. In
KSR Int’l Co. v. Teleflex Inc., the Court explained that if a feature has been
used to improve one device, and a person of ordinary skill in the art would
have recognized that it would improve a similar device in that field or
another, implementing that feature on the similar device is likely obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Here, the appropriate scope of the field of endeavor is hand-held
devices with one or more input elements. Ex. 1001, 1:13–19, claim 12.
Patent Owner characterizes Hedberg as being in the field of viewing or
displaying systems. PO Resp. 12–14. But in arriving at that description,
Patent Owner too narrowly characterizes the Hedberg invention. Hedberg is
within the field of endeavor because it describes hand-held electronic
devices, with one or more input elements. Ex. 1005, Title, 6:34–7:7, 7:15–
20, Fig. 5.
Because we find that Hedberg is within the same field of endeavor as
the claimed invention, we need not consider Patent Owner’s arguments
regarding whether Hedberg is reasonably pertinent to the particular problem
with which the inventors are involved. PO Resp. 14–15.
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Claim 11 and 19
Claims 11 and 19 recite that the hand-held device includes an
accelerometer or gyroscope. Petitioner relies on Hedberg for its description
of a gyroscope or accelerometer included in a hand-held device. Pet. 30–32.
Petitioner concludes that one of ordinary skill in the art would have
recognized that the addition of a gyroscope and/or an accelerometer would
have increased the ability to control the Liebenow hand-held device. Pet.
31; Ex. 1008 ¶¶ 43–44. Thus, based on the record before us, Petitioner has
shown by a preponderance of the evidence that Liebenow describes the
limitations of claims 11 and 19.
As to claims 11 and 195, Patent Owner argues that Liebenow and
Hedberg should not be combined. PO Resp. 21–24. We have considered
Patent Owner’s arguments regarding why Liebenow and Hedberg should not
be combined. The arguments are not persuasive. In particular, Patent
Owner argues that Hedberg focuses on displaying and viewing on an
electronic device and is not concerned with data entry on an electronic
device; whereas Patent Owner argues that Liebenow focuses on keyed data
entry via a rear keyboard. PO Resp. 21–24. As such, Patent Owner argues,
one would not want to incorporate Hedberg’s displaying and viewing that
involve panning and zooming into the Liebenow data entry device with
indicia displayed on a front-surface display screen. Id. Patent Owner, and
Patent Owner’s expert Dr. McLean, focus too narrowly on the strict
disclosures of the references and why the physical embodiments of the
references could not be combined. See, e.g., Ex. 2003 ¶ 76. Patent Owner’s

5 Patent Owner makes reference to claim 13 in this section of its Response
but makes no arguments directed to claim 13.
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arguments are not persuasive. The obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”)
Based on the record before us, and weighing the evidence, we give
substantial weight to Dr. Welch’s testimony that use of inertial sensors such
as gyroscopes and accelerometers in handheld devices to enable device
motion as input was known at the time of the invention and that using such
sensors to control the display of a hand held device would increase the
usability of the device. Ex. 1008 ¶¶ 43–44; Ex. 1041. We agree with
Petitioner’s showing, which we adopt as our own, that Liebenow in
combination with Hedberg discloses a gyroscope or accelerometer as recited
in claims 11 and 19 and that adding a gyroscope or accelerometer to the
Liebenow device would have been desirable for the reasons provided by
Petitioner.
Claim 12
Independent claim 12 is similar in scope to independent claim 1.
Petitioner argues these claims collectively, choosing claim 1 as
representative and Patent Owner does not present separate arguments
regarding claim 12. See, e.g., Pet. 22; PO Resp. 15–25. Petitioner relies on
Liebenow to meet the limitations of claim 12. Accordingly, the discussion
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above with respect to claim 1 equally applies to claim 12. Thus, based on
the record before us, Petitioner has shown by a preponderance of the
evidence that Liebenow describes the limitations of claim 12.
Claim 13
Patent Owner’s arguments regarding claim 13 are the same as those
regarding claim 3 discussed above. PO Resp. 24–25. Thus, for the reasons
stated above we are not persuaded by Patent Owner’s arguments regarding
claim 13.
Claims 15–18 and 20
For claims 15–18, and 20 each of which depends directly from either
claim 1 or independent claim 12, Petitioner relies on Liebenow to meet the
additional limitations of those claims. Pet. 28–29, 30. We agree with
Petitioner’s showing, which we adopt as our own, that Liebenow discloses
the additional limitations of claims 15–18, and 20. Patent Owner does not
argue these claims separately. PO Resp. 15–25.
E. Objective Evidence of Nonobviousness
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Notwithstanding what the teachings of the prior art would have suggested to
a person of ordinary skill in the art at the time of the claimed invention, the
totality of evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the claimed invention would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471–1472 (Fed. Cir. 1984). Secondary considerations may
include any of the following: long-felt but unresolved needs, failure of
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others, unexpected results, commercial success, copying, licensing, and
praise.
There must be a demonstrated “nexus” between the merits of the
claimed invention and the evidence of secondary considerations before that
evidence is accorded substantial weight in an obviousness determination.
Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
(Fed. Cir. 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996);
In re Fielder, 471 F.2d 640, 642 (CCPA 1973). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the absence of an established
nexus with the claimed invention, secondary consideration factors such as
commercial success, satisfaction of a long-felt but unresolved need,
licensing and copying by others are not entitled to much, if any, weight and
generally have no bearing on the legal issue of obviousness. See In re
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
The burden of showing that there is a nexus lies with the Patent
Owner. Id.; see In re Paulsen, 30 F.3d at 1482.
Patent Owner argues that secondary considerations show that the ’692
patent claims are not obvious. PO Resp. 25–28. In particular, Patent Owner
argues that Petitioner has not pointed to a prior art reference meeting the
limitations of the challenged claims. Id. at 26. Patent Owner’s argument is
misplaced insofar as an inquiry into secondary considerations is concerned,
and in any event, has been addressed. As explained above, Liebenow in
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combination with Armstrong or Hedberg meet the limitations of the
challenged claims.
Patent Owner also cites cases regarding “failed attempts by others.”
PO Resp. 27–28. Patent Owner does not present any substantive argument
regarding this issue.
Conclusion
We have considered the entirety of the evidence before us submitted
by Patent Owner as indicia of nonobviousness. On balance, the evidence of
obviousness outweighs the evidence of nonobviousness, with respect to the
challenged claims. The evidence of obviousness is strong and the evidence
of nonobviousness is weak, for the reasons discussed above. All of Patent
Owner’s arguments have been considered. Petitioner has proved, by a
preponderance of the evidence that claims 1–3 and 5–10 are unpatentable
over the combination of Liebenow and Armstrong and claims 11–13 and 15–
20 are unpatentable over the combination of Liebenow and Hedberg.

III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 1–3 and 5–10 of the ’692 patent
are unpatentable under 35 U.S.C. § 103(a) as obvious over Liebenow and
Armstrong and claims 11–13 and 15–20 are unpatentable under 35 U.S.C. §
103(a) as obvious over Liebenow and Hedberg.

IV. ORDER
In consideration of the foregoing, it is
IPR2015-00229
Patent 7,667,692 B2

21

ORDERED that claims 1–3, 5–13, and 15–20 of the ’692 patent are
held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

For Petitioner:
Eric A. Buresh
eric.buresh@eriseip.com
Abran J. Kean
abran.kean@eriseip.com

For Patent Owner:
Michael Mauriel
mmauriel@mkwllp.com
Robert J. Gilbertson
BGilbertson@GreeneEspel.com
Sybil L. Dunlop
SDunlop@greeneespel.com
X. Kevin Zhao
kzhao@greeneespel.com
Sherman W. Kahn
skahn@mkwllp.com