Kannuu PTY LTD

Patent Trials and Appeals Board

Sep 22, 2020

IPR2020-00736 (P.T.A.B. Sep. 22, 2020)

Trials@uspto.gov Paper 23
571-272-7822 Entered: September 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

KANNUU PTY LTD.,
Patent Owner.
____________

IPR2020-00736
Patent 9,697,264 B2
____________

Before KRISTEN L. DROESCH, MINN CHUNG, and
JESSICA C. KAISER, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1–18 (the
“challenged claims”) of U.S. Patent No. 9,697,264 B2 (Ex. 1001, “the ’264
patent”). Upon our authorization (Paper 17), Kannuu Pty Ltd. (“Patent
Owner”) filed a Corrected Preliminary Response (Paper 18, “Prelim.
Resp.”). Also with our authorization (Paper 17), the parties filed briefs
further addressing the issue of contractual estoppel (Papers 21 (“Reply”), 22
(“Sur-reply”)).
We have authority to determine whether to institute an inter partes
review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
§ 314(a), institution of an inter partes review may not be authorized unless
“the information presented in the petition . . . and any response . . . shows
that there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” Upon
consideration of the Petition and the Corrected Preliminary Response, we
conclude that the information presented does not show there is a reasonable
likelihood that Petitioner would prevail in establishing the unpatentability of
any challenged claim of the ’264 patent. Accordingly, we do not institute an
inter partes review.
II. BACKGROUND
A. Related Matters
According to the parties, the ’264 patent is the subject of the
following district court litigation: Kannuu Pty Ltd. v. Samsung Elecs. Co.,
1:19-cv-04297-ER (S.D.N.Y., May 10, 2019). Paper 4, 2; Pet. 2–3.
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B. The ’264 Patent
The ’264 patent is directed to a method and apparatus for “selecting
items from a collection of items [that] are indexed by a list of item
identifiers.” Ex. 1001, Abstract, 4:25–28. The item identifiers may be in the
form of text, symbols, graphics, etc. Id., Abstract. An initial display is
generated which includes one or more parts of the item identifiers. Id.
Selection of the one or more parts may be made and results in the generation
of a display of further one or more parts for selection. Id.
The ’264 patent further describes that “[t]he present invention
provides a method and apparatus for rapidly selecting an item from a
collection of items the method being referred to as ‘partial word
completion,’” each item being identifiable through a sequence of a common
set of components (the “identifier”). Id. at 6:65–7:2. According to the ’264
patent, an analysis of all identifiers is performed to determine where the
sequences of components diverge or branch. Id. at 7:2–5. The collection of
one or more components between each branch makes up a “segment.” Id. at
7:5–6. The ’264 patent describes that a partial word completion system
allows the user to narrow a search by selecting segments in order, the
segments to be concatenated to make up some or all of an identifier. Id. at
7:6–9. According to the ’264 patent, the system presents the segments to the
user through some output means and the user indicates through some input
means which of the presented segments is the next section of the identifier
the user is building up. Id. at 7:9–13.
In order to allow the user to make their selection, the system may first
present the set of initial segments for the user to start the selection with. Id.
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at 7:14–16. As each segment is selected it is concatenated to the identifier
section and the system then presents the segments that continue the build-up
of the identifier. Id. at 7:16–19. This process is continued until the
complete identifier is built up and the desired item has been identified or it
becomes apparent that the desired item does not match any identifier and
hence is not in the collection of items. Id. at 7:19–23. Alternatively the
identifier may be only partially specified which results in all matching items
being selected. Id. at 7:23–24.
The ’264 patent further describes that the system may apply some
ranking to items in the collection and present segments that correspond to
higher ranked items with more prominence. Id. at 7:25–27. According to
the ’264 patent, the components making up the item identifier may include
characters, symbols, graphics, sounds, gestures, DNA nucleotides, chess
moves, dance steps, or combinations of the above. Id. at 7:27–30.
The ’264 patent describes that in an embodiment, multiple dictionaries
may be navigated in parallel through the selection process described in the
patent. Id. at 43:30–32. For example, the ’264 patent describes navigating
three separate dictionaries simultaneously—e.g., a dictionary of device
functions, a dictionary of media content, and a dictionary of help items—
allowing for selection of any of the three types of items from the one partial-
word-completion based selection system. Id. at 43:33–38.
Similarly, the ’264 patent describes that it would be possible to
provide simultaneous access to multiple sources of data, content,
applications, etc., using the patent’s selection system to minimize the
number of different modes and selections the user needs to perform to access
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any item. Id. at 43:62–67. For example, in an embodiment, a user may be
able to use the list selection methodology described in the ’264 patent to
enter a contact name and view (or call, e-mail, etc.) the particular contact
that is selected. Id. at 44:22–25. Alternatively, but from the same level of
the interface that a contact was selected, the user may be able to input and
select a song from the music player’s dictionary to play that song, without
having to navigate to a specific contacts interface or a specific music
interface. Id. at 44:25–30.
C. Illustrative Claim
Of the challenged claims, claim 1 is independent. Claim 1 is
illustrative of the challenged claims and is reproduced below.
1. A method of selecting items from at least two collections
of items, said at least two collections of items being individually
indexed by a list of respective item identifiers, the method
comprising:
generating, on a device, an initial display including a plurality
of parts of said item identifiers for selection, wherein said
plurality of parts of said item identifiers include at least
one part of an item identifier corresponding to a first
collection of items and at least one part of an item
identifier corresponding to a second collection of items;
enabling selection of one of said plurality of parts of said item
identifiers;
identifying, based at least in part on the part of the item
identifier selected, which of the at least two collections of
items the selected part of the item identifier corresponds
to;
generating, on said device, a display of a further plurality of
parts of said item identifiers for selection in response to
selection of said one of said plurality of parts of said item
identifiers, wherein said further plurality of parts of item
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identifiers include at least one further part of said item
identifiers corresponding to the one or more collections of
items identified based on the selection of said one of said
plurality of parts of said item identifiers; and
enabling selection of one of said further plurality of parts of
said item identifiers in order to add to said selected one of
said plurality of parts of said item identifiers to build a
larger part or whole of said selected item identifier;
wherein generating said initial display comprises selecting
said one or more parts of said item identifiers to be
displayed based on a dynamic prioritization scheme that
adjusts priorities of said item identifiers based on the
number of times a particular item identifier from said list
of item identifiers was previously selected.
Ex. 1001, 56:19–55.
D. Prior Art and Declaration Evidence
Petitioner cites the following references in its challenge to
patentability:
U.S. Patent Application Pub. No. 2002/0113825 A1, published
Aug. 22, 2002 (Ex. 1005, “Perlman”);
U.S. Patent No. 7,152,213 B2, issued Dec. 19, 2006 (Ex. 1006, “Pu”);
U.S. Patent No. 6,593,913 B1, issued July 15, 2003 (Ex. 1007,
“Krohn”); and
U.S. Patent Application Pub. No. 2004/0021691 A1, published Feb. 5,
2004 (Ex. 1011, “Dostie”).
Petitioner supports its challenge with a declaration from Clifton
Forlines, Ph.D. (Ex. 1003, “Forlines Declaration”). Patent Owner has
submitted a declaration from Ravin Balakrishnan, Ph.D. (Ex. 2003,
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“Balakrishnan Declaration”) in support of Patent Owner’s Preliminary
Response.
E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 5).
Claim(s) Challenged 35 U.S.C. § References
1–8, 10–12, 15, 16 103(a)1 Perlman, Dostie
9 103(a) Perlman, Dostie, Krohn
13, 14, 17, 18 103(a) Perlman, Dostie, Pu
1–6, 8, 10–18 103(a) Pu, Dostie
7 103(a) Pu, Dostie, Perlman
9 103(a) Pu, Dostie, Krohn
1–6, 8–18 103(a) Krohn, Dostie
7 103(a) Krohn, Dostie, Perlman
III. ANALYSIS
A. Level of Ordinary Skill in the Art
We begin our analysis by addressing the level of ordinary skill in the
art. Citing testimony from Dr. Forlines, Petitioner asserts one of ordinary
skill in the art at the time of the invention would have had “at least an
undergraduate degree in electrical engineering, computer science, or physics

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
’264 patent has an effective filing date prior to the effective date of the
applicable AIA amendment, we refer to the pre-AIA version of § 103.
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(or a related field, such as computer engineering, human-computer
interaction, or industrial design) and 2–3 years of work experience with
input interfaces to electronic devices.” Pet. 10–11 (citing Ex. 1003 ¶¶ 14–
20). Citing the Balakrishnan Declaration, Patent Owner asserts the same.
Prelim. Resp. 43 (citing Ex. 2003 ¶ 28).
For purposes of this decision, we adopt Petitioner’s and Patent
Owner’s identical formulation because it is consistent with the level of
ordinary skill in the art reflected by the ’264 patent and the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
B. Claim Construction
In an inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b),
following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying such
standard, claim terms are generally given their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art, at
the time of the invention and in the context of the entire patent disclosure.
Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
claim limitation, we look principally to the intrinsic evidence of record,
examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17).
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Petitioner asserts that “no claim terms require construction for the
resolution of this Petition.” Pet. 12 (citing Ex. 1003 ¶¶ 80–81 & n.5).
Patent Owner asserts that Petitioner relies on an implicit construction
of the term “two collections of items” recited in claim 1 to “encompass two
sets of item identifiers that merely begin with a different letter.” Prelim.
Resp. 43–44. Patent Owner argues such a construction would be incorrect in
view of the prosecution history of the ’264 patent.
For the reasons discussed below, we need not expressly construe this
term or any other claim term for purposes of the Decision. See Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding
that only terms that are in controversy need to be construed, and “only to the
extent necessary to resolve the controversy”); see also Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
2017) (applying Vivid Techs. in the context of an inter partes review).
C. Petitioner’s Obviousness Challenges
1. Relevant Principles of Law
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which the subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
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of skill in the art; and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. An obviousness
determination requires finding “both ‘that a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted);
see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important
to identify a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does”). Further, an assertion of obviousness “cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
articulation[] of motivation to combine”; “instead, the finding must be
supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
burden of proving obviousness, a petitioner cannot employ mere conclusory
statements. The petitioner must instead articulate specific reasoning, based
on evidence of record, to support the legal conclusion of obviousness.”).
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We analyze Petitioner’s asserted grounds based on obviousness with
the principles identified above in mind.
2. Scope and Content of the Prior Art
a. Perlman (Ex. 1005)
Perlman discloses an apparatus and method for entering characters
and selecting data using a remote control device. See Ex. 1005 ¶ 2.
Figures 1b and 2 of Perlman are reproduced below:

Figure 1b depicts a remote control device and Figure 2 depicts a graphical
user interface (GUI). See id. ¶¶ 9–10.
Remote control device 100 includes a group of directional and
functional buttons 101 arranged in a “star” pattern. See id. ¶ 14.
Buttons 101 are mapped to characters displayed on computer display 105,
and may also include “more” button 103, “back” button 104, and “select”
button 102a. See id. ¶¶ 14–15, 17–18. In Figure 2, computer display 105
includes character-mapped buttons 110, database list 120, and textbox 130.
See id. ¶ 17. “[D]atabase list is a list of available multimedia content.
However, the underlying principles of the invention are not limited to any
particular type of database.” Id. Perlman also discloses additional types of
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content databases, such as television program content (see id. ¶ 4),
multimedia programs/files (see id. ¶ 17), and MP3 music titles (see id. at
Figs. 7–8). Before a character has been selected, the characters mapped to
buttons 101, 110 correspond to the most common first letters of words in
database list 120. See id. ¶ 17.
Figures 3 and 4 of Perlman are reproduced below:

Figures 3 and 4 show data entry using the graphical interface. See id. ¶ 11.
As shown in Figure 3, once the user selects a first character, the
selected character will be displayed in text box 120, and a new set of
characters are mapped to the buttons corresponding to the most common
second letters of words in the database list. See id. ¶¶ 17, 23, 25–26. “As
the user selects letters via the displayed character-mapped buttons 110, the
user’s letter selections will appear in a text box 130, and the database list
120 will change to reflect the user’s selections.” Id. ¶ 17. As the user
continues to select characters, only the words in the database list which
begin with the selected characters will be displayed. If the user presses
“select,” the first entry in the database list will be highlighted, the star
display of characters will disappear, and the user may navigate through the
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remaining entries in the database list using up/down buttons. See id. ¶ 25.
Figure 4 shows the user selected ‘A’ from the buttons displayed in
Figure 3 by displaying ‘A’ next to the previously selected ‘B’ in
textbox 120. See id. ¶ 26. Figure 4 also shows that the database list has
changed and the letters ‘N’ and ‘S’ are mapped to the buttons. See id.
b. Pu (Ex. 1006)
Pu describes a “user interface for data input . . . through a data entry
means such as a shuttle control system.” Ex. 1006, Abstract. A shuttle
control system can be “implemented as a single joystick-like central key that
can be pivoted in an up, down, right or left direction.” Id. at 6:27–29. “The
data that is entered is selected from a predefined list” and that “list is
presented to the user in an arrangement that statistically reduces the number
of keystrokes required for data entry.” Id. at 2:49–52.
The presentation of the data is the result of determining the relative
frequency of each valid selection in the predefined list and presenting those
valid selections with the highest frequency in a position that minimizes the
required keystrokes. See id. at 2:53–57. The predefined list is stored in a
database that is local or remote to the computer. See id. at 5:11–25. In one
example, a database comprises a predefined list of all cities within California
and Nevada, in another example, the predefined list may comprise all words
defined for a particular language––an entire language dictionary. See id. at
5:11–17, 5:39–42, 5:47–50, 13:11–13.
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Figure 2 of Pu is reproduced below.

Figure 2 depicts two predefined lists in tabular format. See id. at 3:14–16,
5:57–59. Table 102 presents an alphabetically ordered predefined list of
cities in California and Nevada, where the entries in the list are collapsed
according to the first letter in the city name. See id. at 5:59–62. The
frequency for each letter in the alphabet is also presented. See id. at 5:62.
For example, there are 35 cities that begin with “A,” and 44 cities that begin
with “B.” See id. at 5:64–67. Table 104 presents the same list ordered by
frequency with the most commonly used first letters shown at the top of the
table and the least commonly used letters first letters shown at the bottom,
such as Q and X which have zero list entries. See id. at 6:1–9.
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Figure 3A of Pu is reproduced below.

Figure 3A depicts an example selection list arrangement. See id. at 3:17–19,
6:49–51. Input control system 106 comprises display area 108 and a
selection list 110. See id. at 6:51–52.
In this example, the application program is expecting the user to input
an item for the predefined list of city names. See id. at 6:12–15. Display
area 108 presents the selections made from selection list 110. See id. at
6:53–54. Selection list 110 contains only valid choices, and for this
example, Q and X do not appear in selection list 110. See id. at 6:62–66.
Referring back to the tables of Figure 2, the letters that are most frequently
used appear at the beginning of selection list 110, so that it statistically
decreases the number of data entry actions to select the desired letter. See
id. at 6:66–7:15.
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Figure 3C of Pu is reproduced below.

Figure 3C shows an exemplary “selection list arrangement” that uses “a
four-direction shuttle control system . . . as the data entry mechanism.” Id.
at 7:59–65.
As shown in Figure 3C, the “letter S appears in the middle of the
arrangement in selection list 114.” Id. at 7:65–66. Other “letters appear up,
down, right, and left, respectively,” e.g., ‘C,’ ‘L,’ ‘M,’ and ‘P.’ Id. at 8:1–3.
Further, to select the up, down, right, or left letters, the user can move a
cursor in the corresponding direction by pressing the shuttle key in the
appropriate direction. See id. at 6:54–61.
Furthermore, Pu describes that the letter options presented in the
selection list options correspond to entries in a database. Id. at 19:54–55;
see id. at 13:16–17. For example, “where the device is expecting textual
input from a user in the form of a name of a particular city within the states
of California or Nevada,” the device “has access to a database comprising a
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predefined list of all cities within those two states.” Id. at 5:13–17. In that
way, the letter options in the selection list correspond to possible database
entries. For example, the letter ‘S’ may correspond to database entry
“SAN_DIEGO.” See id. at 8:15–21, 10:29–36. As the user selects options,
e.g., ‘S,’ then ‘A,’ then ‘N,’ etc., the displayed selection list is respectively
updated with letter options corresponding to possible database entries. See
id. at 8:28–65, Fig. 4C. The user then continues to select letter options until,
ultimately, a database entry is selected. See id. at 9:45–10:36.
c. Krohn (Ex. 1007)
Krohn describes an input technique “for selecting a character with a
user input device” on an electronic device. Ex. 1007, Abstract. In
particular, Krohn’s input technique displays selections “on a display device
in a pattern corresponding to a pattern of a plurality of buttons of a user
input device.” Id. at 1:56–61. Figure 1 of Krohn is reproduced below.

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Figure 1 of Krohn shows a block diagram of a character selection system.
Id. at 2:19–20. As shown in Figure 1, “display device 110 presents an on-
screen image of four characters (J, P, G, and R) arranged in a diamond
pattern.” Id. at 3:44–46. Further, that diamond pattern “corresponds to the
diamond pattern of the four buttons 132, 134, 136, 138 on the user input
device 120.” Id. at 3:46–48. Upon “actuation of one of the plurality of
buttons 132, 134, 136, 138,” a corresponding character is selected, i.e.,
“topmost character (J) in response to actuation of button 132, the rightmost
character (P) in response to actuation of button 134, the bottommost
character (G) in response to actuation of button 136, and the leftmost
character (R) in response to actuation of button 138.” Id. at 3:48–57.
Further, the “selected character can optionally be displayed in a character
entry field 140 on the display device 110.” Id. at 3:57–59. Still further,
“[i]n addition to the plurality of buttons 132, 134, 136, 138 used to select a
displayed character, the user input device 120 can also comprise additional
user interface elements such as joysticks 102, 104 and additional buttons
106.” Id. at 2:65–3:5.
Additionally, such a process “can be repeated for several characters to
allow the user to enter a series of characters, or a word.” Id. at 4:9–11. That
is, the technique “presents a second plurality of characters to the user for
selection after the character from the first plurality of characters has been
selected.” Id. at 4:14–16. For example, “the character selection method is
used to allow a user to enter one or more predetermined words (words that
are known to the processor 100).” Id. at 4:37–39. In the case that “the
predetermined word is HELLO and the user has selected H, E will be one of
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the characters in the second plurality of characters presented to the user for
selection.” Id. at 4:44–47.
Krohn describes that this technique can be used in a computer game in
which the user enters an answer in response to a question. Id. at 4:47–49.
According to Krohn, the answer entered by the user can be a predetermined
correct answer, a predetermined incorrect/wrong answer, or a random
answer. Id. at 4:49–51. Krohn describes that the character selection system
initially attempts to display the first characters of the correct and incorrect
answers on one of the four circles displayed on the screen in a process called
“populating circles.” Id. at 4:64–5:3. If there are not enough unique first
characters from the correct and incorrect answers to fill each of the four
circles, the system populates the empty circle or circles with random
characters that are not already used. Id. at 5:9–14. After all four circles
have been populated, the processor waits for user input. Id. at 5:16–17.
When the user selects the desired character by actuating the corresponding
button of the input device, the system populates the circles with a second
plurality of characters, depending on whether selected character is a
character from the correct answer, the incorrect answer, or a random
character. Id. at 5:19–45. Krohn describes in detail a lengthy if-then-else
and rule-based branching process that successively displays the next set of
characters depending on the user selection until the game ends. Id. at 5:19–
6:56.
d. Dostie (Ex. 1011)
Dostie discloses a method and system for entering data in a personal
computing device. See Ex. 1011 ¶¶ 1, 6. Dostie discloses that when a user
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begins entering a word or character sequence using an input device, the
entered character is added to the trailing end of the partial text entry and the
data entry system begins using the partial text entry to search a dictionary for
completion candidates that begin with the partial text entry. See id. ¶¶ 9, 55,
82. The dictionary contains completion candidates with preference or
weight values for ranking completion candidates relative to each other. See
id. ¶¶ 9, 55, 85. Each completion candidate stored in the dictionary
represents a word, phrase, abbreviation, phone number, formula, or another
character sequence. See id. ¶ 86.
Figure 4 of Dostie is reproduced below.

Figure 4 depicts a tree structure for the dictionary. See id. ¶ 26.
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Dictionary 20 is organized in a tree structure 21 containing a plurality
of nodes, with completion candidates or characters stored in nodes 23 of tree
structure 21. See id. ¶ 88. A completion candidate is represented by a
number of nodes with each node pointing to a child node containing the next
character in the completion candidate. See id. The tree structure 21 is
defined by a data structure that has fields containing the following
information: (1) a character for at least one completion candidate; (2) a
preference of weight value associated with the completion candidate that the
current node forms a part; (3) an end-point flag indicating whether the
current node ends a completion candidate; (4) a shared flag indicated
whether the current node is shared by multiple completion candidates; and
(5) a child-list representing a list of nodes which directly follow the current
node. See id. ¶¶ 91–96. The information contained in the data structure
provides the basis for using tree structure 21 to rapidly predict potential
completion candidates. See id. ¶ 97. The data structure provides a
mechanism for supporting character prediction and a rapid navigation
system. See id.
3. Asserted Obviousness over Perlman and Dostie
In this asserted ground of obviousness, Petitioner contends that
claims 1–8, 10–12, 15, and 16 are unpatentable under 35 U.S.C. § 103(a)
over the combination of Perlman and Dostie. Pet. 23–40. For the reasons
discussed below, based on the record presented, we determine that Petitioner
does not demonstrate a reasonable likelihood of prevailing in showing that
the subject matter of claims 1–8, 10–12, 15, and 16 would have been
obvious over Perlman and Dostie.
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a. Claim 1
Claim 1 recites “generating, on a device, an initial display including a
plurality of parts of said item identifiers for selection, wherein said plurality
of parts of said item identifiers include at least one part of an item identifier
corresponding to a first collection of items and at least one part of an item
identifier corresponding to a second collection of items.” Ex. 1001, 56:23–
29. Petitioner identifies this recitation as limitation [1A]. Pet. 25.
Petitioner asserts that Perlman teaches limitation [1A]. See id. at 25–
26. Petitioner’s assertion is based on Perlman’s disclosure in Figures 2–8 of
a graphical user interface (GUI) with character-mapped buttons 110 in a
“star” configuration corresponding to the same star configuration on a
remote control input device. See id. at 25 (reproducing Ex. 1005, Fig. 2;
citing Ex. 1005 ¶¶ 14, 16; Ex. 1003 ¶¶ 549–550). According to Petitioner,
“[t]he GUI includes an initial display with one or more parts of item
identifiers (e.g., the letters shown in area 110) for selection by a user.” Id.
Petitioner further points out that the letters shown in Figure 2 correspond to
“the first letter of available multimedia content (each content item from a
collection starting with a different first letter), letters or words previously
transmitted to buddies or from a built-in dictionary, or a combination of each
of the aforementioned parts of item identifiers.” Id. at 26 (citing Ex. 1003
¶ 550). Petitioner does not rely on the disclosures in Dostie for teaching
limitation [1A]. See id. at 25–26.
Based on Petitioner’s arguments and cited supporting evidence, we
understand Petitioner’s position to be that Perlman discloses a first
collection of items and a second collection of items based on Perlman’s
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disclosure of different types of content collections that include different
collection of items comprising the entries in that particular collection. See
id. at 26. Petitioner, however, does not explain adequately how Perlman’s
display comprises a part of an item identifier (i.e., a letter or letters displayed
in the star configuration) corresponding to a first collection of items (or
items in a first collection) and a part of an item identifier (i.e., a letter or
letters displayed in the star configuration) corresponding to a second
collection of items (or items in a second collection). As set forth above,
claim 1 requires displaying “at least one part of an item identifier
corresponding to a first collection of items and at least one part of an item
identifier corresponding to a second collection of items.” Perlman, on the
other hand, discloses the display of characters mapped to the buttons (as
shown in Figure 2) that correspond to the most common first letters of words
in the database list, and once the user selects a first character (as shown in
Figure 3), a display of a new set of characters mapped to the buttons that
correspond to the most common second letters of words in the same
database list. See Ex. 1005 ¶¶ 17, 23. Perlman is silent regarding a display
comprising characters that correspond to a first collection of items of a
particular collection and characters that correspond to a second collection of
items of a different particular collection. For example, Perlman describes
that database list 120 shown in Figure 2 is “a list of available multimedia
content.” Id. ¶ 17. There is no disclosure in Perlman of displaying letters of
words in a particular database list (e.g., a list of available multimedia
content) and letters of words in another particular database list (e.g., a list of
words previously transmitted to buddies).
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In a footnote to its discussion of the preamble of claim 1, Petitioner
contends:
“Collections” of items may also constitute all the items in the
database list starting with a particular letter. Forlines Decl. ¶548
& n.14. For example, multimedia content beginning with the
part of item identifier ‘A’ would be one collection, while
multimedia content beginning with the part of item identifier ‘B’
would be another collection. Id. This arrangement is shown in
at least display 105 of Figure 2 of Perlman.
Pet. 24 n.5. We understand Petitioner’s footnote to argue, in the context of
Petitioner’s arguments that Perlman discloses “at least two collections of
items . . . being individually indexed by a list of respective item identifiers”
recited in the preamble, that a database of items (e.g., a database comprising
a set of content/titles) further includes collections (i.e., subsets) of items
based on the items having different first letters.
To the extent Petitioner’s footnote presents an argument about how
Petitioner is interpreting the term “collections” recited in the preamble,
Petitioner does not explain adequately how Perlman teaches limitation [1A]
under that interpretation. See id. at 25–26. To the extent Petitioner asserts
that Perlman teaches limitation [1A] based on its claim interpretation
argument presented in the footnote, Petitioner does not explain adequately
how Perlman teaches both the preamble and limitation [1A] under its
purported claim interpretation. Petitioner asserts that Perlman teaches “at
least two collections of items . . . being individually indexed by a list of
respective item identifiers,” as recited in the preamble, because Perlman’s
databases are “each . . . individually indexed by a list of respective item
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identifiers (i.e., the letters or words starting each database item).” Id. at 24
(underlined emphasis added).
If Perlman teaches the recited “two collections,” as Petitioner
contends, because Perlman describes different “collections” of items having
different first letters (e.g., a “collection” of movie titles beginning with the
letter ‘A’ and a different “collection” of movie titles beginning with the
letter ‘B’), Petitioner does not explain adequately how those “collections”
are “individually indexed” within each “collection” by their first letters (i.e.,
the letters ‘A’ or ‘B’), which are the same in all of the items in each
“collection.” Petitioner does not rely on the disclosures in Dostie for
teaching the preamble of claim 1, nor does Petitioner argue the preamble is
not limiting. Id. at 23–24. Thus, Petitioner does not explain adequately how
Perlman teaches both the preamble and limitation [1A].
Based on the record before us, Petitioner has not set forth sufficient
argument and supporting evidence to demonstrate a reasonable likelihood
that it would prevail in showing that the subject matter of claim 1 would
have been obvious over the combination of Perlman and Dostie.
b. Dependent Claims 2–8, 10–12, 15, and 16
Claims 2–8, 10–12, 15, and 16 depend directly or indirectly from
claim 1. Petitioner’s arguments and evidence presented with respect to these
dependent claims only address the additionally recited limitations of claims
2–8, 10–12, 15, and 16, and, therefore, do not remedy the deficiencies in
Petitioner’s analysis of claim 1 discussed above. See Pet. 33–39.
Accordingly, Petitioner does not demonstrate a reasonable likelihood of
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prevailing in showing that claims 2–8, 10–12, 15, and 16 are unpatentable
under § 103(a) over the combination of Perlman and Dostie.
4. Asserted Obviousness over Perlman and Dostie in further view of
Krohn or Pu
Petitioner asserts that claim 9 is unpatentable under § 103(a) over the
combination of Perlman, Dostie, and Krohn. Pet. 40–41. Petitioner also
contends that claims 13, 14, 17, and 18 are unpatentable under § 103(a) over
the combination of Perlman, Dostie, and Pu. Id. at 41–45.
Claims 9, 13, 14, 17, and 18 depend directly or indirectly from
claim 1. As applied by Petitioner, the teachings of Dostie, Krohn, and Pu do
not remedy the deficiencies of Perlman discussed in the preceding section
addressing claim 1. See id. at 40–45. Therefore, for the same reasons as
those addressing claim 1 in the preceding section and based on the record
before us, Petitioner has not established that there is a reasonable likelihood
it would prevail in showing that claim 9 is unpatentable over Perlman,
Dostie, and Krohn or that claims 13, 14, 17, and 18 are unpatentable over
Perlman, Dostie, and Pu.
5. Asserted Obviousness over Pu and Dostie
Petitioner contends that claims 1–6, 8, and 10–18 are unpatentable
under 35 U.S.C. § 103(a) over the combination of Pu and Dostie. Pet. 45–
62. For the reasons discussed below, based on the record presented, we
determine that Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that the subject matter of claims 1–6, 8, and 10–18
would have been obvious over Pu and Dostie.
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a. Claim 1
Petitioner asserts that Pu teaches “generating, on a device, an initial
display including a plurality of parts of said item identifiers for selection,
wherein said plurality of parts of said item identifiers include at least one
part of an item identifier corresponding to a first collection of items and at
least one part of an item identifier corresponding to a second collection of
items,” as recited in claim 1.2 See Pet. 47–48. Petitioner bases its assertion
on Pu’s disclosure in Figures 3A–3C of display area 108 and selection
list 110, where the selection list contains only valid choices based on letters
inputted so far and the arrangement of the letters most frequently used
appearing at the beginning of the selection list. See id. at 47 (reproducing
Ex. 1006, Fig. 3A; quoting Ex. 1006, 6:62–7:15; Ex. 1003 ¶¶ 591–592).
Petitioner asserts that “[t]he valid choices presented in the selection list are
parts of item identifiers including at least one part corresponding to a first
collection of items and at least one part corresponding to a second collection
of items. For example, the expected textual input could be a particular city
within the states of California or Nevada.” Id. at 48 (citing Ex. 1006, 5:11–
17). According to Petitioner, “[t]he item identifiers (i.e., names of the cities)
correspond to entries in a ‘database comprising a predefined list of all cities
within those two states.’” Id. (quoting Ex. 1006, 5:11–17). Petitioner
further explains that before the user enters any input, selection list 110
includes parts corresponding to all valid first letters of cities in the database.
See id. (citing Ex. 1006, 5:11–17, 12:42–13:23, Fig. 2). In doing so,

2 As noted above, Petitioner identifies this recitation as limitation [1A]. Pet.
25.
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Petitioner notes in parenthesis that Pu discusses “databases in data
warehouses used to store the predefined lists.” Id. (citing Ex. 1006, 12:42–
13:23). Petitioner does not rely on the disclosures in Dostie for teaching this
limitation. See id. at 47–48.
Based on Petitioner’s arguments and cited supporting evidence, we
understand Petitioner’s position to be that Pu teaches a first set of items
based on Pu’s disclosure of city names in a database and a second set of
items based on Pu’s disclosure of “databases in data warehouses used to
store the predefined lists.” See id. at 48. Petitioner, however, does not
explain adequately how Pu’s display comprises a part of an item identifier
(i.e., letters) corresponding to a first collection of items or entries in the city
name database and a part of an item identifier (i.e., letters) corresponding to
a second set of items or entries in the data warehouse database of predefined
lists. Instead, Pu discloses displaying a list of characters or letters
corresponding to a first set of items or entries in just one database, e.g., the
city name database. See Ex. 1006, 5:57–10:36, Figs. 2, 3A–3C, 4A–4C,
5A–5C, 6A–6C, 7A–7C, 8A–C, 9A–9C, 10.
In a footnote to its discussion of the preamble of claim 1, as applied to
Pu, Petitioner contends:
“Collections” of items may also constitute all the items in the
database list starting with a particular letter. Forlines Decl. ¶590
& n.16. For example, city names beginning with the part of item
identifier ‘A’ would be one collection, while city names
beginning with the part of item identifier ‘B’ would be another
collection. Id.
Pet. 46 n.8. We understand Petitioner’s footnote to argue, in the context of
Petitioner’s arguments that Pu discloses “at least two collections of items . . .
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being individually indexed by a list of respective item identifiers” recited in
the preamble, that a database of items (e.g., a database comprising a list of
city names) further includes collections (i.e., subsets) of items based on the
items having different first letters.
To the extent Petitioner’s footnote presents an argument about how
Petitioner is interpreting the term “collections” recited in the preamble,
Petitioner does not explain adequately how Pu teaches limitation [1A] under
that interpretation. See id. at 47–48. To the extent Petitioner asserts that Pu
teaches limitation [1A] based on its claim interpretation argument presented
in the footnote, Petitioner does not explain adequately how Pu teaches both
the preamble and limitation [1A] under its purported claim interpretation.
Petitioner asserts that Pu teaches “at least two collections of items . . . being
individually indexed by a list of respective item identifiers,” as recited in the
preamble, because Pu’s databases are “[e]ach . . . individually indexed by a
list of respective item identifiers (i.e., the letters or words starting each
database item).” Id. at 46–47 (underlined emphasis added). If Pu teaches
the recited “two collections,” as Petitioner contends, because Pu describes
different “collections” of items having different first letters (i.e., a collection
of city names beginning with the letter ‘A’ and a different collection of city
names beginning with the letter ‘B’), Petitioner does not explain adequately
how those “collections” are “individually indexed” within each “collection”
by their first letters (i.e., the letters ‘A’ or ‘B’), which are the same in all of
the items in each “collection.” Petitioner does not rely on the disclosures in
Dostie for teaching the preamble of claim 1, nor does Petitioner argue the
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preamble is not limiting. Id. at 23–24. Thus, Petitioner does not explain
sufficiently how Pu teaches both the preamble and limitation [1A].
Based on the record before us, Petitioner has not set forth sufficient
argument and supporting evidence to demonstrate a reasonable likelihood
that it would prevail in showing that the subject matter of claim 1 would
have been obvious over the combination of Pu and Dostie.
b. Dependent Claims 2–6, 8, and 10–18
Claims 2–6, 8, and 10–18 depend directly or indirectly from claim 1.
Petitioner’s arguments and evidence presented with respect to these
dependent claims only address the additionally recited limitations of claims
2–6, 8, and 10–18, and, therefore, do not remedy the deficiencies in
Petitioner’s analysis of claim 1 discussed above. See Pet. 52–59.
Accordingly, Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that claims 2–6, 8, and 10–18 are unpatentable under
§ 103(a) over the combination of Pu and Dostie.
6. Asserted Obviousness over Pu, Dostie in further view of
Perlman or Krohn
Petitioner asserts that claim 7 is unpatentable under § 103(a) over the
combination of Pu, Dostie, and Perlman. Pet. 60–61. Petitioner also
contends that claim 9 is unpatentable under § 103(a) over the combination of
Pu, Dostie, and Krohn. Pet. 61–62.
Claims 7 and 9 depend directly or indirectly from claim 1. As applied
by Petitioner, the teachings of Dostie, Perlman, and Krohn do not remedy
the deficiencies of Pu discussed in the preceding section addressing claim 1.
See id. at 60–62. Therefore, for the same reasons as those addressing
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claim 1 in the preceding section and based on the record before us, Petitioner
has not established that there is a reasonable likelihood it would prevail in
showing that claim 7 is unpatentable over Pu, Dostie, and Perlman or that
claim 9 is unpatentable over Pu, Dostie, and Krohn.
7. Asserted Obviousness over Krohn and Dostie
Petitioner contends that claims 1–6 and 8–18 are unpatentable under
35 U.S.C. § 103(a) over the combination of Krohn and Dostie. Pet. 62–78.
For the reasons discussed below, based on the record presented, we
determine that Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that the subject matter of claims 1–6 and 8–18 would
have been obvious over Krohn and Dostie.
a. Claim 1
Claim 1 recites “generating, on a device, an initial display including a
plurality of parts of said item identifiers for selection, wherein said plurality
of parts of said item identifiers include at least one part of an item identifier
corresponding to a first collection of items and at least one part of an item
identifier corresponding to a second collection of items.” Ex. 1001, 56:23–
29. Petitioner identifies this recitation as limitation [1A]. Pet. 25.
Petitioner asserts that Krohn teaches limitation [1A]. See Pet. 64–66.
Specifically, Petitioner asserts that Krohn discloses a display that presents an
on screen image of four characters J, P, G, and R arranged in a diamond
pattern that corresponds to the diamond pattern of a user input device. See
id. at 64–65 (reproducing Ex. 1007, Fig. 1; citing Ex. 1007, 3:38–59).
Petitioner asserts that the item identifiers correspond to predetermined words
known to the processor, including predetermined correct answers,
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predetermined incorrect/wrong answers, or a random answer. See id. at 65–
66 (reproducing Ex. 1007, Fig. 2; citing Ex. 1007, 4:26–54).
Based on Petitioner’s arguments and cited supporting evidence, we
understand Petitioner’s position to be that Krohn teaches an initial display of
an identifier for a first collection of items and an identifier for a second
collection of items based on Krohn’s disclosure of initial display of
characters corresponding to different types of answers, such as the
predetermined correct answers or the predetermined incorrect/wrong
answers. In other words, Petitioner maps Krohn’s set of predetermined
correct answers to the claimed first (or second) collection of items and
Krohn’s set of predetermined incorrect/wrong answers to the claimed second
(or first) collection of items. Based on Petitioner’s arguments and cited
supporting evidence, we understand Petitioner to rely on Krohn’s
embodiment describing an input technique used in a computer game to allow
the user to enter an answer in response to a question in a process called
“populating circles.” See Ex. 1007, 4:47–5:45. As described in Krohn, the
answer entered by the user can be a predetermined correct answer, a
predetermined incorrect/wrong answer, or a random answer. Id. at 4:49–51.
Krohn describes initially displaying the first characters of the correct and
incorrect answers (or a random character) on one of the four circles
displayed on the screen and, depending on the user selection, displaying a
second plurality of characters for the set of the predetermined correct
answers and the set of the predetermined incorrect/wrong answers (or a
random character). Id. at 4:64–5:45.
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Claim 1 recites “wherein generating said initial display comprises
selecting said one or more parts of said item identifiers to be displayed based
on a dynamic prioritization scheme that adjusts priorities of said item
identifiers based on the number of times a particular item identifier from
said list of item identifiers was previously selected.” Ex. 1001, 56:50–55.
Petitioner identifies this recitation as limitation [1F]. Pet. 31.
Petitioner contends that the combination of Krohn and Dostie renders
obvious limitation [1F]. See Pet. 71 (citing Ex. 1011 ¶¶ 208–215; Ex. 1003
¶ 633). In its proposed combination of Krohn and Dostie, Petitioner relies
on the “learning ability” of Dostie’s dictionary to adapt or modify the
rankings of completion candidates “dynamically” based on user input or user
preferences as the system is used over time. See id. (citing Ex. 1011 ¶¶ 208–
215). According to Petitioner, in Dostie, each time the user selects a
particular item identifier, “the preference values of the nodes involved are
incremented,” causing the system to prioritize dynamically previously
selected items. Id. (citing Ex. 1011 ¶ 209). Citing the testimony of
Dr. Forlines, Petitioner asserts that “[i]t would have been obvious to
incorporate Dostie’s dynamic prioritization scheme into Krohn so that the
predicted characters were more relevant to the user, making input even more
efficient.” Id. (citing Ex. 1003 ¶ 633).
As discussed above with respect to limitation [1A], Petitioner relies
on Krohn’s initial display of a character corresponding to the set of
predetermined correct answers and a character corresponding to the set of
predetermined incorrect/wrong answers to teach an initial display of an
identifier for a first collection of items and an identifier for a second
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collection of items. See Pet. 65 (citing Ex. 1007, 4:26–54). As described in
Krohn, the set of predetermined correct answers or the set of predetermined
incorrect/wrong answers include predetermined words made up of a fixed
set of letters, e.g., “Cadillac,” “Camry,” “Corolla,” “Ford,” and “Mercury.”
See Ex. 1007, 4:51–54. As discussed above, Krohn describes a process
called “populating circles” in a computer game that initially attempts to
display the first characters of the correct and incorrect answers on one of the
four circles displayed on the screen. Id. at 4:64–5:3. If there are not enough
unique first characters from the correct and incorrect answers to fill each of
the four circles, the system populates the empty circle or circles with random
characters that are not already used. Id. at 5:9–14. When the user selects the
desired character by actuating the corresponding button of the input device,
the system populates the circles with a second plurality of characters,
depending on whether selected character is a character from the correct
answer, the incorrect answer, or a random character. Id. at 5:19–45. Krohn
describes in detail a lengthy if-then-else (and rule-based) branching process
to determine the next set of characters to display from the predetermined
words in the set of predetermined correct answers and the set of
predetermined incorrect/wrong answers, depending on whether the user
selects a character from the correct answer, the incorrect answer, or a
random character. Id. at 5:19–6:56.
When addressing limitation [1F], Petitioner does not explain
adequately how it proposes to combine these teachings of Krohn (i.e., the
“populating circles” process) with the “learning ability” of Dostie’s
dictionary that adapts or modifies the rankings of completion candidates
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“dynamically” based on user input to prioritize dynamically previously
selected items. See Pet. 71. To begin with, Petitioner does not explain
adequately what “rankings” or priority would mean in the context of the
“populating circles” process of Krohn that successively displays characters
from the set of predetermined correct answers and the set of predetermined
incorrect/wrong answers depending on the user selection in a prescribed if-
then-else and rule-based process. See id. In addition, Petitioner does not
explain sufficiently how (or why) in the proposed combination of Krohn and
Dostie, the system would “prioritize dynamically” “previously selected
items,” which would be previously entered characters from Krohn’s
predetermined correct answers and predetermined incorrect/wrong answers
(or a random character), “[e]ach time the user selects a particular item
identifier,” i.e., a particular character from the set of predetermined correct
answers, the set of predetermined incorrect answers, or a random character.
See id. And Petitioner does not explain adequately how, in its proposed
combination of Krohn and Dostie, the learning algorithm of Dostie (which
adapts or modifies the rankings of completion candidates “dynamically”
based on user input to prioritize dynamically previously selected items (see
Ex. 1011 ¶¶ 208–215) would be combined with Krohn’s “populating circles”
algorithm, which employs a lengthy, prescribed if-then-else (and rule-based)
branching process to determine the next set of characters to display from the
set of predetermined correct answers and the set of predetermined
incorrect/wrong answers, depending on whether the user selects a character
from the correct answer, the incorrect answer, or a random character (see
Ex. 1007, 5:19–6:56).
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Petitioner also does not explain sufficiently why a person of ordinary
skill in the art would have been motivated to combine the teachings of
Krohn and Dostie to achieve the claimed invention. As discussed above,
Petitioner asserts that “[i]t would have been obvious to incorporate Dostie’s
dynamic prioritization scheme into Krohn so that the predicted characters
were more relevant to the user, making input even more efficient.” Pet. 71
(citing Ex. 1003 ¶ 633). Petitioner does not explain adequately how a
person of ordinary skill in the art would have made the proposed
combination of Krohn and Dostie so that characters corresponding to the set
of predetermined correct answers or the set of predetermined
incorrect/wrong answers would be “more relevant to the user, making input
even more efficient.” Cf. Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d
987, 994 (Fed. Cir. 2017) (“[T]he Board nowhere clearly explained, or cited
evidence showing, how the combination of the two references was supposed
to work. At least in this case, such a clear, evidence-supported account of
the contemplated workings of the combination is a prerequisite to adequately
explaining and supporting a conclusion that a relevant skilled artisan would
have been motivated to make the combination and reasonably expect success
in doing so.” (emphases added)).
According to the Federal Circuit,
The amount of explanation needed to meet the governing
legal standards—to enable judicial review and to avoid judicial
displacement of agency authority—necessarily depends on
context. A brief explanation may do all that is needed if, for
example, the technology is simple and familiar and the prior art
is clear in its language and easily understood. On the other hand,
complexity or obscurity of the technology or prior-art
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descriptions may well make more detailed explanations
necessary.
Id. (internal citation omitted). We find that this case falls into the latter
category. Given the level of ordinary skill proposed by Petitioner, the
complexity of Dostie’s learning algorithm (see Ex. 1011 ¶¶ 208–215) and
the complexity and relative inflexibility of Krohn’s “populating circles”
process that employs a prescribed if-then-else and rule-based algorithm (see
Ex. 1007, 4:47–6:56), it was incumbent on Petitioner to explain sufficiently
how Dostie’s learning algorithm would have been adapted and combined
with Krohn’s “populating circles” process to obtain the subject matter
recited in limitation [1F]. Because Petitioner has failed to do so, we
determine that Petitioner has not established sufficiently that a person of
ordinary skill in the art would have been motivated to combine the teachings
of Krohn and Dostie to achieve the claimed invention.
Petitioner also asserts that
It would have been obvious to incorporate Dostie’s various
collections of dictionaries (including multiple active
dictionaries), dynamic prioritization scheme, collection of
contacts, collection of selections from a menu, and various end-
user devices (such as mobile telephones and PDAs) into Krohn
for the same reasons described above in connection with
Perlman and Pu.
Pet. 78 (underlined emphasis added) (citing Ex. 1003 ¶ 650; Pet. §§ VIII.A.–
VIII.F.). But neither Petitioner nor Dr. Forlines explains adequately how the
reasons to combine Perlman and Dostie or the reasons to combine Pu and
Dostie stated in the Petition would apply to the specific combination of
Krohn and Dostie proposed by Petitioner. See id.; Ex. 1003 ¶ 650. We find
Petitioner’s articulation of the motivation to combine Krohn and Dostie to be
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conclusory, lacking specific, reasoned explanation why a person of ordinary
skill in the art would have been motivated to combine Krohn and Dostie in
the manner proposed by Petitioner to obtain the subject matter recited in
limitation [1F].
Petitioner also cites its entire discussion of six asserted grounds
presented in the Petition (i.e., all of Sections VIII.A.–VIII.F of the Petition),
which spans nearly 40 pages. See Pet. 78. We decline to cull much of the
Petition to ascertain whether Petitioner articulates specific reasoning, based
on evidence of record, why a person of ordinary skill in the art would have
been motivated to combine Krohn and Dostie in the manner proposed by
Petitioner.
Based on the record before us, Petitioner has not set forth sufficient
argument and supporting evidence to demonstrate a reasonable likelihood
that it would prevail in showing that the subject matter of claim 1 would
have been obvious over the combination of Krohn and Dostie.
b. Dependent Claims 2–6 and 8–18
Claims 2–6 and 8–18 depend directly or indirectly from claim 1.
Petitioner’s arguments and evidence presented with respect to these
dependent claims only address the additionally recited limitations of claims
2–6 and 8–18, and, therefore, do not remedy the deficiencies in Petitioner’s
analysis of claim 1 discussed above. See Pet. 71–77. Accordingly,
Petitioner does not demonstrate a reasonable likelihood of prevailing in
showing that claims 2–6 and 8–18 are unpatentable under § 103(a) over the
combination of Krohn and Dostie.
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8. Asserted Obviousness over Krohn and Dostie in further view of Perlman
Petitioner contends that claim 7 is unpatentable under § 103(a) over
the combination of Krohn, Dostie, and Perlman. Pet. 78. Claim 7 depends
from claim 1. Petitioner’s arguments and evidence presented with respect to
claim 7 only address the additionally recited limitation of claim 7, and,
therefore, do not remedy the deficiencies in Petitioner’s challenge to claim 1
based on Krohn and Dostie discussed above. See id. Therefore, for the
same reasons as those addressing claim 1 in the preceding section and based
on the record before us, Petitioner has not established that there is a
reasonable likelihood it would prevail in showing that claim 7 is
unpatentable over Krohn, Dostie, and Perlman.
D. Discretion under 35 U.S.C. §§ 314(a), 325(d)
Patent Owner argues that the Board should exercise discretion to deny
the Petition under 35 U.S.C. §§ 314(a) and 325(d). See Prelim. Resp. 14–42;
generally Sur-reply. Petitioner argues that the Board should not exercise its
discretion. See Pet. 79; generally Reply. Because we deny institution on the
merits of the proposed grounds of unpatentability of claims 1–18, we need
not address arguments regarding the exercise of discretion under 35 U.S.C.
§§ 314(a) and 325(d).
IV. CONCLUSION
Based on the arguments and evidence presented in the Petition, we
conclude Petitioner has not demonstrated a reasonable likelihood that
Petitioner would prevail in showing at least one of the challenged claims of
the ’264 patent is unpatentable based on any asserted ground of
IPR2020-00736
Patent 9,697,264 B2

40
unpatentability. Therefore, we do not institute an inter partes review with
respect to any of the challenged claims of the ’264 patent.

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for an inter partes review is
denied as to all challenged claims of the ’264 patent, and no trial is
instituted.

IPR2020-00736
Patent 9,697,264 B2

41
PETITIONER:

Kevin P.B. Johnson
Brian Mack
Marissa Ducca
John McKee
James Glass
QUINN EMANUEL URQUHART & SULLIVAN LLP
kevinjohnson@quinnemanuel.com
brianmack@quinnemanuel.com
marissaducca@quinnemanuel.com
johnmckee@quinnemanuel.com
jimglass@quinnemanuel.com

PATENT OWNER:

Lewis Hudnell, III
HUDNELL LAW GROUP P.C.
lewis@hudnellaw.com

Perry Goldberg
Ted Sichelman
PROGRESS LLP
goldberg@progressllp.com
sichelman@progressllp.com