SRK Technology LLC

Patent Trials and Appeals Board

Oct 19, 2021

IPR2020-00819 (P.T.A.B. Oct. 19, 2021)

Trials@uspto.gov Paper 46
571-272-7822 Date: October 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SNAP, INC.,
Petitioner,

v.

SRK TECHNOLOGY LLC,
Patent Owner.

IPR2020-00819
Patent 8,996,059 B2

Before KRISTEN L. DROESCH, GEORGIANNA W. BRADEN, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
We have authority to hear this inter partes review under
35 U.S.C. § 6, and 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 establishes by the preponderance of the evidence
that claims 1, 2, 4–13, 15–19, 21–25, 30, 32–37, and 46–48 of U.S. Patent
No. 8,996,059 (Ex. 1001, “’059 Patent”) are unpatentable.
A. Procedural History
Snap Inc. (“Petitioner”) filed a Petition requesting an inter partes
review of claims 1, 2, 4–13, 15–19, 21–25, 30, 32–37, and 46–48 of the ’059
Patent. Paper 2 (“Pet.”). SRK Technology LLC (“Patent Owner”) filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”). Pursuant to our
authorization, Petitioner filed a Reply to the Preliminary Response
(Paper 11) to address the issue of discretionary denial under 35 U.S.C.
§§ 314(a), 325(d), to which Patent Owner filed a Sur-reply (Paper 13).
Pursuant to 35 U.S.C. § 314, we instituted trial on October 21, 2020, as to all
of the challenged claims of the ’059 Patent (Paper 15, “Institution Decision”
or “Dec.”).
After institution of trial, Patent Owner filed a Response (Paper 27,
“PO Resp.”), to which Petitioner filed a Reply (Paper 29, “Pet. Reply”), to
which Patent Owner filed a Sur-reply (Paper 33, “PO Sur-reply”).
Petitioner relies on a Declaration of Christopher M. Schmandt
(“Mr. Schmandt,” Ex. 1002) to support its Petition. Patent Owner relies on a
Declaration of Andrew Cromarty, Ph.D. (“Dr. Cromarty,” Ex. 2016) to
support its Response. Petitioner relies on a second Declaration of
Mr. Schmandt (Ex. 1024) in support of its Reply. Patent Owner relies on a
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second Declaration of Dr. Cromarty (Ex. 2031) to support its Sur-reply.
Mr. Schmandt and Dr. Cromarty were cross-examined during trial, and
transcripts of Mr. Schmandt’s depositions (Exs. 2017, 2023) and Dr.
Cromarty’s depositions (Exs. 1025, 1036, 2032) are included in the record.
Pursuant to our authorization (Paper 34), Petitioner filed Observations
on Cross-Examination Testimony of Dr. Andrew Cromarty (Paper 38), to
which Patent Owner filed Objections to Petitioner’s Observations
(Paper 41).
Oral argument was held on July 23, 2021. A transcript of the oral
argument is included in the record. Paper 45 (“Tr.”).
B. Related Matters
The parties indicate the ’059 Patent is or has been the subject of
litigation in SRK Technology LLC v. Snap, Inc., Case No. 2:19-cv-02515-
PSG–JPR (C.D. Cal). See Pet. 1; Paper 4, 2; Paper 7, 2. Patent Owner
further indicates that the proceeding in IPR2020-00820 challenging claims
of U.S. Patent No. 9,930,159 would affect, or may be affected by, a decision
in this proceeding. See Paper 4, 2; Paper 7, 2.
C. The ’059 Patent (Ex. 1001)
The ’059 Patent relates to a method and system for determining a
communication mode for recording a media message on a communication
device. See Ex. 1001, code (57). The method and system includes an
adaptive recording application executable by a processor configured to
record the media message on the communication device. See id. at 6:61–64.
The adaptive recording application detects activation (e.g., click, touch,
press, push, tap) of an interface element on the communication device for
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initiating the recording of the media message. See id. at 6:64–7:4. The
adaptive recording application determines the duration of the activation of
the interface element and compares the duration with one or more
configurable timing parameters. See id. at 7:11–20, Fig. 1A. The
configurable timing parameters can be fixed as a system settable parameter,
a user-settable parameter, or may vary, and can be calculated based on the
type of communication device, characteristics of the user, user interactions,
past interactions, etc. See id. at 7:34–39. The adaptive recording application
can learn and change the configurable timing parameters based on the user’s
behavior with the adaptive recording application. See id. at 7:42–45. Based
on the duration of the activation of the interface element, the adaptive
recording application selects one of the communication modes. See id.
at 7:46–51. For example, the adaptive recording application can select the
tap-to-start communication mode if the duration of the activation is less than
a critical time, or can select the push-to-talk communication mode if the
duration of the activation is greater than the critical time. See id.
at 7:51–56, Fig. 2. The adaptive recording application triggers recording of
the media message in the selected mode. See id. at 7:57–58.
In another embodiment, the adaptive recording application, upon
detection of activation of the interface element, determines the presence or
absence of a media signal during and/or after the activation of the interface
element, and selects one of the communication modes for recording based
on the presence or absence of the media signal. See Ex. 1001, 7:62–9:9,
Fig. 1B. In yet another embodiment, the adaptive recording application,
upon detection of activation of the interface element, determines the duration
of the activation of the interface element, determines the presence or absence
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of a media signal during and/or after the activation of the interface element,
and selects one of the communication modes for recording based on a
comparison of the duration of the activation element with one or more
configurable timing parameters and the presence or absence of a media
signal. See id. at 10:8–39, Fig. 1C.
D. Illustrative Claims
Claims 1, 12, 18, 30, and 46 are independent and claims 2, 4–11, 13,
15–17, 19, 21–25, 32–37, 47, and 48 variously depend therefrom. Claims 1
and 12 are illustrative and reproduced below:
1. A computer implemented method for determining a
communication mode for recording a media message on a
communication device, comprising:
providing an adaptive recording application executable by at
least one processor configured to record said media
message on said communication device;
detecting activation of an interface element on said
communication device for initiating said recording of
said media message by said adaptive recording
application;
determining a duration of said activation of said interface
element by said adaptive recording application;
comparing said duration of said activation of said interface
element with one or more configurable timing parameters
by said adaptive recording application; and
selecting, in response to said detection of said activation of
said interface element, one of a plurality of
communication modes for recording said media message
by said adaptive recording application based on said
comparison of said duration of said activation of said
interface element with said one or more configurable
timing parameters.
Ex. 1001, 26:35–55.

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12. A computer implemented method for determining a
communication mode for recording a media message on a
communication device, comprising:
providing an adaptive recording application executable by at
least one processor configured to record said media
message on said communication device;
detecting activation of an interface element on said
communication device for initiating said recording of
said media message by said adaptive recording
application;
determining one of a presence and an absence of a media
signal during and/or after said activation of said interface
element; and
selecting, in response to said detection of said activation of
said interface element, one of a plurality of
communication modes for recording said media message
by said adaptive recording application based on said
determination of said one of said presence and said
absence of said media signal.
Ex. 1001, 27:50–67.

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E. Asserted Challenges to Patentability and Asserted Prior Art
Petitioner asserts the following challenges to the patentability of
claims 1, 2, 4–13, 15–19, 21–25, 30, 32–37, and 46–48:
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 4–6, 18, 21, 22,
30, 32, 33, 46, 47 103
1 Newman2, Araki3,4, Trewin5
7–13, 15–19, 23–25,
30, 34–37, 46, 48 103 Newman, Araki, Trewin, Ronkainen
6
12, 13, 15–17 103 Newman, Araki, Ronkainen

II. ANALYSIS
A. Claim Construction
The Board applies the same claim construction standard as applied in
federal courts in civil actions under 35 U.S.C. § 282(b), generally referred to
as the Phillips standard. See 37 C.F.R. § 42.100(b) (2019); Changes to the
Claim Construction Standard for Interpreting Claims in Trial Proceedings
Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,341
(Oct. 11, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips
standard, words of a claim are generally given their ordinary and customary
meaning. Phillips, 415 F.3d at 1312.

1 Petitioner challenges patentability under AIA 35 U.S.C. § 103. See Pet. 5
(citing Ex. 1013, 3).
2 Ex. 1003, US Patent No. 9,063,629 B2, issued June 23, 2015 (“Newman”).
3 Ex. 1005, JP 3888584 B2, issued March 7, 2007 (English translation).
4 Ex. 1004, Original Japanese language of Ex. 1005 (“Araki”).
5 Ex. 1007, US Patent No. 6,948,136 B2, issued Sep. 20, 2005 (“Trewin”).
6 Ex. 1006, US Patent No. 7,721,227 B2, issued May 18, 2010
(“Ronkainen”).
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Petitioner contends that no explicit claim constructions are necessary
for any claim term or phrase. See Pet. 8. Nonetheless, Petitioner advances
claim constructions for “recording,” “adaptive recording application,”
“configurable timing parameter,” “communication mode,” and “critical
time” in the portions of the Petition addressing the challenges to
patentability. See id. at 18–19, 27–28, 33, 36. Patent Owner does not
appear to dispute Petitioner’s constructions for these terms. See generally
PO Resp. In addition, we note that the ’059 Patent provides explicit
definitions or descriptions for the following terms that appear in the claims:
“media message,” “communication mode,” “interface element,” “duration of
activation,” “configurable timing parameters,” “critical time,” “media
signal,” “lower threshold time,” and “upper threshold time.” See, e.g.,
Ex. 1001, 2:59–4:14, 4:56–5:14, 6:28–60, 7:12–45, 8:10–21, 13:50–58.
As demonstrated in the analysis below, we need not construe any
claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999))).
B. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 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
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determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) if in the record, evidence of objective indicia of
nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
C. Level of Ordinary Skill in the Art
Petitioner asserts:
[a] person of ordinary skill as of July 2012 would have
possessed at least a bachelor’s degree in electrical engineering
or computer science, and two years of work experience in
multimedia data communications and user interfaces. A person
could also have qualified with more formal education and less
technical experience, or vice versa.
Pet. 5 (citing Ex. 1002 ¶¶ 15–21). Patent Owner does not dispute
Petitioner’s assertions addressing the skill level of a person of ordinary skill
in the art. See generally PO Resp. We adopt Petitioner’s definition of a
person of ordinary skill in the art as it is consistent with the evidence of the
level of ordinary skill in the art provided by the prior art references. 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).
D. Challenges to Patentability
1. Patentability Challenge to Claims 1, 2, 4–6, 18, 21, 22, 30, 32, 33, 46,
and 47 over Newman, Araki, and Trewin
a. Overview of Newman (Ex. 1003)
Newman is directed to hand-held portable electronic devices that may
provide one or more of audio/text/video communication functions and/or
text transmission, interactive/non-interactive viewing functions, music
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recording/playing functions, downloading/sending of data functions, image
capture functions, and gaming functions. See Ex. 1003, 1:6–26. The
portable electronic devices provide a mode of operation with intermediate
functionality (i.e., second mode) between an active first mode that allows a
user to generally interact with the device and access the full functionality of
the device and a standby-type or sleep-type mode (i.e., third mode) where
the full availability of options is disabled. See id. at 7:19–42, 8:43–55,
10:41–49. The second mode of operation with intermediate functionality
allows the user to access desired information directly, without the need for
the user to consider which on-screen or menu option the user needs to select
in order to interact with the desired information. See id. at 7:43–47, 9:1–10.
“Operating a device using locked user interaction in an intermediate-type
operating mode using specific limited user inputs may require a lower level
of competence and ability of the user than operating a device allowing
general unlocked user interaction.” Id. at 7:62–67. When a portable
electronic device is operating in the intermediate type mode, the battery life
may be prolonged and the processing activity may be reduced, requiring
reduced battery recharging frequency and providing increased application
speed. See id. at 8:1–9.
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Figures 4a through 4c of Newman are reproduced below.

Figures 4a through 4c are illustrations depicting a user responding to a
message received from a third party by dictating a message while operating
in the mode of intermediate functionality. See Ex. 1003, 6:50–51, 6:56–58,
12:8–9. Figure 4a shows device 400 with touch-sensitive screen 402
displaying text message 406 received from third party 404. See id.
at 10:51–53. Figure 4b shows a user has performed a locked user interaction
of touching and holding down “respond” button 408 with finger 416. See id.
at 10:55–57. Holding “respond” button 408 has activated device 400 to
record sound for the duration of the activating user input, i.e., while
“respond” button 408 is held. See id. at 10:59–61. Rather than holding
down a dedicated button to provide activating user input, a first touch may
begin recording and a second touch may end recording. See id. at 10:64–65,
11:2–4. Figure 4b shows the user dictating message 418 while holding
“respond” button 408. See id. at 11:9–12. The device may be configured to
operate voice recognition software to convert the user’s recorded voice into
text message 422. See id. at 11:25–27. Figure 4c shows the user has
stopped speaking, but the user would like to check that message 422 appears
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as they wish before it is transmitted by continuing to hold down “respond”
button 408. See id. at 11:43–49. To indicate that device 400 has recognized
that the user has finished speaking, the word “To” 420 appears to show that
message 422 as dictated will be sent to third party 404. See id. at 11:49–52.
Releasing the press on the button automatically terminates the activating
user input and begins the transmission of message 422 to third party 404.
See id. at 11:60–65, Fig. 4d. The device also is configured to record the
user’s voice message and transmit an audio recording of the message rather
than a text version. See id. at 11:27–33.
b. Overview of Araki (Exs. 1004, 1005)
Araki discloses a speech-recognizing device that comprises a
microphone-button-detecting portion for detecting an ON operation or both
an ON operation and an OFF operation of a microphone button that is
operated when the user is to speak. See Ex. 1005 ¶¶ 15, 41. A
speech-recognizing portion of the device carries out speech recognition
based on the timing of the ON operation, or timing of both an ON and an
OFF operation, detected by the microphone-button-detecting portion. See
id. ¶¶ 15, 41. The user can operate the microphone button in two different
methods, and includes a comparison of the pressing time interval against a
set time interval. See id. ¶ 16. The microphone button can be operated in a
first operating method of pressing for at least one second or a second
operating method of pressing for less than one second. See id. ¶ 69, Fig. 5
(step S14). When operating in the first operating method, wherein the
microphone button has been pressed for at least one second, the device
determines the ending time based on the time at which the microphone
button is released and stops speech recognition. See id. ¶ 69, Fig. 5
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(step S14: YES). When the microphone button has been pressed for less
than one second, the device performs speech recognition on the sound that is
inputted after releasing the microphone button up until a nonspeech segment
continues for at least three seconds. See id. ¶¶ 69, 71, Fig. 5 (step S14: NO).
c. Overview of Trewin (Ex. 1007)
Trewin discloses automatic, dynamic configuration of input devices
used to control computer systems in order to accommodate the control
requirements of users who have differing abilities, or users operating in a
context which affects their control of an input device. See Ex. 1007,
1:13–19, 3:43–46, 4:58–63. The input device may comprise a physical
device, such as a keyboard, mouse, or binary switch, or a less tangible
means, such as speech input, and is used to control a target device such as a
personal computer, household appliance, etc. See id. at 4:64–5:6. The input
device has a number of software implemented configuration options that
include the delay before a key on a keyboard starts to repeat – key repeat
delay (KRD). See id. at 5:9–19, 8:55–58. For KRD, as the user presses keys
on the keyboard, these actions generate key down and key up events that are
passed to the operating system and automatic configuration agent software.
See id. at 8:58–66, Fig. 8. Within the automatic configuration agent, the
events are processed by an input monitor that passes the events to an
analyzer and a user change recognizer. See id. at 8:66–9:3, Fig. 8. The
analyzer uses the events to calculate an appropriate KRD. See id. at 9:3–6.
Based on detection of a change in user, the analyzer responds by restarting
its calculations and passes a recommended KRD for a new user to a
configurer to update the KRD. See id. at 9:6–21, 9:45–59, 10:28–48,
11:36–44; Figs. 8, 10, 12.
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d. Analysis of Claim 1
(1) A computer implemented method for determining a communication mode
for recording a media message on a communication device, comprising:
Petitioner contends that the recited method is taught by, or obvious
over, Newman, Araki, and Trewin, as explained below addressing the
limitations recited in the body of claim 1. See Pet. 14. Patent Owner does
not dispute Petitioner’s assertions addressing the preamble. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d 1375, 1378 (Fed.
Cir. 2015). Based on the entire trial record and for the reasons highlighted
below addressing the limitations set forth in the body of claim 1, we
determine that Petitioner has shown by a preponderance of the evidence that
the combination of Newman and Araki, as well as the combination of
Newman, Araki, and Trewin, teaches or suggests “a computer implemented
method for determining a communication mode for recording a media
message on a communication device,” as recited in claim 1.
(2) providing an adaptive recording application executable by
at least one processor configured to record said media message
on said communication device,
Petitioner asserts that Newman discloses a communication device
such as a smartphone or touch screen device that includes a processor. See
Pet. 14–16 (reproducing Ex. 1003, Figs. 1, 3b, 4a; citing Ex. 1003, 1:6–20,
2:60–65, 9:18–21, 10:51–53). Petitioner contends that Newman discloses a
recording application on its communication device in the form of an email or
messaging application that can record a voice message. See id. at 16–18
(citing Ex. 1003, 1:14–20, 1:30–34, 8:39–41, 9:24–25, 10:51–53, 18:41–45).
Petitioner explains that a user can press and hold a messaging application’s
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“respond” button, as shown in Figures 4a–4c for example, to record a
message. See id. at 16–18 (reproducing Ex. 1003, Figs. 4a–4c; quoting
Ex. 1003, 2:58–61, 10:32–36, 10:50–63; citing Ex. 1003, 8:31–39, 10:9–40,
11:60–66, 12:48–67, 13:23–35, 14:44–49, 15:58–67; Ex. 1002 ¶ 94).
Petitioner asserts that Newman further teaches the recording application is
executable by a processor configured to record the media message on the
communication device, based on Newman’s disclosure of recording an audio
message in response to activating an interface element, such as a respond or
reply button, and storing the message on the device. See id. at 20–21
(quoting Ex. 1003, 19:7–13; citing Ex. 1003, 2:58–61, 4:23–28, 8:31–42,
10:32–36, 10:59–61, 11:60–66, 12:48–67, 14:44–49; Ex. 1002 ¶¶ 100–101).
Petitioner points out that “adaptive recording application” is described
in the ’059 Patent generally as an application that changes its manner of
recording without requiring manual intervention. See Pet. 19 (quoting
Ex. 1001, 5:28–36; citing Ex. 1001, 11:41–48). Petitioner implicitly
acknowledges that Newman’s recording application is not an adaptive
recording application. See id. Petitioner asserts, however, that the
combination of Newman and Araki teaches or suggests the “adaptive
recording application.” See Pet. 19. Specifically, Petitioner asserts that
Araki teaches a technique for using a single button to select one of two
operating modes for recording and performing speech recognition depending
on the duration that the button is pressed. See id. (citing Ex. 1005 ¶¶ 41, 46,
69–71); see also id. at 24 (similar assertions, identifying two operating
modes as push-to-talk and tap-to-start i.e., “push to activate”). According to
Petitioner, “Newman’s application, as adapted by Araki’s teachings, would
have predictably resulted in Newman’s application automatically adapting
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its manner of recording voice messages (e.g., tap-to-start or push-to-talk)
based on the duration of time that a button was pressed and without
requiring user intervention.” Id. at 19; see id. at 26 (similar argument).
Petitioner further asserts that the combination would have predictably
resulted in the reply button or respond button of Newman being adapted to
carry out push-to-talk or tap-to-start functionality. See id. at 25 (citing
Ex. 1002 ¶ 114).
Petitioner further contends that it would have been obvious to one of
ordinary skill in the art to modify the teachings of Newman in view of Araki
such that Newman’s recording application is adaptable. See Pet. 25–26
(citing Ex. 1002 ¶¶ 115–116). Petitioner specifically argues that Newman’s
recording application as modified by Araki to be adaptable, would “improve
the flexibility and ease-of-use of the reply button [] and respond button [] in
Newman” and provide the “benefit of a more accurate recording of the
message regardless of which mode is selected.” Id. (citing Ex. 1002
¶¶ 115–116). In particular, Petitioner contends that a skilled artisan would
have appreciated that users might be confused as to how the buttons work,
for example, how the start and ending of a recording is determined when the
button is pressed. See id. at 25. In support of its arguments, Petitioner cites
Araki’s disclosure addressing when a user does not understand the use of the
speech recognition device and how to activate the microphone button. See
id. (citing Ex. 1005 ¶ 25). Petitioner asserts that Araki teaches the system
can select a recording mode that reflects the user’s intentions based on a
duration of activation of the user interface element. See id. (citing 1005
¶ 89; Ex. 1002 ¶ 116). According to Petitioner,
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[f]or example, regardless of the duration for which a user
activated the ‘“reply’ button []” and ‘“respond’ button [],” the
messaging program in Newman adapted based on Araki would
have been able to more correctly record the voice message as
the user intended, even for users with a limited understanding
of how the button operated.
Id. at 26 (citing Ex. 1002 ¶ 116). Based on the entire trial record, we
determine that Petitioner sets forth sufficient articulated reasoning with
rational underpinning to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify the teachings of
Newman in view of Araki such that Newman’s recording application is
adaptable. See Ex. 1002 ¶¶ 115–116; KSR, 550 U.S. at 418.
Petitioner further asserts, as an additional position, that
if there is any question whether Newman and Araki disclose
and render[] obvious the “adaptive recording application,” the
further combination with Trewin to automatically configure
one or more timing parameters used in selecting an operating
mode as detailed for [the additional limitations of claim 1],
would have provided an additional way for automatically and
more precisely adapting the application’s behavior to a user’s
intent when interacting with the ‘“reply’ button []” (or
‘“respond’ button”) of Newman’s application for recording a
voice message.
Pet. 19–20; see also id. at 27 (similar argument). We address Petitioner’s
contentions below in Section II.D.1.d.(5) that modifying the combined
teachings of Newman and Araki to include “configurable timing
parameters,” as taught by Trewin, would have rendered obvious the claimed
“adaptive” recording application as well as the “configurable timing
parameters.” See id. at 27–32.
Patent Owner argues that Newman’s email application or text
messaging feature, even when modified with the teachings of Araki and/or
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Trewin, does not render obvious the adaptive recording application of the
challenged claims. See PO Resp. 13 (citing Ex. 2016 ¶ 54). Patent Owner
contends that Petitioner incorrectly characterizes Araki as teaching a button
that causes recording. See id. at 14 (quoting Pet. 19). Patent Owner asserts
that none of paragraphs 41, 46, and 69–71 of Araki, cited by Petitioner,
teaches or suggests that depressing a button causes recording, and therefore
none of these paragraphs teaches or suggests an adaptive recording
application. See id. Patent Owner argues that paragraphs 41, 46, and 69–71
of Araki disclose only speech recognition and automatic translating. See id.
at 14–15 (quoting Ex. 1005 ¶ 71; citing Ex. 1005 ¶¶ 41, 46, 69–71; Ex. 2016
¶¶ 57–58).
Patent Owner argues that other portions of Araki, not cited by
Petitioner, confirm that Araki does not disclose an adaptive recording
application or the features required to modify Newman’s teachings into an
adaptive recording application. See PO Resp. 15. More specifically, Patent
Owner argues that, in Araki, storage of sound is performed by a completely
different mechanism including a reusable buffer that is not affected by any
buttons or interface elements, and where the alleged recording is constant
and performed in a single recording mode: always on. See id. at 15–17
(reproducing Ex. 1005, Figs. 2, 4; citing Ex. 1005 ¶¶ 54, 58, 66; Ex. 2016
¶¶ 59–60). Patent Owner further argues that converting speech to translated
text does not fall within Petitioner’s own proposed construction of recording
because the speech that is captured in Araki’s buffer cannot be heard later.
See id. at 14–15 (citing Pet. 18; Ex. 2016 ¶ 57). Patent Owner asserts that
Araki’s device does not need to infer or determine whether or how the user
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desires to record because Araki is designed to constantly record. See id.
at 15.
Patent Owner asserts that Trewin does not teach or suggest an
“adaptive recording application” alone, or in combination with Newman
and/or Araki. See PO Resp. 17. Patent Owner contends that Petitioner relies
on Trewin’s disclosure of the delay before a key on a keyboard starts to
repeat. See id. at 17–18. Patent Owner contends that there is no disclosure
of the keystroke delay being implemented as part of any application, much
less any application related to recording. See id. at 18 (citing Ex. 1007,
5:11–13, 8:58–9:21). Patent Owner asserts that Trewin’s keystroke delay
feature is not an adaptive recording application and Trewin does not teach
communication modes or changing the mode of a recording application. See
id. (citing Ex. 2016 ¶ 61).
In its Reply, Petitioner asserts that Patent Owner’s arguments attack
the teachings of Araki for failing to disclose audio recording. See Pet.
Reply 2 (citing PO Resp. 14–15). Petitioner argues that the combination
relies on Newman, not Araki, for audio recording capabilities. See id. at 2–3
(citing Pet. 16–18). Petitioner points out that the combination relies on
Araki for selecting either a push-to-talk or tap-to-start communication mode
based on how long a button on a device is activated. See id. at 3 (citing
Pet. 19, 24; Ex. 1002 ¶¶ 112–116).
We do not agree with Patent Owner’s arguments because they are
misplaced. Patent Owner’s arguments address the teachings of Newman,
Araki, and Trewin individually, instead of addressing the combined
teachings of Newman in view of Araki, or the combined teachings of
Newman and Araki further in view of Trewin, as proposed by Petitioner.
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One cannot show nonobviousness by attacking references individually. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of the combination of
references.”). Contrary to Patent Owner’s arguments, the Petition does not
rely on Araki alone or Trewin alone for teaching a recording application or
an adaptive recording application. Petitioner proposes modifying Newman’s
recording application in view of Araki’s teachings such that Newman’s
recording application is adaptive. See Pet. 19–21. Petitioner also proposes
further modifying the adaptive recording application taught by the
combination of Newman and Araki in view of Trewin’s teachings to be
adaptive by enabling the timing parameter associated with the button for
activating recording to be set and changed by the application. See id.
at 24–26. Moreover, Patent Owner’s argument that Trewin does not teach
changing the mode of a recording application is not commensurate in scope
with the limitations of claim 1 because claim 1 does not recite or require
changing the mode.
Based on the entire trial record, we determine that Petitioner has
shown by a preponderance of the evidence that the combination of Newman
and Araki as well as the combination of Newman, Araki, and Trewin,
teaches or suggests “providing an adaptive recording application executable
by at least one processor configured to record said media message
on said communication device,” as recited in claim 1.
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(3) detecting activation of an interface element on said communication
device for initiating said recording of said media message
by said adaptive recording application;
Petitioner asserts that Newman further teaches “detecting activation of
an interface element on said communication device for initiating said
recording of said media message by said adaptive recording application”
based on Newman’s disclosure of a reply button shown in Figure 3b and a
respond button 408 shown in Figure 4b that are each capable of receiving
user input or capturing the application of pressure from the user, and the
application providing the recording functionality in response to detecting
activation of the button. See Pet. 21–23 (reproducing Ex. 1003, Figs. 3b, 4a;
citing Ex. 1003, 2:29–33, 2:58–67, 9:52–53, 10:32–35, 10:51–61, 11:60–66,
13:23–35, 15:58–67; Ex. 1002 ¶¶ 107–108).
Patent Owner argues that Newman does not disclose this claim
limitation because Newman does not disclose the claimed interface element.
See PO Resp. 19. According to Patent Owner, “[t]here is no teaching in
Newman that describes using the reply or respond button to perform one of
two actions, i.e., select one of two communication modes.” Id. (citing
Pet. 21–23, Ex. 2016 ¶ 62); see id. at 21–23 (similar argument addressing
Newman’s locked and unlocked modes, citing Ex. 1003, code (57), 1:44–48,
2:18–29, 7:33–35; Pet. 21–23, Ex. 2016 ¶¶ 64–66; Ex. 2017, 103:8–104:2).
We do not agree with Patent Owner’s argument because it is not
commensurate in scope with the disputed claim limitation. As pointed out
by Petitioner (see Pet. Reply 4–5), “detecting activation of an interface
element on said communication device for initiating said recording of said
media message by said adaptive recording application,” does not recite using
the interface element to perform one of two actions. Ex. 1001, 26:41–43.
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As explained below in Section II.D.1.d.(6), addressing the limitation
“selecting, in response to said detection of said activation of said interface
element, one of a plurality of communication modes . . . ,” the Petition relies
on the combined teachings of Newman and Araki for teaching selecting one
of two communication modes. See Pet. 23–27, 33–34.
Patent Owner argues that Newman contains no disclosure of detecting
an input provided by the user. See PO Resp. 23. Patent Owner contends
that Newman’s disclosures of a reply button and respond button describe
only what a user can do to a screen (i.e., “hold down” or “touch and hold”).
See id. (citing Ex. 1003, 10:32–35, 10:55–61). According to Patent Owner,
“Newman does not disclose how the user action is processed by Newman’s
device or whether there is any one or more instructions or method for
processing the user actions.” Id. at 23–24. Patent Owner asserts that there is
no disclosure describing that Newman’s email application or text messaging
feature processes user actions. See id. at 24 (citing Ex. 1003, 2:29–33,
2:58–67, 9:52–53, 13:23–35, 15:58–67, Figs. 5c, 6a; Ex. 2016 ¶ 67).
We do not agree with Patent Owner’s arguments because they
overlook evidence cited by Petitioner. Newman discloses: (1) an activating
user input enabling one or more associated functionalities to be performed
using the device upon detection of the activating user input; and (2) a user
touching and holding down the respond button 408 is an activating user
input that activates the device to record sound while the button is held. See
Ex. 1003, 2:29–33; 10:51–61; Pet. 21–23 (citing inter alia Ex. 1003,
2:29–33; 10:51–61). Patent Owner also overlooks the testimony of
Petitioner’s declarant, Mr. Schmandt, that, based on Newman’s disclosures,
a person of ordinary skill in the art would have understood that interaction
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with those buttons would be detected by the application in order to carry out
the associated functionality. See Pet. 23; Ex. 1002 ¶ 108.
Patent Owner also asserts that, in our Institution Decision, we
misapprehended the positions presented in the Petition and the teachings of
Newman, asserting “[t]he Board credited Newman’s disclosure ‘that it is
envisaged that the portable electronic device may operate by activating the
device to begin recording based on a first touch and end recording based on
a second touch (i.e. touch to start).’” PO Resp. 19–20 (quoting Dec. 50–51;
citing Ex. 1003, 10:50–11:12). Patent Owner, nonetheless, asserts: (1)
Petitioner does not rely on this embodiment; (2) Petitioner does not assert
obviousness between different embodiments or alternatives of Newman; and
(3) Mr. Schmandt confirmed that his analysis was based on interface
element 324 in Fig. 3B and interface element 408 in Fig. 4A. See id.
at 20–21 (citing Ex. 2017, 93:4–94:2, 94:6–96:21, 99:13–100:14). Patent
Owner persists, arguing that Newman’s disclosure cited by the Board
describes touching anywhere on the screen, not just a single interface
element, or squeezing the phone as alternative embodiments to the reply or
respond button. See id. at 20. Patent Owner contends that these alternative
embodiments cut against a motivation to combine and teach away from
combining Newman’s alternative embodiments because the alternative
embodiments encourage touching elsewhere on the screen rather than
touching the same element. See id. In the Reply, Petitioner confirms that
the Petition does not rely on Newman’s alternative techniques. See Pet.
Reply 5 (citing PO Resp. 20).
We do not agree with Patent Owner’s understanding of the Institution
Decision. The Institution Decision does not contemplate any additional
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positions, besides those set forth in the Petition, and does not contemplate
combining embodiments disclosed by Newman. See Dec. 50–51. The
Institution Decision explains that Patent Owner’s Preliminary Response
argument that Newman’s device only provides a single option for replying
when in a second limited input operating mode is not applicable to
Petitioner’s combination of the teachings of Newman and Araki.
Immediately following this explanation, the Decision merely pointed out
that Newman also disclosed push-to-start and envisaged using touch-to-start
for recording when in a mode of limited user input. See id. Because the
Petition and the Institution Decision do not rely on combining Newman’s
embodiments, we find inapplicable Patent Owner’s arguments that
Newman’s alternative embodiments teach away from and/or cut against any
motivation to combine Newman’s embodiments.
Based on the entire trial record, we determine that Petitioner has
shown by a preponderance of the evidence that combination of Newman and
Araki teaches or suggests “detecting activation of an interface element on
said communication device for initiating said recording of said media
message by said adaptive recording application” as recited in claim 1.
(4) determining a duration of said activation of said interface element
by said adaptive recording application;
Petitioner asserts that Newman discloses detecting an activation of an
interface element by an application, and that a voice recording is carried out
for the duration of that activation, but that Newman does not disclose
determining a duration of that activation. See Pet. 23 (citing Ex. 1003,
10:59–63). Petitioner asserts that determining a duration of the activation is
taught by and would have been obvious in view of Araki. See id.
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Petitioner asserts that Araki discloses a speech recognition program,
where, depending on the duration that a button on a device is pressed, one of
two operating modes for recording and performing speech recognition is
selected––either push-to-talk or tap-to-start (i.e., “push to activate”). See
Pet. 24 (citing Ex. 1005 ¶¶ 41, 46, 69, 71). Petitioner contends that Araki
provides a specific example of detecting whether the button has been pressed
for more or less than one second. See id. (reproducing a portion of Ex. 1005,
Fig. 5, with annotations; citing Ex. 1005 ¶¶ 41, 46, Fig. 5 (step S14)).
Petitioner contends that it would have been obvious to one of ordinary
skill in the art to modify the combined teachings of Newman and Araki to
further include (a) determining a duration of activation of a button and (b)
selectively performing push-to-talk and tap-to-start modes as a result, as
taught by Araki, in order (i) “to improve the flexibility and ease-of-use of
the reply button [] and respond button [] in Newman,” and (ii) to provide the
“benefit of a more accurate recording of the message regardless of which
mode is selected.” Pet. 24–26 (citing Ex. 1002 ¶¶ 114–117). In particular,
Petitioner contends that a skilled artisan would have appreciated that users
might be confused as to how the buttons work, for example, how the start
and ending of a recording is determined when the button is pressed. See id.
at 25. In support of its arguments, Petitioner directs our attention to Araki’s
disclosure addressing when a user does not understand the use of the speech
recognition device and how to activate the microphone button. See id.
(citing Ex. 1005 ¶ 25). Petitioner asserts that Araki teaches the system can
select a recording mode that reflects the user’s intentions based on a duration
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of activation of the user interface element. See id. at 25–26 (quoting
Ex. 1005 ¶ 89; citing Ex. 1002 ¶ 116). According to Petitioner:
[f]or example, regardless of the duration for which a user
activated the “‘reply’ button []” and “‘respond’ button [],” the
messaging program in Newman adapted based on Araki would
have been able to more correctly record the voice message as
the user intended, even for users with a limited understanding
of how the button operated.”
Id. at 26 (citing Ex. 1002 ¶ 116).
Patent Owner does not specifically challenge Petitioner’s assertions
that the combination of Newman and Araki teaches or suggests “determining
a duration of said activation of said interface element by said adaptive
recording application.” See generally PO Resp. Nonetheless, the burden
remains on Petitioner to demonstrate unpatentability. See Dynamic
Drinkware, 800 F.3d at 1378.
Based on the entire trial record, we determine that Petitioner sets forth
sufficient articulated reasoning with rational underpinning to support the
conclusion that it would have been obvious to one of ordinary skill in the art
to modify the combined teachings of Newman and Araki to further include
(a) determining a duration of activation of a button and (b) selectively
performing push-to-talk and tap-to-start modes as a result, as taught by
Araki, in order (i) “to improve the flexibility and ease-of-use of the reply
button [] and respond button [] in Newman,” and (ii) to provide the “benefit
of a more accurate recording of the message regardless of which mode is
selected.” See Ex. 1002 ¶¶ 114–117; KSR, 550 U.S. at 418. Accordingly,
we conclude that Petitioner has shown by a preponderance of the evidence
that the combination of Newman and Araki teaches or suggests “determining
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a duration of said activation of said interface element by said adaptive
recording application,” as recited in claim 1.
(5) comparing said duration of said activation of said interface element with
one or more configurable timing parameters by said adaptive
recording application; and
Petitioner asserts the combined teachings of Newman and Araki teach,
“comparing said duration of said activation of said interface element with
one or more configurable timing parameters by said adaptive recording
application,” as recited in claim 1. See Pet. 27–28. Petitioner bases its
assertion on the teachings of Newman as modified by Araki’s teaching of
comparing a duration of activation of a button to whether it is pressed for
more or less than one second. See id. at 27 (citing Ex. 1005 ¶¶ 69, 71, Fig. 5
(step S14)). Petitioner acknowledges that Araki discloses an exemplary
duration of one second, but asserts that Araki refers more generally to the
duration as a “set time interval” or a “prescribed time interval.” See id.
(citing Ex. 1005 ¶¶ 23, 24, claims 1, 4, 6, 7, 9). Petitioner asserts that it
would have been obvious that the interval could have been implemented
using other values. See id. (citing Ex. 1002 ¶ 121). Petitioner further
acknowledges that the claim limitation requires one or more configurable
timing parameters, where “configurable timing parameter” is described in
the ’059 Patent as follows: “[a]s used herein, the term ‘configurable timing
parameters’ refers to time parameters used by the adaptive recording
application for comparison with the duration of activation of an interface
element to enable the adaptive recording application to select one of the
communication modes for recording the media message.” Ex. 1001,
3:26–31; see Pet. 27–28. Petitioner asserts that the combination of Newman
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and Araki teaches a set time interval or prescribed time interval (e.g., one
second) which corresponds to a configurable timing parameter consistent
with the ’059 Patent description. See Pet. 28 (citing Ex. 1005 ¶¶ 23, 24).
As an additional position, Petitioner contends that if the word
“configurable” incorporates a further requirement that the time parameter
“can be set and changed by the application,” consistent with Petitioner’s
litigation position, Newman and Araki do not teach this limitation as more
narrowly construed. See Pet. 28. Petitioner asserts that this limitation, as
more narrowly construed, would be obvious in view of the teachings of
Trewin. See id.
Petitioner contends that Trewin teaches a technique for setting and
changing parameters associated with input devices to improve the
performance and control of the device according to the needs of a user. See
Pet. 28–29 (citing Ex. 1007, 3:43–52; Ex. 1002 ¶ 122). Petitioner asserts
that Trewin discloses the delay before a keyboard starts to repeat can be
configured, e.g., pressing a letter key on a keyboard quickly causes only one
letter to appear, but holding down the letter key for a given duration will
cause the letter to repeat. See id. at 29 (citing Ex. 1007, 5:11–13). Petitioner
asserts that Trewin’s key repeat delay (KRD) is analogous to the teachings
of Araki because, like Araki’s microphone button, a key in Trewin can have
two different behaviors based on how long the key is held down. See id.
(citing Ex. 1002 ¶ 124). Petitioner points out that Trewin generally discloses
the ability to configure and customize the repeat delay value based on the
needs of the particular user. See id. (quoting Ex. 1007, 1:41–42). According
to Petitioner, “[a]lthough Trewin’s discussion of the KRD focuses on
physical keyboards, Trewin explains that its techniques are broadly
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‘applicable to any control device that can be configured via software, and
not necessarily one composed of physical buttons.’” Id. at 29–30 (citing
Ex. 1007, 2:41–43, 13:23–28; Ex. 1002 ¶¶ 117 n.1, 124)
Petitioner contends that it would have been obvious to one of ordinary
skill in the art to modify the combined teachings of Newman and Araki in
view of Trewin’s teachings such that the set or prescribed timing parameter
(e.g., one second) was capable of being set and changed by the application in
order “to allow the application to adapt to the needs of the specific user” and
“best suit the needs and capabilities of the user, thus resulting in more
accurate recording.” Pet. 30–31 (citing Ex. 1002 ¶¶ 125–130). In particular,
Petitioner contends that
[a] skilled artisan would have appreciated that the amount of
delay required by the user to properly utilize a single
button/multiple function element . . . may vary from one user to
the next, as users often have varying visual capabilities, motor
skills, and reaction times based on their age, experience,
familiarity with the application, and many other factors.
Id. at 30 (citing Ex. 1002 ¶ 127). In support of its arguments, Petitioner
directs attention to Trewin’s disclosure that users with disabilities or novice
users may have difficulty with single-button/multiple-function user interface
elements because of inadvertently activating the “long press” repeat
functionality. See id. at 30–31 (quoting Ex. 1007, 1:36–39). Petitioner
further asserts that the ability of the user to configure timing parameters of
input devices was a well-known feature of the Microsoft Windows and
Apple Macintosh operating systems since at least the 1990s, and that,
by 2011, it was known to provide configurability of the “tap and hold delay”
parameter for touchscreen mobile devices. See id. at 31 (citing Ex. 1002
¶ 126).
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Patent Owner does not address the construction of “configurable
timing parameters and does dispute Petitioner’s assertions that the
combination of Newman and Araki as well as the combination of Newman,
Araki, and Trewin, teaches or suggests this limitation of claim 1. See
generally PO Resp. Nonetheless, the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record, we determine that Petitioner sets forth
sufficient articulated reasoning with rational underpinning to support the
conclusion that it would have been obvious to one of ordinary skill in the art
to modify the combined teachings of Newman and Araki in view of
Trewin’s teachings such that the set or prescribed timing parameter (e.g.,
one second) was capable of being set and changed by the application in
order “to allow the application to adapt to the needs of the specific user” and
“best suit the needs and capabilities of the user, thus resulting in more
accurate recording.” See Ex. 1002 ¶¶ 125–130; KSR, 550 U.S. at 418.
Accordingly, we conclude that Petitioner has shown by a
preponderance of the evidence that the combination of Newman and Araki,
as well as the combination of Newman, Araki, and Trewin teaches, or
suggests “comparing said duration of said activation of said interface
element with one or more configurable timing parameters by said adaptive
recording application,” as recited in claim 1.
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(6) selecting in response to said detection of said activation of said interface
element, one of a plurality of communication modes for recording said
media message by said adaptive recording application based on said
comparison of said duration of said activation of said interface element with
one or more configurable timing parameters.
Petitioner asserts that the combination of Newman and Araki teaches
or suggests implementing Newman’s application to select
between either a push-to-talk (PTT) or a tap-to-start (TTS) communication
mode based on comparing the duration of the activation of the “reply”
button or “respond” button to a timing parameter such as 1 second. See
Pet. 33 (citing Ex. 1005 ¶¶ 69–71, Fig. 5; incorporating by reference
Pet. 21–23). Petitioner notes that the ’059 Patent discloses: “[A]s used
herein, the term ‘communication mode’ refers to a mode for initiating and
terminating recording of a media message on a communication device. The
communication mode can be, for example, a push to talk (PTT)
communication mode or a tap to start (TTS) communication mode.”
Ex. 1001, 2:67–3:5; see Pet. 33. Petitioner also asserts that modifying the
combination of Newman and Araki in view of the teachings of Trewin
would have resulted in a configurable timing parameter that would be
compared to the duration of pressing the “reply” button or “respond” button
in order to select the communication mode. See Pet. 34 (incorporating by
reference Pet. 23–27).
Patent Owner argues that “Petitioner mischaracterizes Newman and
Araki when arguing that ‘Newman and Araki are closely analogous
references, which is further confirmed by the fact that both expressly
disclose both the push-to-talk and tap-to-start modes.’” PO Resp. 26
(quoting Pet. 25). Patent Owner contends the Petition’s statement is
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misleading and unsupported, and more specifically argues that Newman
contains no discussion of any push-to-talk feature. See id. at 27. According
to Patent Owner, “Newman discloses two operating modes (not
communication modes), i.e., locked and unlocked.” Id. at 26; see id. at 21
(similar argument). Patent Owner nevertheless acknowledges that
Petitioner’s arguments are not based on Newman’s locked and unlocked
modes. See id. at 27 (citing Ex. 2017, 103:8–104:2; Ex. 2016 ¶ 69); see also
id. at 23 (similar argument, citing Ex. 2017, 103:8–104:2; Ex. 2016 ¶ 66).
We do not agree with Patent Owner’s arguments. As pointed out by
Petitioner, Patent Owner’s arguments attack the teachings of Newman alone,
when the Petition relies on Araki for teaching the communication modes.
See Pet. Reply 7 (citing PO Resp. 27); see also Pet. 23–27, 33–34
(addressing the combined teachings of the references). We also agree with
Petitioner that Patent Owner’s argument is factually inaccurate because
Newman does disclose both tap-to-start and push-to-talk communication
modes. See Pet. Reply 7 (citing Pet. 9–10, 17–18; Ex. 1003, 2:58–61,
10:9–40, 10:50–63, 11:2–6, 11:60–66, 13:23–35, 15:58–67). For example,
Newman’s disclosures, cited by Petitioner, describe that a user provides an
activating user input by holding down a button, during which the device is
activated to record sound for the duration of the activating user input, and
that separate discrete interactions may be used to begin and/or end the
message recording process e.g., a momentary interaction such as a tap or
click. See Pet. 10 (citing inter alia Ex. 1003, 13:23–35, 15:58–67), 17–18
(citing inter alia Ex. 1003, 13:23–35, 15:58–67), 25 (citing Ex. 1003, 13:23–
35, 15:58–67).
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Patent Owner argues that the prior art does not teach or suggest a
“plurality of communication modes for recording said media message by
said adaptive recording application.” See PO Resp. 31. According to
Patent Owner, “Petitioner characterizes Newman as an ‘application to select
between either a push to talk or tap to start recording mode.’” Id. (quoting
Pet. 33). Patent Owner asserts that Newman does not disclose an option to
select between push-to-talk or tap-to-start recording mode. See id.; see also
id. at 19 (Newman does not describe using the reply or respond button to
select one of two communication modes). Patent Owner points out that
Newman states that the embodiment disclosed in Figure 4, cited by
Petitioner, does not involve switching modes. See id. at 31 (quoting
Ex. 1003, 10:50–51; citing Ex. 2017, 99:13–100:14, 103:8–104:2). Patent
Owner contends that the plurality of communication modes relating to the
interface element are not present in Newman. See id. at 32 (citing Ex. 2016
¶ 74).
Patent Owner further argues that Petitioner misleads the Board when
it states that Araki discloses a button for selecting one of two modes for
recording. See PO Resp. 27 (citing Dec. 42; Pet. 24). Patent Owner
contends that Araki fails to disclose the use of two communication modes
with respect to recording. See id. at 32. Patent Owner contends that Araki’s
microphone is not for recording, Araki does not teach a mode for recording,
and Araki’s button is not designed to record a message or to initiate
recording. See id. at 27; see also id. at 30 (similar argument, citing
Ex. 2017, 112:23–113:5), 32 (similar argument, citing Fig. 5, steps S10,
S14, S15, S16). Patent Owner asserts that Araki’s system includes a sound
recording portion 12 that constantly records speech segments in a buffer and
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Araki does not need a button for recording because the system is constantly
recording. See id. at 27 (citing Ex. 1005 ¶ 54; Ex. 2016 ¶ 70); see also id.
at 28 (similar argument, citing Ex. 2017, 112:7–113:5; Ex. 2016 ¶ 71), 30
(similar argument, citing Ex. 1005 ¶ 54), 32 (similar argument). Patent
Owner further contends that Araki also does not teach activation upon user
input such as touch event or press event. See id. at 29. Patent Owner asserts
that when an input is received at Araki’s button, the device first checks
whether sound has been recorded into the buffer and if not, stands by until
sound is recorded into the buffer. See id. at 30 (citing Ex. 1005 ¶¶ 66–68;
Fig. 5, step S10); see also id. at 32 (similar argument, citing Fig. 5,
step S10). Patent Owner contends that Araki’s button is not used for any
determination to select one of a plurality of communication modes for
recording because Araki is already constantly recording. See id. at 30–31
(citing Ex. 2016 ¶¶ 72–73).
We do not agree with Patent Owner’s arguments. Patent Owner’s
arguments are misplaced and address the teachings of Newman alone and
Araki alone instead of addressing the teachings of Newman in view of
Araki, as combined by Petitioner. One cannot show nonobviousness by
attacking references individually. See In re Merck, 800 F.2d at 1097.
Contrary to Patent Owner’s arguments, the Petition does not rely on
Newman alone for teaching an option to select between push-to-talk and tap-
to-start modes and does not rely on the teachings of Araki alone to disclose
recording, a recording application, and using a button to initiate recording or
select a communication mode for recording. Rather, the Petition proposes
modifying Newman’s recording application in view of Araki’s teachings of
selecting between push-to-talk and tap-to-start modes based on a comparison
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of the duration of the activation time to a configurable timing parameter
such that Newman’s recording application is modified to include Araki’s
selection between push-to-talk and tap-to-start modes, and, therefore, also
modified to be an adaptive recording application. See Pet. 21–27, 33–34.
Patent Owner also argues that a system or application built based on
the teachings of Newman and Araki exists only in hindsight because the
prior art consists of the separate and distinct teachings of Newman’s email
application with a reply button or text messaging feature with a respond
button and Araki’s device that constantly records and contains a button that
is not used for recording. See PO Resp. 28 (quoting Pet. 27, 28, 30; citing
Ex. 2016 ¶ 72). Similarly, Patent Owner contends that a person of ordinary
skill in the art would not have had any motivation to combine Newman and
Araki to arrive at the claimed adaptive recording application and interface
element because one with ordinary skill in the art would not have attempted
to modify Newman’s email application or text messaging feature with
Araki’s speech recognition program. See id. at 36 (citing Ex. 2016 ¶ 78).
Patent Owner contends that Newman is directed to a system having
unlocked and locked operating modes. See id. Patent Owner argues that
other than the fact that Newman’s reply button 324 and response button 408
can be touched to record a message, “Newman is devoid of any relevant
disclosure.” Id. Patent Owner contends that Araki is different because
Araki’s device is already constantly recording input sound. See id. at 36–37
(citing Ex. 2016 ¶¶ 78–79). Patent Owner contends that a person of ordinary
skill in the art would not have understood to modify Newman’s email
application button or text messaging button to record with the features of an
application designed to constantly record without the need of a button or a
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button that is not purposed for recording. See id. at 37 (citing Ex. 2016
¶ 79); see id. at 27 (similar argument citing Ex. 2016 ¶ 70). Related to the
previous arguments, Patent Owner contends that a person of ordinary skill in
the art would not have attempted to modify Newman with Araki because,
according to Patent Owner, “at a fundamental level, a person of ordinary
skill in the art would have understood that Araki’s device is not adaptive
because it is constantly recording sound.” Id. at 37 (citing Ex. 2016
¶¶ 79–80).
In Reply, Petitioner points out that Petitioner’s declarant,
Mr. Schmandt, articulated a detailed rationale and motivation for the
combination including the express motivation in Araki explaining that a user
might mistakenly treat a recording button as implementing push-to-talk on a
device that implements tap-to-start. See Pet. Reply 7 (citing Pet. 25–26;
Ex. 1002 ¶¶ 115–116). In the Sur-reply, Patent Owner contends the Reply
confirms that there is no motivation to combine by faulting Petitioner for not
disputing or addressing Patent Owner’s arguments and Dr. Cromarty’s
testimony. See PO Sur-reply 5–6 (citing Ex. 2016 ¶¶ 79–80).
We do not agree with Patent Owner’s arguments because they are
misplaced. The Petition does not propose modifying Newman’s email
application button or text messaging button in view of Araki’s teachings of
constantly recording speech segments into a buffer without the need for a
button, or in view of Araki’s teachings of a button that is not used for
recording. See generally Pet. As explained previously, the Petition
proposes modifying Newman’s recording application including an interface
button in view of Araki’s teachings of selecting between push-to-talk and
tap-to-start modes for recording and speech recognition based on a
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comparison of the duration of the activation time to a configurable timing
parameter such that Newman’s recording application and interface element
is modified to include Araki’s selection between push-to-talk and tap-to-start
modes, and, therefore, also modified to be an adaptive recording application
due to the ability to select between push-to-talk and tap-to-start modes. See
id. at 24–28, 33–34.
Patent Owner further argues that Araki’s device is incompatible with
Newman’s email application because Araki’s single storage mode, which
includes only a temporary buffer for storing speech segments, is
incompatible with recording media such as voice or video. See PO
Resp. 32–33 (citing Ex. 2016 ¶¶ 75–76); see also id. at 37–38 (similar
argument, citing Ex. 2016 ¶¶ 79–80). Patent Owner asserts that Araki’s
device is programmed to use the translation service to exclude or cut out the
portions of the recording corresponding to non-speech and background
noise. See id. at 33 (citing Ex. 2016 ¶¶ 75–76); see also id. at 37 (similar
argument, citing Ex. 2016 ¶¶ 79–80). According to Patent Owner, because
multimedia messages include audio recordings and video recordings, which
are known to include portions lacking speech and having background noise,
Araki is incompatible with Newman and the combination would render the
application inoperative or unsatisfactory for its intended purpose of
recording multimedia messages. See id. at 33 (citing Ex. 2016 ¶¶ 75–76);
see also id. at 37–38 (similar argument, citing Ex. 2016 ¶¶ 79–80). Patent
Owner further argues that for these reasons there is no motivation to modify
Newman’s email application or text message feature with Araki’s translation
device. See id. at 33; see also id. at 38 (similar argument, citing Ex. 2016
¶¶ 79–80).
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In Reply, Petitioner asserts that Araki’s storage is irrelevant because
the Petition points to Newman for the claimed recording functionality. See
Pet. Reply 8. Petitioner further asserts that Patent Owner’s argument
improperly relies on physically combining the devices of Newman and
Araki, when the articulated combination points to Araki simply for teachings
regarding determining an operating mode based on a duration of a button’s
activation. See id. (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed.
Cir. 2012)). Petitioner further points out that the ’059 Patent expressly
contemplates removing non-speech and background noise because a user
may intend to record the auto signal without noise. See id. (quoting
Ex. 1001, 9:13–25). In the Sur-reply, Patent Owner contends that the Reply
confirms that there is no motivation to combine by faulting Petitioner for not
addressing Patent Owner’s arguments and Dr. Cromarty’s testimony that the
combination would render Newman’s recording feature unsatisfactory and
inoperable for its intended use. See PO Sur-reply 5–6 (citing Ex. 2016
¶¶ 79–80).
We do not agree with Patent Owner’s arguments because they are
premised on a combination of the teachings of Newman and Araki not
proposed by Petitioner. The Petition does not rely on Araki for teaching
recording, and does not rely on Araki’s teachings of excluding or cutting out
non-speech or background noise. See generally Pet. As explained
previously, the Petition proposes modifying Newman’s recording
application in view of Araki’s teachings of selecting between push-to-talk
and tap-to-start modes based on a comparison of the duration of the
activation time to a configurable timing parameter such that Newman’s
recording application is modified to include Araki’s selection between push-
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to-talk and tap-to-start modes, and, therefore, also modified to be an
adaptive recording application. See Pet. 21–27, 33–34.
Based on the entire trial record, we that determine that Petitioner has
shown by a preponderance of the evidence that the combination of Newman
and Araki, as well as the combination of Newman, Araki, and Trewin,
teaches or suggests “selecting in response to said detection of said
activation of said interface element, one of a plurality of communication
modes for recording said media message by said adaptive recording
application based on said comparison of said duration of said activation of
said interface element with one or more configurable timing parameters,” as
recited in claim 1.
(7) Objective Indicia of Nonobviousness
We next consider Patent Owner’s proffered evidence of objective
indicia of nonobviousness before reaching our conclusion on obviousness as
to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d
1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that nonobviousness of
the subject matter of claim 1 is supported by objective indicia including
commercial success, industry adoption, copying, long-felt need, and industry
praise. See PO Resp. 41–47 (reproducing Ex. 2004, 8, 73; citing Ex. 2004,
71, 73–74, 76, 89, 99; Ex. 2016 ¶¶ 82–86; Ex. 2018), 55–58 (reproducing
Ex. 1001, Fig. 2; Ex. 1016, 2–3 (statement of reasons for allowance);
Ex. 2001, 48 (statement of reasons for allowance); Ex. 2002, Fig. 2; citing
Ex. 2001; Ex. 2002, 1:14–18; Ex. 2005; Ex. 2011; Ex. 2022; Ex. 2016
¶¶ 94–97). In support of its arguments, Patent Owner presents evidence
focused on the commercial success, industry adoption, and copying of the
major update to the Snapchat application first released in December 2012
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(see id. at 41–47, 58) and evidence of copying, providing a solution to a
long-felt need, and industry praise based on U.S. Patent Application
No. 13/570,188 (Ex. 2001), which issued as U.S. Patent No. 8,428,453 B1
(Ex. 2002, “Spiegel Patent”) (see PO Resp. 55–58).
Factual inquiries for an obviousness determination include evaluation
and crediting of evidence of objective indicia of nonobviousness (sometimes
also called “secondary considerations”). Graham, 383 U.S. at 17 (1966).
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple,
Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Ultimately, “[t]he patentee bears
the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l
Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).
The Board uses a two-step analysis in evaluating nexus between the
claimed invention and objective evidence. Lectrosonics, Inc. v. Zaxcom,
Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential).
First, we consider whether a patent owner has demonstrated that the
“products are coextensive (or nearly coextensive) with the challenged
claims,” resulting in a rebuttable presumption of nexus. Id. “Whether a
product is coextensive with the patented invention, and therefore whether a
presumption of nexus is appropriate in a given case, is a question of fact.”
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019).
“[T]he purpose of the coextensiveness requirement is to ensure that nexus is
only presumed when the product tied to the evidence of secondary
considerations ‘is the invention disclosed and claimed.’” Id. at 1374
(quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
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1392 (Fed. Cir. 1988)). “[T]he degree of correspondence between a product
and the patent claim falls along a spectrum. At one end of the spectrum lies
perfect or near perfect correspondence. At the other end lies no or very little
correspondence.” Id. “A patent claim is not coextensive with a product that
includes a ‘critical’ unclaimed feature that is claimed by a different patent
and that materially impacts the product’s functionality.” Id. at 1375.
The inquiry does not end if finding a presumption of nexus is
inappropriate. See Lectrosonics, Paper 33 at 33 (quoting Fox Factory, 944
F.3d at 1375). A patent owner “is still afforded an opportunity to prove
nexus by showing that the evidence of secondary considerations is the
‘direct result of the unique characteristics of the claimed invention.’” Id.
(quoting Fox Factory, 944 F.3d at 1373–74). Patent Owner may do so by
demonstrating that there is a “nexus to some aspect of the claim not already
in the prior art.” In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011); see
WBIP, 829 F.3d at 1331).
(a) Nexus
Before we address the weight of Patent Owner’s evidence of objective
indicia of nonobviousness, we must first determine if Patent Owner has
shown it is entitled to a presumption of nexus or has demonstrated an actual
nexus. Patent Owner contends there is a presumption of nexus because the
evidence of objective indicia of nonobviousness “is tied to [Petitioner’s]
Snapchat application and its single button camera interface, which embodies
the claimed features and is coextensive with them.” PO Resp. 54–55 (citing
Ex. 2016 ¶ 93). More specifically, Patent Owner explains, with supporting
evidence, how the Snapchat application is coextensive with each of the
limitations of claim 1. Referencing the limitations of claim 1, Patent Owner
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points out that the Snapchat application: (1) is a camera application that
helps people communicate through short video and images; (2) is
downloaded, installed, and executed on a mobile communication running
Android OS or Apple iOS; (3) records media messages such as photo snaps,
video snaps, long snaps, and multi snaps on mobile communication devices;
(4) includes a touch-selectable camera button; (5) detects a user’s touch on
the camera button which activates the camera button to initiate recording of
a media message; (6) determines whether the activation of the camera button
corresponds to a “tap” or a “press and hold”; (7) includes one or more
parameters or settings which are configurable with values related to counting
or timing; (8) compares the difference between one or more parameter or
setting values and one or more values corresponding to the length or
duration of the activation of the camera button; and (9) selects a
communication mode for recording the media message based on the
comparison or difference, such as, selecting a video snap or photo snap
based on whether the Snapchat application determines a “tap” or a “press
and hold” or selecting one of a “multi-snap” mode and a “long snap” mode
based on whether the Snapchat application determines “a press and hold for
more than 10 seconds” or a “tap or hold the camera button repeatedly.” See
PO Resp. 47–54 (reproducing Ex. 2004, 104, Fig. 2; Exs. 2020–2021;
quoting Ex. 2004, 24, 99, 104; Ex. 2017, 83:23–84:17; Exs. 2019–2021;
citing Ex. 2016 ¶¶ 87–92; Ex. 2017, 58:19–59:10, 93:3–14; Ex. 2018).
Petitioner contends that the Snapchat application camera button does
not read on the challenged claims. See Pet. Reply 18. Petitioner points out
that a key limitation of the challenged claims is the ability to select “one of a
plurality of communication modes,” where “communication mode” is
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“defined as ‘a mode for initiating and terminating recording of a media
message on a communication device.’” Id. at 19 (citing Ex. 1001, 2:67–3:3).
Petitioner asserts that a key assumption of Patent Owner’s analysis is that
taking a photo in Snapchat and recording a video in Snapchat supply two
“communication modes.” See id. Petitioner asserts that taking a photo
cannot supply one of the plurality of communication modes because unlike
video or audio, the concept of “initiating and terminating” a recording does
not apply to a still photo. See id. According to Petitioner, “[t]aking a still
photo image involves instantaneous capture of a visual image without
initiation and termination of any ‘recording’ process.” Id. (citing Ex. 1024
¶ 47). Petitioner asserts that Patent Owner does not contend that the
Snapchat application supports a plurality of “communication modes” with
respect to recording video. See id. Petitioner further asserts that Patent
Owner’s expert conceded that he never used Snapchat, and did not perform
an analysis of whether the Snapchat application reads on the challenged
claims. See id. (citing Ex. 1025, 40:13–25, 41:1–12). Petitioner asserts that
Patent Owner is not entitled to a presumption of nexus because Patent
Owner has not shown that the Snapchat application embodies the claimed
features and the Snapchat application is not coextensive with the challenged
claims. See id. at 20 (quoting SightSound Techs LLC v. Apple Inc., 809 F.3d
1307, 1319 (Fed. Cir. 2015)).
Patent Owner disagrees with Petitioner’s argument, asserting that
Petitioner completely ignores Patent Owner’s and Dr. Cromarty’s showing
that Snapchat’s video snap mode and multi snap mode also meets the claim
limitations. See PO Sur-reply 20 (quoting PO Resp. 51–52; citing PO
Resp. 49–52; Ex. 2031 ¶ 32). Patent Owner contends that Petitioner and Mr.
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Schmandt ignore this mapping of the claim limitations to the Snapchat
Application features. Patent Owner points out that Mr. Schmandt stated
multiple times during his deposition that he did not test the multiple snap
mode and had no knowledge of the multiple snap mode. See id. at 20–21
(citing Ex. 2023, 9:8–10:13, 10:24–11:6). Patent Owner asserts that Dr.
Cromarty’s testimony that a video snap mode and a multiple snap mode
constitute the plurality of communication modes remains unrebutted. See id.
at 21 (citing Ex. 2016 ¶¶ 89–92).
We agree with Petitioner that the aspect of Snapchat application that
includes the feature of using a camera button to select one of a taking a
photo or recording a video is not entitled to a presumption of a nexus.
Specifically, we agree with Petitioner’s persuasive arguments that taking a
photo is not a “communication mode” as defined as “a mode for initiating
and terminating a recording.” To the extent that Patent Owner now argues
that the Snapchat application includes a feature of using a camera button to
select one of a video snap mode and a multi snap mode based on a
comparison between one or more parameter values and one or more values
corresponding to the duration of the activation of the camera button (see PO
Sur-reply 20–21), this argument is belated and unsupported by the evidence
of record. Instead, Patent Owner argued, and Dr. Cromarty testified with the
following two examples:
[(1)] the Snapchat application is programmed to select a “video
snap” mode or “photo snap” mode based on whether the
Snapchat application determines a “tap” or “press and hold”
based on comparing or measuring the difference between the
duration of the activation with the parameter[; and
(2)] the Snapchat application is programmed to select one of a
“multi snap” mode or “long snap” video or photo mode based
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on whether the Snapchat application determines a “press and
hold” for more than 10 seconds or “tap or hold the camera
button repeatedly” based on comparing or measuring the
difference between the duration of the activation with the
parameter.
PO Resp. 51–52; Ex. 2016 ¶ 92. In other words, Patent Owner’s argument
in its Response and Dr. Cromarty’s testimony does not assert that the
Snapchat application is programmed to select between a video snap mode
and a multi snap mode, as argued in the Sur-reply. See PO Resp. 51–52;
Ex. 2016 ¶ 92; see also Ex. 1036, 25:8–27:1 (Dr. Cromarty’s Sur-reply
deposition testimony regarding the multi snap feature). Patent Owner’s
remaining evidence cited to support its belated argument also does not
support its contentions. See Ex. 2016 ¶¶ 89–92; Ex. 2031 ¶¶ 23, 31–32. At
best, Dr. Cromarty’s testimony at paragraphs 90–92 parenthetically quotes
repeatedly, without sufficient explanation, the following two sentences from
“Snapchat Support: Create a Snap” (Exs. 2020, 2021): “Press and hold the
button to record a video Snap!” from the section entitled “Creating Photo
and Video Snaps” and “Keep holding the [camera] button even after the time
runs out – it’ll automatically start recording another Snap!” from the section
entitled “Creating Multi Snaps.” Ex. 2016 ¶¶ 90–92; Exs. 2020, 2021.
Accordingly, based on Patent Owner’s showing, we determine the Snapchat
application is not coextensive with challenged claim 1, and, therefore, not
entitled to a presumption of nexus. For these same reasons, Patent Owner’s
assertion of actual nexus also fails because it is based on a conclusion that
the evidence presented is reasonably commensurate with the scope of the
claims. See PO Resp. 54 (citing Ex. 2016 ¶ 93).
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(b) Summary of Analysis of Objective Indicia of Nonobviousness
In sum, we determine that Patent Owner has not shown entitlement to
a presumption of nexus and has not shown an actual nexus between the
objective indicia of nonobviousness and the claimed invention. Therefore,
Patent Owner’s evidence of objective indicia of nonobviousness is entitled
to minimal weight.
(8) Conclusion Regarding Analysis of Claim 1
After considering the parties’ arguments, the entirety of the record,
and weighing the evidence of obviousness and nonobviousness of the
subject matter of claim 1, we determine that Petitioner’s showing of
obviousness is strong and outweighs the minimally weighted evidence of
objective indicia of nonobviousness. Accordingly, based on the entire trial
record, Petitioner has established by a preponderance of the evidence that
the subject matter of claim 1 would have been obvious over the combined
teachings of Newman and Araki, as well as over the combined teachings of
Newman, Araki, and Trewin.
e. Analysis of Independent Claim 18
Petitioner asserts that most of the limitations of independent claim 18
are substantively identical to the limitations of claim 1. See Pet. 37 (citing
Ex. 1002 ¶¶ 150–155). Petitioner notes that, different from claim 1,
claim 18 “recite[s] selecting a communication mode is ‘based on one or a
combination of” steps 18[e] and 18[f]”––“a comparison of said duration of
said activation of said interface element with one or more configurable
timing parameters” and “a determination of one of a presence and an
absence of a media signal during and/or after said activation of said interface
element.” Id. Petitioner asserts that because claim 18 only requires that the
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selection of a communication mode is based on one of the recited options,
and does not require selecting a communication mode based on the presence
or absence of a media signal, Newman, Araki, and Trewin disclose the
limitations of claim 18 for the same reasons as those presented for claim 1.
See id. at 37–38.
Patent Owner does not address substantively the limitations of
claim 18 and Petitioner’s contentions regarding claim 18. See generally PO
Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record and for the same reasons as those
explained above addressing claim 1, Petitioner has established by a
preponderance of the evidence that the subject matter of claim 18 would
have been obvious over the combined teachings of Newman and Araki, as
well as over the combined teachings of Newman, Araki, and Trewin.
f. Analysis of Independent Claim 30
Claim 30 recites similar limitations as those recited in independent
claims 1 and 18, in the form of a system that includes a processor, a non-
transitory computer readable storage medium, and several modules.
Compare Ex. 1001, 29:59–30:21 (claim 30), with id. at 26:35–55 (claim 1),
and id. at 28:23–45 (claim 18). We have reviewed Petitioner’s contentions
and supporting evidence addressing how Newman, Araki, and Trewin, as
combined by Petitioner, teach or suggest the limitations of independent
claim 30. See Pet. 38–43.
Patent Owner does not address substantively the limitations of
independent claim 30 and Petitioner’s contentions regarding claim 30. See
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generally PO Resp. Nonetheless, the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record and for the same reasons as those
explained above addressing claims 1 and 18, Petitioner has established by a
preponderance of the evidence that the subject matter of claim 30 would
have been obvious over the combined teachings of Newman and Araki, as
well as over the combined teachings of Newman, Araki, and Trewin.
g. Analysis of Independent Claim 46
Claim 46 recites similar limitations as those recited in independent
claim 30, but utilizes the term “computer program code[]” in place of
“module” recited in claim 30. See Pet. 45; compare Ex. 1001, 32:33–56
(claim 46), with id. at 29:59–30:21 (claim 30). We have reviewed
Petitioner’s contentions and supporting evidence addressing how Newman,
Araki, and Trewin, as combined by Petitioner, teach or suggest the
limitations of independent claim 46, including the recited “computer
program code.” See Pet. 44–45.
Patent Owner does not address substantively the limitations of
claim 46 and Petitioner’s contentions regarding claim 46. See generally PO
Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record and for the same reasons as those
explained above addressing claims 1, 18, and 30, Petitioner has established
by a preponderance of the evidence that the subject matter of claim 46 would
have been obvious over the combined teachings of Newman and Araki, as
well as over the combined teachings of Newman, Araki, and Trewin.
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h. Analysis of Dependent Claims 2, 4–6, 21, 22, 32, 33, and 47
Claims 2 and 4–6 depend ultimately from claim 1, claims 21 and 22
depend from independent claim 18, claims 32 and 33 depend from
independent claim 30, and claim 47 depends from independent claim 46.
Ex. 1001, 26:56–59, 26:64–27:16, 28:55–29:3, 30:25–43, 32:57–64. We
have reviewed Petitioner’s contentions and supporting evidence addressing
how Newman, Araki, and Trewin teach or suggest the additional limitations
recited in dependent claims 2, 4–6, 21, 22, 32, 33, and 47. See Pet. 34–38,
43–44, 46.
Patent Owner does not address substantively the limitations of
dependent claims 2, 4–6, 21, 22, 32, 33, and 47 and Petitioner’s contentions
addressing these dependent claims. See generally PO Resp. Nonetheless,
the burden remains on Petitioner to demonstrate unpatentability. See
Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record and including the reasons explained
above addressing independent claims 1, 18, 30, and 46, Petitioner has
established by a preponderance of the evidence that the subject matter of
claims 2, 4–6, 21, 22, 32, 33, and 47 would have been obvious over the
combined teachings of Newman and Araki, as well as over the combined
teachings of Newman, Araki, and Trewin.
i. Summary
For all of the foregoing reasons, based on the entire trial record,
Petitioner has established by a preponderance of the evidence that the
subject matter of claims 1, 2, 4–6, 18, 21, 22, 30, 32, 33, 46, and 47 is
unpatentable under 35 U.S.C. § 103 over Newman, Araki, and Trewin.
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2. Patentability Challenge to Claims 7–13, 15–19, 23–25, 30, 34–37, 46,
and 48 over Newman, Araki, Trewin, and Ronkainen
a. Overview of Ronkainen (Ex. 1006)
Ronkainen discloses a device and method of using a single button
instead of multiple buttons to accomplish more than one functionality, where
a long press of a button is used to perform a different function from a short
press of the button. See Ex. 1006, 1:12–15, 2:26–27, 2:36–39. The
invention includes describing for the user one of a plurality of possible
alternative actions that can be caused by a button that is currently being
operated. See id. at 2:26–30, 2:39–40. Users are often unaware of their
options, especially when a function is rarely used. See id. at 1:48–49.
The device includes a button and a sensor for sensing when the button
is pressed. See Ex. 1006, 4:59–61, Fig. 2. The sensor reports both the
pressing of the button and the release of the button to a timer, which passes
the information to a processing unit. See id. at 4:61–64, Fig. 2. The
processing unit also controls a user display and the means for making the
functions occur depending on when the button is released. See id. at 4:64–
5:3, Fig. 2.
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Figure 1 of Ronkainen is reproduced below.

Figure 1 depicts a flowchart of a method for providing information regarding
operation of a button on a device. See Ex. 1006, 4:3–4, 4:12–14. When a
user presses the button, the device senses the button is pressed in step 105.
See id. at 4:16–17. In step 110, the device provides information to the user
during operation of the button that indicates a first action that the device can
perform if the button were to be immediately released. See id. at 4:17–21.
If the user immediately releases the button in step 120, the first action is
performed in step 115. See id. If the button is not immediately released by
the user in step 120, in step 125 the display shows to the user a second action
that will be later available by releasing the button. See id. at 4:21–24. If the
button is released in step 130 before the second action becomes available,
the first action is performed in step 115. See id. at 4:24–25. If the button is
not released in step 130, an indication is provided in step 135 notifying the
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user that the second action is now available. See id. at 4:25–27. If the user
releases the button in step 140 after the second action becomes available, the
second action is performed in step 145. See id. at 4:27–29. The user may
decide at step 140 not to release the button and instead wait for another
action or actions become available. See id. at 4:29–31. The user may hasten
the availability of another action in step 146, for example, by exerting extra
pressure on the button. See id. at 4:32–33. The other action can optionally
be a no-action function in step 150, or optionally be the first action 110. See
id. at 4:34–36. Instead of waiting for a no-action function in step 150, it is
also possible for the user to release the button, while avoiding any actions,
by making a sound if the device is capable of audio recognition. See id.
at 4:39–42. The user has the option to skip to the next functionality without
having to wait for a time-out by pressing the button with extra pressure or
saying a word, such as “skip,” if the device has audio recognition capability.
See id. at 3:26–3:32.
b. Analysis of Independent Claim 12
(1) A computer implemented method for determining a communication mode
for recording a media message on a communication device, comprising:
Petitioner contends that the recited method is taught by and would
have been obvious over Newman, Araki, Trewin, and Ronkainen, as
explained below addressing the limitations recited in the body of claim 12.
See Pet. 59. Patent Owner does not dispute Petitioner’s assertions
addressing the preamble. See generally PO Resp. Nonetheless, the burden
remains on Petitioner to demonstrate unpatentability. See Dynamic
Drinkware, 800 F.3d at 1378.
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Based on the entire trial record and for the reasons highlighted below
addressing the limitations set forth in the body of claim 12, we determine
that Petitioner has shown by a preponderance of the evidence that the
combination of Newman, Araki, Trewin, and Ronkainen teaches or suggests
“[a] computer implemented method for determining a communication mode
for recording a media message on a communication device,” as recited in
claim 12.
(2) providing an adaptive recording application executable by
at least one processor configured to record said media message
on said communication device,
(3) detecting activation of an interface element on said communication
device for initiating said recording of said media message by
said adaptive recording application;
Petitioner asserts that Newman and Araki, alone or further in view of
Trewin, teach or suggest these limitations for the same reasons as those
addressed by Petitioner with respect to the identical limitations of claim 1.
See Pet. 60 (citing Ex. 1002 ¶¶ 235–236). Patent Owner does not dispute
Petitioner’s assertions addressing these limitations. See generally PO Resp.
Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record and for the same reasons as those
explained above addressing the identical limitations of claim 1, we
determine that Petitioner has shown by a preponderance of the evidence that
the combination of Newman and Araki, as well as the combination of
Newman, Araki, and Trewin, teaches or suggests “providing an adaptive
recording application executable by at least one processor configured to
record said media message on said communication device” and “detecting
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activation of an interface element on said communication device for
initiating said recording of said media message by said adaptive recording
application,” as recited in claim 12.
(4) determining one of a presence and an absence of a media signal
during and/or after said activation of said interface element; and
(5) selecting, in response to said detection of said activation of
said interface element, one of a plurality of communication modes for
recording said media message by said adaptive recording application based
on said determination of said one of said presence and said absence of said
media signal.
Petitioner acknowledges implicitly that the combination of Newman,
Araki, and Trewin does not teach determining the presence or absence of a
media signal during and/or after user interface activation and, in response to
detecting user interface activation, selecting a communication mode based
on the determination of the presence or absence of the media signal. See
Pet. 60–61. Petitioner incorporates by reference its analysis addressing
claims 1, 7, and 10. See id. (citing Ex. 1002 ¶¶ 238–241). Specifically,
Petitioner asserts that Ronkainen teaches a skipping effect that allows a user
to skip to the long press functionality without having to wait for the time out
interval for the current function using audio recognition capability to
monitor for audio input. See id. at 53–54 (citing Ex. 1006, 3:27–33, 6:29–34
(claims 6 and 7)); see also id. at 57–58 (“Ronkainen discloses a ‘skipping
effect’ that uses audio recognition (i.e., ‘a presence…of a media signal’) to
skip-to a second function before a time-out associated with a first function
elapses.”) (alteration in original). Petitioner contends that the use of
Ronkainen’s skipping effect to select a communication mode, as taught by
the combination of Newman, Araki, and Ronkainen, would entail
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determining a presence and absence of a media signal while Newman’s
button was pressed. See id. at 60 (citing Ex. 1006, 3:32–34; Ex. 1002
¶ 238). Petitioner further contends that in the combination taught by
Newman, Araki, and Ronkainen, Ronkainen’s “skipping effect” would be
used in response to detecting a button press and would entail selecting a
communication mode for recording a media message by the adaptive
recording application based on determining a presence and absence of a
media signal. See id. at 61 (citing Ex. 1002 ¶ 241).
Petitioner contends that it would have been obvious to one of ordinary
skill in the art to modify the combined teachings of Newman and Araki or
the combined teachings of Newman, Araki, and Trewin to include
determining the presence or absence of a media signal and selecting a
communication mode based on the presence or absence of a media signal, as
taught by Ronkainen, in order to “allow[] brief messages to be retained, by
detecting the input of voice as an immediate indication to skip to the push-
to-talk (PTT) mode.” Pet. 54 (citing Ex. 1002 ¶ 212). Petitioner points out
that in the tap-to-start (TTS) mode of Araki, in which the user presses and
holds the microphone only for a short duration, the message recording does
not begin until after the button is released. See id. at 53 (citing Ex. 1005
¶ 71). Petitioner asserts that this creates a potential problem for recording
brief voice messages, where the application interprets the user’s action as a
short press and activates the tap-to-start mode, where the recording begins
only after the button is released, thereby disregarding the brief message
provided by the user. See id. (citing Ex. 1002 ¶ 212). According to
Petitioner:
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a skilled artisan would have recognized that Ronkainen’s
technique would have improved Araki’s technique of selecting
tap-to-start or push-to-talk by helping to resolve the usability
issues that Araki expressly recognized, and would further
Araki’s goal of “determin[ing] more appropriately the starting
position and ending position of speech recognition, even when
the timing with which the user presses the microphone button is
inaccurate.”
Id. at 55 (quoting Ex. 1005 ¶ 89; citing Ex. 1002 ¶ 213) (alteration in
original).
Patent Owner argues that the prior art does not teach or suggest
determining the presence or absence of a media signal. See PO Resp. 33–34.
More specifically, Patent Owner argues that Ronkainen does not disclose
any type of recording application and Ronkainen is not designed for
recording sound. See id. at 34.
We do not agree with Patent Owner’s arguments. Patent Owner’s
arguments are misplaced and address the teachings of Ronkainen alone
instead of addressing the teachings of Newman, Araki, Trewin, and
Ronkainen, as combined by Petitioner. One cannot show nonobviousness by
attacking references individually. See In re Merck, 800 F.2d at 1097.
Contrary to Patent Owner’s arguments, the Petition does not rely on
Ronkainen alone for teaching a recording application. Rather, the Petition
relies on the combined teachings of Newman, Araki, and Trewin, as
modified by Ronkainen to detect audio input for skipping ahead to the long-
press button functionality, instead of waiting for a time-out. See Pet. 53–54,
57–58, 60–61.
Patent Owner further asserts that Ronkainen discloses only one phrase
relating to a purported media signal: “or by saying a word like ‘skip.’” See
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PO Resp. 34 (citing Ex. 1006, 3:30–32). According to Patent Owner,
“[w]ithout more, Ronkainen’s recitation of this alternative embodiment of
using the word skip is not an enabled disclosure because it does not show a
person of ordinary skill in the art how to make it.” Id. (citing Ex. 2016
¶ 77). Patent Owner asserts that the alternative embodiment cannot be
produced without undue experimentation. See id. (citing Ex. 2016 ¶ 77).
Patent Owner contends that “at the time of the invention, a person of
ordinary skill in the art would not have known how to modify Newman’s
recording application in order to avoid recording the spoken “skip” of
Ronkainen.” Id. (citing Ex. 2016 ¶ 77).
In Reply, Petitioner asserts that Federal Circuit law is clear that the
disclosures of Ronkainen, which is an issued patent, are presumed enabling.
See Pet. Reply 9 (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1354–55 (Fed. Cir. 2003)); see also In re Antor Media Corp.,
689 F.3d 1282, 1287–89 (discussing presumption of enablement)); Apple
Inc. v. Corephotonics, Ltd., 2021 WL2577597 at *4 (Fed. Cir. June 23,
2021) (unpublished) (the presumption of enablement applies to AIA
proceedings). Petitioner contends that Patent Owner has not overcome this
presumption. See id. Petitioner further asserts that there is no evidence that
a skilled artisan would have experienced any difficulty in implementing the
skipping feature of Ronkainen. See Pet. Reply 10 (citing Ex. 1024
¶¶ 22–23). Petitioner contends that the ’059 Patent itself refutes Patent
Owner’s arguments by taking voice activity entirely for granted by
disclosing no specific details about implementing this feature beyond
referencing “well known” techniques for performing voice activity
detection. See id. (citing Ex. 1001, 13:40–44; Ex. 1024 ¶ 22). Petitioner
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contends that Dr. Cromarty acknowledged that off-the-shelf tools existed to
enable developers to incorporate speech recognition techniques. See id.
(citing Ex. 1025, 38:5–12, 39:2–9).
We agree with Petitioner and are not swayed by Patent Owner’s
arguments that Ronkainen does not provide an enabling disclosure. Patent
Owner’s Response and Dr. Cromarty’s testimony overlooks that the Petition
cites, and relies on, Ronkainen’s disclosure at column 3, lines 27–33 (see
Pet. 53–54), describing that the “skipping effect can be accomplished by
pressing a button with extra pressure for an instant. Or, the skipping effect
can be accomplished by simultaneously pressing another button, or by
saying a word like ‘skip’ (if the device has audio recognition capability).”
Ex. 1006, 3:27–33 (emphasis added); see PO Resp. 33–34; Ex. 2016 ¶ 77.
Patent Owner does not produce sufficient evidence or argument to support
its assertion that Ronkainen “is not an enabled disclosure,” and “does not
show a person of ordinary skill in the art how to make it.” PO Resp. 33–34;
Ex. 2016 ¶ 77. Patent Owner does not dispute Petitioner’s definition of a
person or ordinary skill in that art as someone who possessed at least a
bachelor’s degree in electrical engineering or computer science, and two
years of work experience in multimedia data communications and user
interfaces. See generally PO Resp.; see Ex. 2016 ¶ 34. Patent Owner,
however, does not explain why such a person of ordinary skill in the art
would be unable to utilize audio recognition capability disclosed in
Ronkainen to detect the spoken word “skip” to accomplish the skipping
effect. See Ex. 1006, 3:27–33. Likewise, Patent Owner does not explain
sufficiently why “it cannot be produced without undue experimentation.”
PO Resp. 34; Ex. 2016 ¶ 77. Patent Owner, for example, does not provide
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any evidence or argument addressing any unpredictability of the art, or the
quantity of experimentation necessary. See Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 684 (Fed. Cir. 2015) (quoting In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). In sum, we conclude that
Ronkainen is presumed an enabling disclosure, and, therefore, remains
available as a prior art reference for establishing obviousness of the claimed
subject matter.7
Patent Owner also contends that, based on its assertions that
Ronkainen is not an enabling reference, “a person of ordinary skill in the art
would not have been motivated to combine Newman’s application with
Ronkainen.” PO Resp. 34 (citing Ex. 2016 ¶ 77). Patent Owner further
asserts that the combination is based on impermissible hindsight. See id.
(citing Ex. 2016 ¶ 77). Patent Owner’s unavailing arguments that
Ronkainen is not an enabling disclosure also are inadequate to overcome
Petitioner’s showing regarding the motivation to combine Ronkainen’s
teachings with other prior art of record or demonstrate that Petitioner’s
combination is based on hindsight.
Based on the entire trial record, we determine that Petitioner sets forth
sufficient articulated reasoning with rational underpinning to support the
conclusion that it would have been obvious to one of ordinary skill in the art

7 Petitioner also presents a back-up argument that Ronkainen in combination
with Newman and Araki’s disclosures provides an enabling disclosure. See
Pet. Reply 9 (quoting Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d
1374, 1380 (Fed. Cir. Apr. 16, 2021). Patent Owner responds to this Reply
argument. See PO Sur-reply 1–4. We need not address these Reply and
Sur-reply arguments because Ronkainen is presumed to be enabled and the
presumption has not been sufficiently rebutted.
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to modify the combined teachings of Newman and Araki or the combined
teachings of Newman, Araki, and Trewin. See Ex. 1002 ¶ 212; KSR, 550
U.S. at 418. Accordingly, we conclude that Petitioner has shown by a
preponderance of the evidence that the combination of Newman, Araki, and
Ronkainen, as well as the combination of Newman, Araki, Trewin, and
Ronkainen, teaches or suggests “determining one of a presence and an
absence of a media signal during and/or after said activation of said interface
element” and “ selecting, in response to said detection of said activation of
said interface element, one of a plurality of communication modes for
recording said media message by said adaptive recording application based
on said determination of said one of said presence and said absence of said
media signal,” as recited in claim 12.
(6) Summary of Analysis of Claim 12
Patent Owner does not assert that its evidence of objective indicia of
nonobviousness applies to the subject matter of independent claim 12. See
PO Resp. 41–58 (Patent Owner’s arguments do not address the limitations of
independent claim 12, which does not include the limitations “determining a
duration of said activation of said interface element” and “selecting . . . one
of a plurality of communication modes . . . based on said comparison,”
recited in claim 1). Based on the entire trial record, Petitioner has
established by a preponderance of the evidence that the subject matter of
claim 12 would have been obvious over the combined teachings of Newman,
Araki and Ronkainen, as well as the combined teachings of Newman, Araki,
Trewin, and Ronkainen.
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c. Analysis of Independent Claims 18, 30, 46
As pointed out by Petitioner, claim 18 only requires that the selection
of a communication mode be based on one of the recited options, and does
not require selecting a communication mode based on the presence or
absence of a media signal. See Pet. 37–38, 65. Based on the entire trial
record and for the same reasons as those explained above in Sections
II.D.1.d. through II.D.1.g. addressing the unpatentability of claims 1, 18, 30,
and 46 over Newman, Araki, and Trewin, Petitioner has established by a
preponderance of the evidence that the subject matter of claims 18, 30,
and 46 would have been obvious over the combined teachings of Newman,
Araki, and Ronkainen, as well as the combined teachings of Newman, Araki,
Trewin, and Ronkainen. Similarly, because claim 18 only requires that the
selection of a communication mode be based on one of the recited options,
claim 18 does not require selecting a communication mode based on the
duration of the activation signal. Based on the entire trial record and for the
same reasons as those explained above addressing independent claim 12,
Petitioner has established by a preponderance of the evidence that the
subject matter of claims 18, 30, and 46 would have been obvious over the
combined teachings Newman, Araki, Trewin, and Ronkainen.
d. Analysis of Dependent Claims 13, 15–17, 19, 23–25, 34–37, and 48
Claims 13 and 15–17 depend from independent claim 12, claims 19
and 23–25 depend ultimately from independent claim 18, claims 34–37
depend ultimately from independent claim 30, and claim 48 depends from
independent claim 46. Ex. 1001, 28:1–6, 28:10–22, 28:46–51, 29:4–25,
30:44–31:11, 32:65–33:2. We have reviewed Petitioner’s contentions and
supporting evidence addressing how Newman, Araki, Trewin, and
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Ronkainen teach or suggest the additional limitations recited in dependent
claims 13, 15–17, 19, 23–25, 34–37, and 48. See Pet. 61–70.
Patent Owner does not substantively address the limitations of
dependent claims 13, 15–17, 19, 23–25, 34–37, and 48 and Petitioner’s
contentions addressing these claims. See generally PO Resp. Nonetheless,
the burden remains on Petitioner to demonstrate unpatentability. See
Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record and including the reasons explained
above addressing independent claims 1, 18, 30, and 46, Petitioner has
established by a preponderance of the evidence that the subject matter of
claims 13, 15–17, 19, 23–25, 34–37, and 48 would have been obvious over
the combined teachings of Newman, Araki, and Trewin.
e. Analysis of Dependent Claim 7
Claim 7 depends from claim 1 and further recites:
wherein said one or more configurable timing parameters
comprise a lower threshold time and an upper threshold time,
and wherein said comparison of said duration of said activation
of said interface element with said one or more configurable
timing parameters by said adaptive recording application
comprises comparing said duration of said activation of said
interface element with said lower threshold time and said upper
threshold time.
Ex. 1001, 27:17–25.
Petitioner asserts that the combination of Newman, Araki, and Trewin
teach a configurable timing parameter in the form of a duration of time (e.g.,
one second) used to determine whether to select a push-to-talk mode or a
tap-to-start mode. See Pet. 46–47 (incorporating by reference Pet. 23–27).
Petitioner contends that the duration of the timing parameter could also be
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configured using Trewin’s techniques based on the user’s interaction with
Newman’s application button. See id. at 47. Petitioner implicitly
acknowledges that the combination of Newman, Araki, and Trewin does not
teach two configurable timing parameters, a lower threshold time, and an
upper threshold time, as required by dependent claim 7. See id. Petitioner
asserts that Ronkainen teaches a lower threshold time and an upper threshold
time based on Ronkainen’s disclosure of a time duration associated with a
quick button press and release (e.g., the time between steps 105 and 120 in
Figure 1) and a time duration associated with a time-out of “short-press
functionality” (e.g., after the time between steps 105 and 134 in Figure 1 has
elapsed). See id. at 47–50 (reproducing Ex. 1006, Fig. 1 (with annotations);
quoting Ex. 1006, 2:42–45; citing Ex. 1006, 3:15–18, 4:60–5:3, 5:12–25;
Ex. 1002 ¶ 205).
Petitioner contends that it would have been obvious to one of ordinary
skill in the art to modify the combined teachings of Newman, Araki, and
Trewin to include a lower threshold time and upper threshold time, as taught
by Ronkainen, such that Newman’s communication device, as modified to
include the single-button tap-to-start and push-to-talk teachings of Araki,
would initiate a tap-to-start communication mode in response to a quick tap
(e.g., under 100 ms) of the respond button or initiate a push-to-talk
communication mode in response to pressing the respond button for a longer
duration (e.g., 1 second or longer) in order to provide multiple functions for
a single button and during an intermediate time interval inform the user what
will happen if the button continues to be pressed (i.e., push-to-talk recording
mode). See Pet. 50–53 (quoting Ex. 1006, 1:27–31, 1:40–48, 3:1–7; citing
Ex. 1005 ¶ 25; Ex. 1002 ¶¶ 207–216). Petitioner reproduces Ronkainen’s
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explanation that the utilization of a few buttons on a limited interface is
enhanced by separating a short press of a button from a longer duration
press. See id. at 52 (quoting Ex. 1006, 1:27–31). Petitioner further
reproduces Ronkainen’s explanation that when the function resulting from a
long key press is not obvious, or is a hidden feature of the interface, the
feature may be left unused or the user may have to guess what will happen.
See id. (quoting Ex. 1006, 1:40–48). Petitioner also reproduces Ronkainen’s
explanation that the long-press presentation gives information about what
the extra functionality is, which can be important in user interfaces where it
is unclear what happens, and which can happen in some cases when the
button count is extremely limited (e.g., only one button). See id. (quoting
Ex. 1006, 3:1–7). Petitioner contends that the concerns expressed in
Ronkainen are echoed in Araki, which discusses issues when a user may not
understand how the recording button operates. See id. (citing Ex. 1005
¶ 25).
Patent Owner does not address substantively the limitations of
dependent claim 7 and Petitioner’s contentions regarding claim 7. See
generally PO Resp. Nonetheless, the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire trial record, we determine that Petitioner sets forth
sufficient articulated reasoning with rational underpinning to support the
conclusion that it would have been obvious to one of ordinary skill in the art
to modify the combined teachings of Newman, Araki, and Trewin to include
a lower threshold time and upper threshold time, as taught by Ronkainen.
See Ex. 1002 ¶¶ 207–216; KSR, 550 U.S. at 418. For the reasons above and
including the reasons explained above addressing claim 1, we conclude that
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Petitioner has established by a preponderance of the evidence that the
subject matter of dependent claim 7 would have been obvious over the
combined teachings of Newman, Araki, Trewin, and Ronkainen.
f. Analysis of Dependent Claims 8–11
Claims 8–11 depend from claim 7, and ultimately depend from
claim 1. We have reviewed Petitioner’s additional contentions and
supporting evidence addressing how Newman, Araki, Trewin, and
Ronkainen teaches or suggests the additional limitations recited in dependent
claims 8–11. See Pet. 56–59.
Patent Owner does not substantively address the limitations of
dependent claims 8–11. See generally PO Resp. Nonetheless, the burden
remains on Petitioner to demonstrate unpatentability. See Dynamic
Drinkware, 800 F.3d at 1378.
Based on the entire trial record and including the reasons explained
above in addressing claims 1 and 7, Petitioner has established by a
preponderance of the evidence that the subject matter of claims 8–11 would
have been obvious over the combined teachings of Newman, Araki, Trewin,
and Ronkainen.
g. Summary
For all of the foregoing reasons, based on the entire trial record,
Petitioner has established by a preponderance of the evidence that the
subject matter of claims 7–13, 15–19, 23–25, 30, 34–37, 46, and 48 is
unpatentable under 35 U.S.C. § 103 over Newman, Araki, Trewin, and
Ronkainen.
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3. Patentability Challenge to Claims 12, 13, and 15–17 over
Newman, Araki, and Ronkainen
Our analysis above addressing Petitioner’s challenge to patentability
based on Newman, Araki, Trewin, and Ronkainen also applies to
Petitioner’s challenge to patentability based on Newman, Araki, and
Ronkainen. Independent claim 12 does not recite “one or more configurable
timing parameters,” as recited in independent claims 1, 18, 30, and 46, for
which the Petition relies on the teachings of Trewin. Compare Ex. 1001,
27:50–67 (claim 12), with id. at 26:35–55 (claim 1), 28:23–45 (claim 18),
29:59–30:21 (claim 30), 32:33–56 (claim 46); see Pet. 28–32. In addition,
as explained above addressing claim 1, we determine that Petitioner
establishes sufficiently that the combination of Newman and Araki teaches
or suggests “an adaptable recording application,” also recited in claim 12,
and sets forth a sufficient articulated reasoning with rational underpinning to
support the proposed modification of Newman in view of Araki.
Based on the entire trial record and including the reasons explained
above addressing claims 12, 13, and 15–17, Petitioner has established by a
preponderance of the evidence that the subject matter of claims 12, 13,
and 15–17 is unpatentable under 35 U.S.C. § 103 over Newman, Araki, and
Ronkainen.
III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that
claims 1, 2, 4–13, 15–19, 21–25, 30, 32–37, and 46–48 of the ’059 Patent
are unpatentable.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1, 2, 4–13, 15–19, 21–25, 30, 32–37, and 46–48 of
the ’059 Patent are 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.
In summary:

Claims 35 U.S.C. § Reference(s) / Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 2, 4–6, 18,
21, 22,
30, 32, 33,
46, 47
103 Newman, Araki, Trewin
1, 2, 4–6, 18,
21, 22,
30, 32, 33,
46, 47

7–13, 15–19,
23–25,
30, 34–37,
46, 48
103 
Newman,
Araki, Trewin,
Ronkainen 
7–13, 15–19,
23–25,
30, 34–37,
46, 48 

12, 13, 15–17 103 
Newman,
Araki,
Ronkainen 
12, 13, 15–17   
Overall
Outcome
1, 2, 4–13,
15–19, 21–25,
30, 32–37,
46–48

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For PETITIONER:
Heidi Keefe
Andrew Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com

For PATENT OWNER:

Vincent Rubino
Peter Lambrianakos
Enrique Iturralde
vrubino@fabricantllp.com
plambrianakos@fabricantllp.com
eiturralde@fabricantllp.com

Jialin Zhong
ZHONG LAW, LLC
zhong@zhong-law.com