ASUSTeK Computer Inc.v.ExoTablet Ltd.

Patent Trial and Appeal Board

Apr 18, 2016

11849454 (P.T.A.B. Apr. 18, 2016)

Trials@uspto.gov
571-272-7822
Paper No. 26
Filed: April 18, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ASUSTEK COMPUTER INC. and
ASUS COMPUTER INTERNATIONAL,
Petitioner,

v.

EXOTABLET, LTD.,
Patent Owner.
____________

Case IPR2015-00046
Patent 7,477,919 B2
____________

Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

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

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BACKGROUND
On April 23, 2015, we instituted an inter partes review of claims 1–4, 6–7,
14, and 19 of U.S. Patent No. 7,477,919 B2 (“the ’919 Patent”). Paper 6, 25
(“Dec. to Inst.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a). We base our decision on the preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the
arguments of the parties and the supporting evidence, we conclude, that claims 1–
4, 6–7, 14, and 19 are unpatentable.
THE ’919 PATENT
The ’919 Patent addresses the need for a portable wireless device that
permits instant communication and remote access to information, is sufficiently
small and lightweight to be carried around conveniently by a user on a routine
basis, permits the user to enter information such as a web site address or an e-mail
message to control the device to browse the web or send e-mail messages (or to
view web pages and e-mail messages), and permits the user to access information
stored on a remote computer. Ex. 1001, col. 1, ll. 57–67. Figure 1 of the ’919
Patent illustrates the claimed input/output device.
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Figure 1 of the ’919 Patent
As shown above, the ’919 Patent discloses an input/output device that has a
phone port for connecting to a cell or other portable phone. Id. at col. 2, ll. 1–2.
The device has input components, such as a keyboard, and output components,
such as a screen, that are easier for a person to use than the small keypad and
screen available on a cell phone. Id. at col. 2, ll. 3–9. Signals representing
information or commands a user supplies with the input components are sent via
the phone port to the phone, which transmits wireless signals to the intended
destination device. Id. at col. 2, ll. 10–13. The phone also receives wireless
signals that are sent through the phone port of the input/output device to be
displayed as text or images on the screen. Id. at col. 2, ll. 13–16.
The input/output device generally has a housing that houses (i) the input
components, e.g., a microphone or keyboard, (ii) the output components, e.g., a
screen or speaker, (iii) a data storage device, e.g., a hard drive that can store a
browser, email, and wireless application protocol, (iv) a processor, and (v) a phone
interface having a support member for the portable phone and the phone port. Id.
at col. 2, ll. 17–26. A modem also can be provided for use with a portable phone
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that does not have one. Id. at col. 2, ll. 21–22. A user engaged in a conversation
on a portable phone can insert the phone into the phone interface on the device to
bring up a web page or view other data on its display screen and use the keyboard
or another input component to enter data, such as a website address, email
messages, personal information for making online purchases, a file location on a
remote computer, or control functions. Id. at col. 4, ll. 36–57. The phone
transmits wireless signals representing the data to the intended destination and
receives wireless signals that are communicated to the device, which processes the
signals to display text and images or to provide audible output. Id. at col. 4, l. 57–
col. 5, l. 5. The device can be provided with minimum functionality to perform
input/output operations, or can be provided with additional functionalities, e.g.,
browser functionality, a video card, additional storage drives, a scanner, a printer,
and Bluetooth functionality. Id. at col. 6, ll. 7–24, 28–35. The device can be
powered, e.g., by photovoltaic cells, or by a 120/240V line source through a
detachable power cord. Id. at col. 6, ll. 25–28.
The ’919 Patent describes a first exemplary embodiment in which the
housing has the shape and size of a portable computer and a support member is
formed by (i) a frame, e.g., a solid, perforated or lattice frame that may be elastic to
fit different sized phones, having a bottom or side wall with the port disposed
thereon pivotally mounted to the housing so that the frame pivots into and out of
the housing opening, or (ii) a slot formed in the base housing section, or (iii) a slot
formed in the pivotal housing section, or (iv) a base plate slidably attached to the
housing at an opening so that the base plate slides into and out of the housing, or a
retractable arm attached to the housing so that the arm slides out of the opening to
laterally support the phone, or (v) a base plate pivotally mounted to the housing at
an opening so that the base plate pivots into and out of the housing, or a pivotably
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retractable arm attached to the housing at an opening so that the arm pivots. Id. at
col. 2, ll. 30–59.
The ’919 Patent discloses a second exemplary embodiment in which the slot
has a channel for receiving the portable phone, with the support member formed by
one of the walls defining the slot or channel. Id. at col. 2, ll. 60–64. A third
exemplary embodiment, similar to the second, includes an adapter sleeve that
receives and holds the phone so that the phone can be slid into and out of the
sleeve and slot as desired. Id. at col. 2, l. 64–col. 3, l. 3.
SOLE CLAIM AT ISSUE
We instituted trial on certain of Petitioner’s challenges to claims 1–4, 6–7,
14, and 19 of the ’919 Patent. Dec. to Inst. 25. The Patent Owner Response
addressed only Petitioner’s challenge to claim 7. Paper 17, 10–51 (“PO Resp.”).
At oral hearing, Patent Owner agreed that it is not challenging Petitioner’s
assertions as to any of the challenged claims other than claim 7. Paper 24, 44:12–
45:3. We have reviewed the Petition and the evidence cited therein, and are
persuaded that for each ground on which we instituted trial of claims 1–4, 6, 14,
and 19, Petitioner has established by a preponderance of the evidence that the
corresponding claims are unpatentable. See Dec. to Inst. 9–25.
Claim 7, the only remaining claim, depends from claim 1 and is reproduced
below, showing [in brackets] the elements of claim 1 incorporated into the claim:

7. The mobile telephone input output device of claim 1 [An
input/output device for a mobile telephone providing
a handheld, wirelessly portable, enhanced user interface for
the mobile telephone having a display screen, comprising:
a housing sized and configured to be conveniently carried
by hand;
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an electronic display screen mounted to or enclosed in the
housing that is larger than the display screen on the
mobile telephone;
a user operable input device mounted to or enclosed in the
housing for receiving user commands for controlling
the mobile telephone while the input/output device is
handheld and wirelessly portable;
a cradle mounted to or enclosed in the housing configured
for physically receiving and holding the mobile
telephone;
a communication port mounted to or enclosed in the
housing for communicating with the mobile telephone
when the mobile telephone is held by the cradle;
wherein the input/output device is configured to physically
hold and transport the mobile telephone while the
input/output device is handheld, the input device is
used to control the mobile telephone, and the enlarged
display screen displays information supplied by the
mobile telephone; and
wherein the mobile telephone input/output device holding
the mobile telephone is configured to be conveniently
operated while handheld and used as an integrated
wireless communication device in which the mobile
telephone engages in wireless communications while
the input/output device operates as a handheld,
wirelessly portable, enhanced user interface for the
mobile telephone];
wherein the cradle defines a channel for receiving the
mobile telephone in a position in which the display
screen for the mobile telephone is concealed by the
input/output device.

CLAIM CONSTRUCTION
We interpret claims of an unexpired patent using the broadest reasonable
construction in light of the specification of the patent in which they appear. See 37
C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed.
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Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890
(2016). In applying a broadest reasonable construction, claim terms generally are
given their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Concealed
In our Decision to Institute, we adopted Petitioner’s proposed construction
that “concealed,” as used in claim 7, means hidden from view.1 Dec. to Inst. 9.
Although Patent Owner does not offer an explicit construction for the term
concealed, Patent Owner implies that it requires the mobile phone be placed into
the claimed input/output device in an orientation that precludes performing voice
call functions with the phone. PO Resp. 8–10.
Claim 7 recites a structure in which “the cradle defines a channel for
receiving the mobile telephone in a position in which the display screen for the
mobile telephone is concealed by the input/output device.” Emphasis added. As
Petitioner notes, the term concealed is not used in the Specification of the ’919
Patent outside of the claims. Pet. 11. Citing the Declaration of its witness, Dr.
Dean Sirovica, Patent Owner contends that in claim 7, “[t]he concealment is both
visual and functional” because in the ’919 Patent, the input/output is unified and
brought to a single interface presented to the user. PO Resp. 5 (citing Ex. 2003,
Declaration of Dr. Dean Sirovica (“Sirovica Decl.”) ¶ 18). In support of its
functional concealment argument, Patent Owner argues that the Specification

1 We also interpreted the claim terms “cradle,” “channel,” and “power source.”
Dec. to Inst. 7–9. The parties do not dispute these interpretations in their Patent
Owner Response and Petitioner’s Reply. We do not perceive any reason or
evidence that now compels any deviation from these interpretations. Accordingly,
we adopt our previous analysis for purposes of this Decision.
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discloses two embodiments of the claimed input/output device as having a housing
with input and output components that can include a microphone and a speaker,
thus allowing the input/output device to perform voice call functions. Id. at 5–7.
In view of these disclosures, Patent Owner argues that the telephone’s display
screen is concealed because the mobile telephone, including its voice calling
functionality, is being controlled by the device. Id. at 8–9.
The descriptions cited by Patent Owner do not support its implicit
construction of “concealed” in claim 7 because they do not describe the presence
of a microphone and a speaker in the device as pertinent to the input/output device
concealing the display screen of the mobile telephone, as recited in claim 7. The
passage at column 4, lines 44–50, cited by Patent Owner discloses only that a user
engaged in a phone conversation can insert his phone into the phone interface to
bring up a web page or view data on the display screen and, when desired, remove
the phone from the interface and “resume[] using the phone as a conventional
portable phone.” Ex. 1001, col. 4, ll. 44–50 (emphasis added). The passage at
column 9, lines 49–53, also cited by Patent Owner, similarly discloses that “when
the phone is inserted into the input/output device, the phone provides connectivity
to the device by functioning as a modem and/or wireless communications device
providing real time communications capabilities with other communications
devices,” and that when the user slides the phone out of the input/output device,
the phone “resumes operation as a conventional portable phone.” Id. at col. 9, ll.
55–56 (emphasis added); see also id. at col. 3, ll. 17–19 (“When the user removes
the phone from the device, the phone then returns to functioning as a conventional
portable phone.” (emphasis added)). These portions suggest that the phone is used
for voice call functions before and after it is connected to the input/output device,
but not during the time it is connected.
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The positon of the antenna on the left side of the phone in Figure 1 of the
’919 Patent appears to suggest a configuration in which phone 32 is placed into
interface 24 in such a manner that the mobile phone display screen faces the back
of the input/output device. Ex. 1001, Fig. 1. However, the accompanying
description states only that the phone is inserted into engagement with interface 24
and device 10 communicates with portable phone via port 28. Id. at col. 4, ll. 36–
50. The Specification does not describe port 28 as being positioned relative to the
corresponding port on the phone, so as to require that the phone face a direction
that conceals any particular functionality of the phone. Even if Figure 1 is read to
imply that, when placed in the cradle, the entire front face of the phone, including
both its display and keypad are concealed, there is no discussion in the ’919 Patent
concerning the actual placement of port 28 that connects to the phone. Depending
upon the relative positon of the phone port and the port of the input/output device,
the mobile phone could face the opposite direction from that implied by Figure 1,
with functional operation buttons on the mobile phone facing outward. For
example, Petitioner argues that Figure 6, when viewed in conjunction with Figure
1, shows the front face of the mobile phone facing outward from the input/output
device, such that it would in fact be accessible to the user. Paper 19, 4 (“Reply”).
Most important to our construction, however, is that the relevant language of
claim 7 requires only that the display screen is concealed. More specifically, claim
7 does not recite that the display screen is concealed to prevent operation of any
particular function, nor does claim 7 recite that the mobile phone keypad or any
functional buttons on the face of the mobile phone be concealed by the
input/output device. The relevant language of claim 7 requires only that the
input/output device receive the mobile phone in such a manner that the mobile
phone display screen is concealed. As the claim explicitly recites that the mobile
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phone display screen is concealed by the input/output device, we do not read into
claim 7 a limitation requiring that any other part or functionality be concealed by
the input/output device. For purposes of this Decision, we interpret “concealed” to
mean hidden from view from all perspectives. See Tr. 6:16–9:18, 32:23–33:14.
ANALYSIS OF PRIOR ART CHALLENGES
Introduction
As previously discussed, claim 7 depends from claim 1 and recites the
additional limitation “wherein the cradle defines a channel for receiving the mobile
telephone in a position in which the display screen for the mobile telephone is
concealed by the input/output device.” In view of Patent Owner’s concessions
with respect to claim 1, we address only the challenges to claim 7 as (1) obvious
over Barvesten2 and (2) obvious over the combination of Kahn3 and Kumar.4
A fundamental premise of Patent Owner’s argument, that we address further
in the context of each challenge, is that there is no reason to modify a prior art
reference where the modification would render the disclosed device inoperative for
its intended purpose. PO Resp. 26 (citing In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984). Patent Owner contends, generally, that in the combination of
references together, the phone is flipped over and that it is undisputed the
combination device will not work for its intended purpose, i.e., to make a phone
call. Tr. 21:3–7. Patent Owner supports this assertion with testimony from Dr.
Sirovica stating that both Barvesten and Kahn seek to preserve and enhance the
normal use of the mobile telephone. PO Resp. 10 (citing Sirovica Decl. ¶ 19).

2 U.S. Patent No. 6,714,802 B1 (filed Sept. 21, 2000, issued Mar. 30, 2004)
(Ex. 1002).
3 U.S. Patent No. 6,505,055 B1 (filed May 1, 1998, issued Jan. 7, 2003) (Ex.
1003).
4 WO 00/60450 (publ. Oct. 12, 2000) (Ex. 1005).
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Patent Owner contends that Barvesten and Kahn’s accessory devices do not have a
speaker or microphone and rely upon the mobile telephone itself to conduct a voice
call. Id.
In Gordon, a claimed blood filtering device provided an inlet at the bottom,
allowing blood to follow a spiral path to the top, where bubbles vented out a gas
vent and an outlet at the bottom. Gordon, 733 F.2d at 900–901. In contrast, the
sole reference, a gravity assist liquid strainer for removing dirt and water from
gasoline, provided an inlet and outlet for the filtered gasoline at the top of the
device and undesired water was drained using a pet-cock at the bottom. Id. The
court found no motivation to modify the prior art apparatus by turning it upside
down to have both the inlet and outlet valve at the bottom, because that would have
rendered it inoperable for its intended purpose by trapping gasoline to be filtered in
a pocket, while the water the reference seeks to separate would flow freely out of
the outlet. Id. at 902. As discussed further herein, however, the devices described
in the references asserted in this case are not rendered inoperable (by Petitioner’s
proposed modifications/combinations) for their intended purpose of providing an
enhanced user interface; nor do the proposed modifications/combinations disable
the phones they are used with from making a voice call. In each case, the phone is
intended to be attached to the input/output device to provide an enhanced user
interface and can be detached to make voice calls as well. This is also a feature of
the device recited in claim 7 of the ’919 Patent, which does not require voice call
capability.
Patent Owner argues that the input/output device in the ’919 Patent, in
addition to having a second display and second keyboard, has a second microphone
and second speaker, so that it can be used to replace the voice call functions of the
mobile telephone. PO Resp. 10. According to Patent Owner, this is in contrast to
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Barvesten and Kahn, in which the accessory devices rely upon and require the
mobile telephone to conduct a voice telephone call. Id.
The input/output device in the ’919 Patent cannot conduct a voice call, or
perform any other wireless communication, without the mobile telephone. Indeed,
Patent Owner made this specific argument at the hearing arguing that “[c]laim 7
requires the two combined. It requires the phone in a cradle in a slot, connected to
an I/O device.” Tr. 24:4–7. In the input/output device of the ’919 Patent or the
accessory devices in any of the references on which we instituted trial for claim 7,
the mobile telephone is required to provide wireless communication. Thus, Patent
Owner’s argument distills to its contention that voice call functionality is a
requirement of the input/output device recited in claim 7. It is not.
Patent Owner reads into claim 7 limitations that are not present. Although
claim 7 incorporates the limitations of claim 1, neither claim 1 nor claim 7 recites a
microphone, a speaker, or voice call functionality. Petitioner notes that Patent
Owner’s witness, Dr. Sirovica, conceded that neither a microphone nor a speaker is
recited in claim 7 and that he was reading these features into claim 7 from the
Specification. Reply 5–6 (citing Ex. 1017, Deposition Testimony of Dr. Dean
Sirovica, 75:5–77:5 (“Sirovica Tr.”)).
Claim 7 incorporates the structure recited in claim 1. Claim 1 recites a hand
sized housing, electronic display screen, user operable input device, cradle, and
communications port. Claim 1 also recites two “wherein” clauses. The first
“wherein” clause recites the device “is configured to physically hold and transport
the mobile telephone while the input/output device is handheld, the input device is
used to control the mobile telephone, and the enlarged display screen displays
information supplied by the mobile telephone.” The second “wherein” clause
recites that the handheld device is “used as an integrated wireless communication
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device in which the mobile telephone engages in wireless communications while
the input/output device operates as a handheld, wirelessly portable, enhanced user
interface for the mobile telephone.” The third “wherein” clause recites that the
“cradle defines a channel for receiving the mobile telephone in a position in which
the display screen for the mobile telephone is concealed by the input/output
device.” None of these limitations recites a microphone, speaker, or any particular
type of wireless voice or data communications. With a mobile phone inserted, the
input/output device can be used to “control” the mobile telephone and “display”
information supplied by the mobile telephone. The mobile telephone engages in
“wireless communications” that are not enumerated in the claim, while the
input/output device operates as a handheld, wirelessly portable enhanced user
interface for the mobile telephone. There is no requirement in the claim that the
“wireless communications” be voice call functionality (as opposed to, for example,
data communications), or any other functionality of the device or the phone.
Obviousness Over Barvesten
Petitioner presents two independent explanations of why claim 7 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Barvesten. As discussed
below, we find that Petitioner has demonstrated by a preponderance of the
evidence that claim 7 is unpatentable under its theory regarding modifying
Barvesten.
1. Motivation to Modify Barvesten
Barvesten discloses an accessory device with a connector into which a
known portable communications apparatus, such as a radio phone or GSM
telephone, can be inserted. Ex. 1002, col. 3, ll. 29–34; col. 4, ll. 1–6.
Figures 1 and 2 of Barvesten are shown side-by-side below. Figure 1 of
Barvesten illustrates an orientation in which display screen 13 and numeric keys 16
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of the phone face the user. Figure 2 illustrates an orientation in which the device is
flipped over, so that the display screen and numeric keys of the phone do not face
the user.

Figures 1 and 2 of Barvesten
As shown in Figure 2 above, Barvesten’s accessory device 2 includes
QWERTY keypad 22, cursor navigation keys 35–38, and large display 32. Id. at
col. 4, ll. 13–18. The QWERTY keypad, navigation keys and large display are
contained in a housing having first and second portions 20 and 30, respectively,
coupled by hinge mechanism 44, so that second portion 30 of the housing, is
foldable between an open and closed position. Id. at col. 4, ll. 7–10, 18–20.
Petitioner contends that the purpose of Barvesten’s accessory device is to
provide an improved user interface for accessing accessory functionality provided
by the central controller and man-machine interface of the mobile telephone. Pet.
14 (citing Ex. 1002, col. 6, ll. 16–20). Citing the supporting testimony of its
Declarant, Dr. William Alberth, Petitioner argues that it would have been an
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obvious design choice to modify Barvesten to flip the mobile phone in the channel
such that its display screen would not face outward. Id. at 31 (citing Ex. 1013 ¶
48). Petitioner notes that such an arrangement is shown in Kumar (Ex. 1005, Fig.
1), but does not cite Kumar as part of this challenge. Id.
Patent Owner argues that a person of ordinary skill would not have been
motivated to modify Barvesten, and that Barvesten teaches away from making
Petitioner’s alleged design choice modification. PO Resp. 2. According to Patent
Owner, Petitioner’s proposed modification is contrary to the design modality of
Barvesten, which is preserving and enhancing the “normal” function of the mobile
telephone. Id. We agree with Petitioner that Patent Owner’s design modality
argument is flawed. Reply 3–6. As discussed above, claim 7 is broadly worded to
recite an input/output device in which “the mobile telephone engages in wireless
communications while the input/output device operates as a handheld, wirelessly
portable, enhanced user interface for the mobile telephone.” Emphasis added. See
also Ex. 1001, col. 3, ll. 4–17 (describing the advantages of the invention). Thus,
the design goals and intended use of Barvesten overlap those of the invention
recited in claim 7.
Patent Owner further contends that, even if Barvesten were modified, such
modification would yield a device that is inoperable, i.e., a device that could not
initiate, receive, or conduct a voice call. PO Resp. 2.
Patent Owner contends that Barvesten primarily is drawn to an accessory
device that makes text communication easier due to the accessory device’s display
screen being larger than that of the phone it accessorizes. Id. at 12 (citing Ex.
1002, col. 2, ll. 44–48). The cited portion of Barvesten actually says:
it is an object of the present invention to provide an
accessory device, which will make it easier for a user of a
mobile telephone to input text into the telephone, without
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having to rely solely on the ordinary numeric telephone
keypad thereof.
Ex. 1002, col. 2, ll. 44–48 (emphasis added). Barvesten further distinguishes the
modes of operation stating:
the portable communication apparatus shall appear in a
compact size, having a low weight and a low power
consumption, in situations where the user is only
interested in normal telephony services (communication
of speech). On the other hand, in situations where more
advanced features than normal speech communication are
required (such as text processing or presentation of
graphic information), the portable communication
apparatus shall provide a user interface, which is better
for these services.
Id. at col. 2, ll. 51–60 (emphasis added). Barvesten further describes its intended
use as follows:
the accessory device 2 of the preferred embodiment is
intended to provide an improved user interface for
accessing functionality provided by the central controller
and man-machine interface of the mobile telephone 1.
However, the controller 410 of the accessory device 2 may
also be arranged to provide additional functionality, which
is not included in the standard man-machine interface of
the mobile telephone 1.
Id. at col. 6, ll. 16–23 (emphasis added).
Although nowhere in this description does Barvesten explicitly discuss the
voice capabilities of the phone as being part of the intended use of the accessory,
Barvesten does identify as an objective a device that has “low weight and a low
power consumption, in situations where the user is only interested in normal
telephony services (communication of speech).” Id. at col. 2, ll. 53–55. This
objective, however, only requires low weight and power, and does not require the
accessory device to provide voice call functionality that is already available from
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the mobile phone. Barvesten’s intended use is to provide a user interface that is
“better” for “more advanced features than normal speech communication[s] . . .
(such as text processing or presentation of graphic information).” Id. at col. 2, ll.
56–60.
Petitioner contends it would have been an obvious design choice to flip the
phone in Barvesten’s cradle, such that the display screen does not face outward
from the rear of the accessory. Pet. 31–32.5 As Petitioner notes, Patent Owner
acknowledges there were reasons why a person of ordinary skill would consider
flipping the phone to conceal the display screen, for example, to prevent scratching
the display screen. Reply 10–11 (citing PO Resp. 9, Sirovica Tr. 80:2–81:17,
86:14–87:1).
Patent Owner contends that by flipping the display screen, Barvesten could
not be used as intended because it could not be operated for communication of
speech, i.e., making a voice call. PO Resp. 25–26. Thus, Patent Owner argues, a
person of ordinary skill would not have been motivated to make such a design
choice. Id. Petitioner responds that, even with the phone flipped over, it would
still have been possible to use the Barvesten phone in a conventional way to make
voice calls by taking it out of the sleeve. Reply 13. Patent Owner counters that by
taking the mobile phone out of the sleeve, “[y]ou no longer have the claimed
combination.” Tr. 24:3–6 (statement by counsel for Patent Owner). However, as
discussed above, although claim 7 recites “wireless communications,” claim 7 does
not require voice call capability.

5 Although not part of this ground, Petitioner also cited related prior art by Kumar
(Ex. 1005), which we discuss further in this Decision, as illustrating a docking
display for a mobile phone in which the display screen is entirely concealed by the
docking display. Pet. 32.
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Patent Owner attempts to distinguish Barvesten because, even though
Barvesten provides the same feature as that explicitly recited in claim 7, i.e., an
enhanced user interface, Barvesten suggests an additional intended purpose, i.e.,
voice communication. However, as previously discussed, Barvesten’s intended
use is to provide a user interface “where more advanced features than normal
speech communication are required.” Ex. 1002, col. 2, ll. 56–57. Thus, we do not
find that modifying Barvesten to conceal the mobile phone display screen, for
example by flipping the phone in the slot, would render Barvesten inoperative for
its intended purpose. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016)
(Board properly found that one of ordinary skill would have been motivated to
pursue the desirable properties taught by one reference, even if that meant forgoing
the benefit taught by another).
Petitioner also notes that this is exactly how the ’919 Patent works. Reply
13. The ’919 Patent does not describe making calls using the I/O device, but
instead, discusses using the microphone to incorporate voice recognition into the
device. Ex. 1001, col. 5, l. 66–col. 6, l. 1. The ’919 Patent further states that when
desired the user simply removes the phone from the interface and resumes using
the phone in the conventional manner. Id. at col. 3, ll. 17–19, col. 4, ll. 48–50, col.
9, ll. 49–60.
The question before us is whether one of ordinary skill would have been
motivated to flip the mobile phone in Barvesten to conceal the display screen in a
device that provides wireless communications. Barvesten discloses the advantages
to enhancing the display screen, which is a feature recited in claim 7. Petitioner’s
arguments that one of ordinary skill would have been motivated to protect the
display screen from damage and that flipping the phone in the Barvesten cradle
would have provided this advantage are persuasive. Reply 10–11. As discussed
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above, the parties agree that, if flipped in the cradle, the mobile phone in Barvesten
could be used to make a voice call by removing the phone from the cradle. Thus,
the evidence is that, even if modified as suggested by Petitioner, Barvesten would
have remained operable for its intended functions. Indeed, making a voice call
with the mobile phone removed from the cradle is described in the ’919 Patent.
Thus, we find that one of ordinary skill would have been motivated to modify
Barvesten and that, as modified, Barvesten would have continued to be operative
for its intended purpose, i.e. to provide wireless communications and an enhanced
user interface. On this basis, we conclude that, under this theory, Petitioner has
demonstrated that the limitations of claim 7 are taught or suggested by Barvesten,
and that a person of ordinary skill in the art would have had reason to modify the
teachings of Barvesten to achieve the device recited in claim 1.
Obviousness Over Kahn and Kumar
Petitioner contends that Barvesten, discussed above, discloses an
input/output device for use with a bar type phone, while, as shown in Figure 1A,
Kahn discloses an input/output device for use with a flip-phone, such as a
StarTAC™ cellular phone. Pet. 37–38. Figure 1A of Kahn (rotated for easier
viewing) is shown below.

Fig. 1A of Kahn
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Petitioner cites Kahn as disclosing a camel-back digital organizer
(“Organizer”) that enhances a phone’s user interface by providing, in a housing, a
larger display, i.e., output component, screen 130, than the one on a StarTAC flip-
phone and input navigation buttons 120 and 150. Id. at 34–35, 42–43. Petitioner
cites Kahn’s disclosure that the Organizer fits in the palm of the user’s hand, and
provides a portable electronic organizer that attaches to a wireless telephone to
enhance the phone, as recited in claim 1. Id. at 40–41 (citing Ex. 1003, col. 7, ll.
11–13, col. 14, l. 57, col. 2, l. 66–col. 3, l. 2). Petitioner contends that when the
phone and Kahn’s Organizer are connected to communicate, the digital organizer
displays a list of entries having phone number information and receives user
requests to dial a phone number, and transmits a command to the phone to carry
out the request. Id. at 43–44. Thus, Petitioner contends that Kahn discloses a user
operable input device in a housing that receives user commands for controlling the
phone while being handheld and wirelessly portable, as recited in claim 1 of the
’919 Patent. Id. Kahn discloses that the Organizer is attached to a phone using the
same technique as that used to attach an auxiliary battery to a phone. Ex. 1003,
col. 7, ll. 18–20, 39–48. The Organizer’s housing 105 has metal spring connector
170 that grips the top of the phone and plastic connectors 108, 109 that fit into slots
on the phone and hold the unit in place. Pet. 36, 44.
Petitioner notes that Kahn further discloses the claimed communication port
in the form of a communication interface plug or connector at the bottom of the
housing that snaps into a corresponding communication port on the phone and is
designed, with corresponding power and signal pin-outs to access the phone
directly, to issue telephony requests, such as a dial request. Id. at 45–46 (citing Ex.
1003, col. 7, ll. 26–35).
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In Kahn, the flip-phone may be opened to provide access to its display and
keypad. Petitioner notes that Kahn discloses it can be used with other phone
designs. Id. at 51 (citing Ex. 1003, col. 6, ll. 8–12). Petitioner cites Kumar, which
discloses a portable docking display unit 30 and detachable handset 20. Id. at 51–
53 (citing Ex. 1005). Figure 1 of Kumar is shown below.

Figure 1 of Kumar
In our Decision to Institute, we determined that Petitioner had
demonstrated a reasonable likelihood it would succeed in demonstrating that claim
1, from which claim 7 depends, is anticipated by Kahn. Dec. to Inst. 19–21.
Patent Owner has not responded to that ground. Tr. 44:18–45:3. For this ground,
Petitioner notes that Kahn, which concerns a device for use with a flip-phone,
discloses that it can be used with other phone designs. Pet 51 (citing Ex. 1003, col.
6, ll. 8–12). Petitioner cites Kumar, which discloses a portable docking display
unit 30 and detachable handset 20. Pet. 51–53 (citing Ex. 1005). In Kumar,
handset 20 is inserted face down, so that the display on the handheld device is
obscured, into portable docking display 30, which connects to the handset through
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mating connectors 23 and 36 and provides auxiliary keypad 32 and auxiliary
display 31. Ex. 1005, 5, Fig. 1.
Patent Owner contends that Kumar and Kahn cannot be combined because
(1) Kumar “expressly criticizes and teaches away from Kahn” (PO Resp. 2, 37–
42), (2) that “no motivation exists” for a person of ordinary skill to combine Kahn
and Kumar because “Petitioner’s proposed combination is completely contrary to
the design modality of Kahn, which is preserving the ‘normal’ function of the
mobile telephone” (PO Resp. 2, 43–44), and (3) that, “even if combined, Kahn and
Kumar would result in a device that is inoperable, i.e., a device that could not
initiate, receive, or conduct a telephone call” (PO Resp. 2–3, 44–48).
We begin with Patent Owner’s third point, in which Patent Owner argues
that Kahn does not disclose a speaker or microphone on the accessory device. Id.
at 29–30. We addressed a similar argument previously in this Decision in the
context of modifying Barvesten. Patent Owner emphasizes Kahn’s disclosure that,
when the host phone is in use to place a voice call, the unit is held generally so that
the display of the Camel-Back Design Organizer (CDO) is facing away from the
user’s view. Id. at 31 (citing Ex. 1003, col. 7, ll. 11–15). Kahn, however, is silent
as to the direction of the mobile phone screen. Kahn describes its Camel-back
Design Organizer (CDO) unit as clipping onto the phone in the same manner as the
phone’s auxiliary battery, but does not mention the direction of the display screen
of the mobile phone. Ex. 1003, col. 7, ll. 16–19. The figures in Kahn do not show
the direction the mobile phone display screen faces. Id. at Figs. 1A–5C. Figure 4
of Kahn, which is the only figure that shows an actual display, illustrates the CDO
display. In this Figure, the display screen of the mobile phone would be concealed
by the CDO because the CDO blocks sight of the mobile phone display screen.
Kahn’s discussion of a user initiated phone call from the integrated device
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concludes with the statement that “the voice call can proceed without further
assistance from the digital organizer.” Id. at col. 11, l. 54–col. 12, l. 29. Thus, in
Kahn, although one can initiate a call from the CDO by pressing certain buttons,
one can remove the phone from the CDO and conduct the call without the CDO.
As Petitioner notes, in the combination of Kahn and Kumar, where the front
panel of the phone is concealed, Kumar’s bar phone can be removed from the
device to conduct a voice call. Reply 19–20. Therefore, in both Kahn and Kumar,
the device can be used as intended to provide an enhanced user interface and the
phone can be used as intended to make voice calls. Thus, neither Kahn nor Kumar
is inoperative for its intended purpose.
In a related argument, Patent Owner contends that Kahn’s standalone
accessory device is not used to conduct a voice telephone call.6 PO Resp. 31–32.
We addressed this argument previously in this Decision. Claim 7 does not require
that the input/output device conduct a voice call. Claim 7 does not require that the
input/output device be equipped with a speaker or microphone. Thus, Patent
Owner’s contention is not commensurate with the scope of the claim.
Citing the brevity of the Petition, Patent Owner also contends that Petitioner
did not provide articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness. PO Resp. 33–35. Our determination is
guided by the content of the Petition, rather than its length. The Petition notes that,
although Kahn focuses on an organizer for the StarTAC (a flip phone), Kahn
discloses that the design, construction and operation taught are not limited to
StarTAC models, but can be applied to other phones, including ones of markedly

6 Patent Owner acknowledges, however, that the user can use the standalone
accessory device to dial a telephone number and then use the mobile telephone by
itself to conduct the call. PO Resp. 31.
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different design. Pet. 51 (citing Ex. 1003, col. 6, ll. 8–12). Petitioner’s citation of
this passage from Kahn (Ex. 1003, col. 6, ll. 8–12) demonstrates that a person of
ordinary skill would have been motivated to apply Kahn’s principles to phones
with other form factors. The subject matter Patent Owner quotes from the Petition
notes that the flip-phone used in Kahn’s Organizer was one of two commonly used
form factors for mobile phones known to those of ordinary skill at that time, and
that the bar phone, such as that shown in Kumar, was the second. PO Resp. 34
(citing Pet. 52–53, referencing Ex. 1013, Declaration of Dr. William Alberth
(“Alberth Decl.”) ¶ 9). Thus, Petitioner articulated sufficient reasoning for
combining Kumar, which concerns a bar phone, with Kahn to form a device such
as Kahn’s configured for use with a bar phone.
Patent Owner also argues that Kumar cannot be combined with Kahn
because, by criticizing Kahn, Kumar teaches away from it. PO Resp. 37–42.
Patent Owner cites Ricoh Co., Ltd. v. Quanta Comp. Inc., 550 F.3d 1325, 1332 n.5
(Fed. Cir. 2008), for the proposition that a reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant. Id. at 37. However, in
Ricoh the court found no issue of material fact that the reference did not teach
away from using its disclosed optical media write strategy (which was the same
write strategy as that claimed in the involved patent), in a high speed range,
because Ricoh did not explain how the reference’s teaching of using a particular
type of medium limited to use below 5.0 m/s would criticize, discredit, or
otherwise discourage a person of ordinary skill from using the write strategy at
higher speeds when writing to an optical media not limited to speeds below 5.0
m/s. Ricoh, 550 F.3d at 1332 (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
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2004) (refusing to conclude that prior art disclosure taught away from the claimed
invention where the disclosure did not “criticize, discredit, or otherwise discourage
the solution claimed”)).
Here, Patent Owner contends that Kumar’s single non-synching device is
different from Kahn’s system, which requires a standalone accessory, a mobile
telephone and a PC that requires three way synchronization. PO Resp. 38–42
(citing statements in Kumar that Motorola’s StarTAC Organizer does not achieve
reduced cost or size of an integrated combination). In contrast to Patent Owner’s
characterization of Kumar’s treatment of the StarTAC clipOn Organizer, much of
the subject matter cited in the Patent Owner Response is not specific to StarTAC
and concerns objectives Kumar seeks to achieve. Id. at 37–42. Kumar’s entire
discussion of the clipOn Organizer reads as follows:
Recently Motorola, Inc. of Schaumburg, Illinois has begun
to sell its clipOn Organizer as an attachment to its
StarTAC cellular telephone and provide it with smart
phone functionality. The clipOn Organizer and StarTAC
phone have been designed to operate as individual,
standalone units that each furnish its own processor and
power supply. Consequently, attaching the units does not
achieve the reduced size or cost desired in an integrated
combination.
Ex. 1005, 2:8–13.
Kumar’s acknowledgement of Motorola’s clipOn Organizer as an
attachment to its StarTAC cellular telephone serves to distinguish Kumar’s
integrated combination as an improvement, rather than as a teaching away from
Kahn. Kahn discloses a CDO for a flip phone, stating that what is needed is a
solution that “combines telephony with personal information management in a
single integrated hand-held unit” (Ex. 1003, col. 1, l. 66–col. 2, l. 1) and that the
CDO:
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is preferably implemented as an add-on component[,]
which can be easily attached and detached from a phone
by a customer and, once in place, can dramatically
enhance the phone functionality, converting the phone into
a “smart phone.”
Id. at col. 2, ll. 17–21.
With respect to a bar phone, Kumar discloses that:
the present invention relates to systems that detachably
mate a plurality of portable processor based devices to
provide their combined functionality in an integrated
structure.
Ex. 1005, 1:20–22.
Contrary to Patent Owner’s contentions, these disclosures from Kahn and
Kumar demonstrate that both references are directed to systems with attachable
components that as a single hand held unit provide enhanced functionality.
Patent Owner does not contest Kahn’s teaching of all of the elements of
claim 1 from which claim 7 depends. As to claim 7, Petitioner argues that
[t]he specific limitation of claim 7 (i.e., ‘the display screen for the
mobile telephone is concealed by the input/output device’) is not
implicated by the statements in Kumar’s Background Art section, nor
does Kumar ever indicated that Kahn’s device will not work.
Distinguishing prior art does not make the prior art unavailable for
combination. See, e.g., In re Katz, 639 F. 3d 1303, 1321 (Fed Cir. 2011)
(“A reference can distinguish prior art to show the novelty of an
invention without teaching away from combining the prior art with the
invention disclosed in the reference.”) (Internal citations omitted).
Reply 20–21. Petitioner’s arguments are persuasive. We do not agree with
Patent Owner that Petitioner has not established that Kahn and Kumar can be
combined for purposes of establishing obviousness under 35 U.S.C. § 103(a).
Patent Owner does not contend that the combination of Kahn and Kumar does not
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disclose all the limitations of claim 7. For the reasons discussed above, we
conclude that Petitioner has established that the limitations of claim 7 are taught by
Kahn and Kumar, and that a person of ordinary skill in the art would have had
reason to modify their teachings to achieve a device within the scope of claim 7
Secondary Considerations
Patent Owner contends that claim 7 is not obvious based on the secondary
consideration of copying. PO Resp. 49–51. The sole support Patent Owner cites
for copying is a District Court’s finding that Patent Owner was likely to succeed on
the merits of its claim that Petitioner infringed claim 1 and the purported admission
by Petitioner’s expert that Petitioner’s PadFone™ product meets the elements of
claim 7. Id. at 50 (citing Ex. 2002, Deposition Transcript of Dr. William Alberth
(Alberth Tr.”) 18:14–19:15, Ex. 2001). However, as Petitioner notes, the cited
subject matter from the District Court is silent on claim 7 and the question of
infringement is entirely different from that of copying. Reply 23–24; see Wyers v.
Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“Not every competing
product that arguably falls within the scope of a patent is evidence of copying;
otherwise, ‘every infringement suit would automatically confirm the
nonobviousness of the patent.’. . . [C]opying requires evidence of efforts to
replicate a specific product.”)(internal citation omitted). Patent Owner cites to the
following testimony of Dr. Sirovica referring to the implications of the District
Court’s finding:
I am informed and believe that the Court’s ruling and Mr.
Alberth’s testimony evidences that Patentee ExoTablet’s
device is a copy of Petitioner’s invention as claimed in
‘919 claim 7. I further understand that evidence of
copying further demonstrates that claim 7 of the [’]919
patent is not unpatentable for obviousness.
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Sirovica Decl. ¶ 76. Dr. Sirovica does not provide the basis of his
“understand[ing]” or say who informed him concerning the District Court’s
finding. However, it is clear from Dr. Sirovica’s statement that he did not reach
this conclusion himself. Patent Owner has offered no evidence to substantiate its
argument of copying as an objective indicia of non-obviousness.
Petitioner also notes that Patent Owner omitted from its discussion of the
District Court’s order a finding that Petitioner’s obviousness case presented a
substantial question of invalidity. Id. at 24. In fact, notwithstanding the District
Court’s finding that Patent Owner was likely to succeed on the merits of its claim
that the accused device meets the limitations of claim 1, the court denied Patent
Owner’s motion for a preliminary injunction, finding that Petitioner “has raised a
substantial question of invalidity.” Ex. 2004, 19.
In consideration of the above, we conclude that there are no objective indicia
that would support a finding of non-obviousness of claim 7.
Procedural Issues
Anticipating the Petitioner’s Reply, Patent Owner in its Response argued
that the Petition had not addressed its arguments concerning the motive to modify
Barvesten or to combine Kahn and Kumar, thereby precluding Petitioner from
introducing any evidence in response. PO Resp. 19–20, 35–36. However, as our
discussions and citations to the Petition in the pertinent sections above illustrate,
the Petition sufficiently addressed the relevant motivations. At the oral hearing,
Patent Owner argued that the Petitioner’s Reply was the first time Petitioner
discussed the motivation to combine and the first time that Petitioner discussed
such elements as speaker phones. Tr. 19:21–21:2. However, as discussed above,
the Petition does address the relevant motivations, and claim 7 does not recite
speakers or microphones. Those are issues raised by Patent Owner and the
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Petitioner’s Reply appropriately responded to the arguments and evidence in the
Patent Owner Response.

Obviousness Conclusion
Based on all of the evidence of record, we determine that claim 7 would
have been obvious based on Barvesten, and also based on the combination of Kahn
and Kumar, under 35 U.S.C. § 103(a).
CONCLUSION
In consideration of the above, we conclude that claims 1–4, 6, 7, 14, and 19
are unpatentable. Petitioner has demonstrated by a preponderance of the evidence
that:
Claims 1–3, 6, and 19 are anticipated under 35 U.S.C. § 102 by Barvesten;
Claims 1–4, 6, 7, 14, and 19 are unpatentable under 35 U.S.C. § 103(a) over
Barvesten;
Claims 1–3, 14, and 19 are anticipated under 35 U.S.C. § 102 by Kahn;
Claims 1–3, 14, and 19 are unpatentable under 35 U.S.C. § 103(a) over
Kahn;
Claim 4 is unpatentable under 35 U.S.C. § 103(a) over the combination of
Kahn and Chitturi;7 and
Claim 7 is unpatentable under 35 U.S.C. § 103(a) over the combination of
Kahn and Kumar.
ORDER
It is ORDERED that claim 1–4, 6, 7, 14, and 19 of the ’919 Patent have been
shown to be unpatentable; and

7 U.S. Patent No. 6,489,932 B1 (filed Sept. 30, 1999, issued Dec. 3, 2002)
(Ex. 1006).
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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.

PETITIONER:
Matthew A. Smith
Zhuanjia Gu
TURNER BOYD LLP
smith@turnerboyd.com
gu@turnerboyd.com

PATENT OWNER:
Stephen Risley
Robert Blaha
SMITH RISLEY TEMPEL SANTOS LLC
srisley@srtslaw.com
rblaha@srtslaw.com