Final Written Decision Finding All Challenged Claims Unpatentable as Obvious


Takeaway: Upon determining the level of ordinary skill in the art, the Board concluded that the challenged claims were unpatentable by a preponderance of the evidence.

In its Final Written Decision, the Board held that claims 8-11, 14, and 18 of the ’566 patent are unpatentable. The ’566 patent relates to a computer with a display for user interaction before, during, and after a game.

The Board began its analysis by determining the level of ordinary skill in the art in 1993. The Board examined the testimony of Petitioner’s witness Dr. Gutwin, who testified that a person of ordinary skill in the art was aware of and capable of designing key-based interactive systems using known interface techniques. Patent Owner’s witness, Mr. Ball, suggested that the field of the invention is more appropriately narrowed to handheld sports, particularly golf, recording devices. The Board determined that neither witness was persuasive and adopted the specification’s description of the state of the art instead. The Board concluded that the field is portable computing devices for the entry, organization, and analysis of data, including sports data. The Board also determined that an ordinary artisan would have at least some experience working in the field designing or building portable computing devices.

Turning to claim construction, the Board agreed with Petitioner that the preambles of the claims were non-limiting. Patent Owner merely stated that it accepts the claim constructions set forth by the Board in the Institution Decision. The Board also construed “pre-game” to mean any time prior to a game. The Board construed “game-interactive” to mean during a game, and “post-game” to mean after a game.

Claims 8-11, 14, and 18 were alleged as unpatentable over Palmer, Osamu, and Vanden Heuvel. Dr. Gutwin testified that the combination of the references would yield predictable results. Dr. Gutwin also testified that including the shot tracker of Osamu to enhance the golfer’s ability to learn from past performance. Patent Owner argued, based on testimony of Mr. Ball, that Petitioner failed to explain adequately why an ordinary artisan would modify Palmer as asserted by Petitioner. The Board agreed with Patent Owner that an ordinary artisan would have combined the references to increase the display size. However, the Board agreed with Petitioner that replacement of alphanumeric character keys with a set of tab and scroll keys was a simple design choice and widely applied by skilled artisans before the priority date of the ’566 patent. Patent Owner argued that Vanden Heuvel and Palmer are non-analogous art. Patent Owner asserted that the field of the invention is strictly the recording and reporting of sports information. Petitioner argues that the field is human computer interaction. While the Board felt Petitioner’s description of the field was too broad, it determined that Vanden Heuvel and Palmer are analogous art.

Regarding the substantive examination of the claims, Patent Owner argued that Palmer and Osamu do not describe “pre-game” information screens and that each screen is “game-interactive.” The Board disagreed and found sufficient support for finding that Palmer describes entering and recalling data when the user wishes to play a golf course whose data are stored. The Board also found support for disclosure of different game-interactive screens by Palmer. Patent Owner next asserts that Palmer does not describe displaying pre-game screens in a sequential fashion and that Vanden Heuvel does not describe a game screen. Petitioner argued, and the Board agreed, that there is a sequential display of screens during the natural progression of using the device during a round of Golf. The Board concluded that Palmer and Osamu each describe the use of different screens during the play of the game which would necessarily be selected by the user depending on the function desired. Thus, the Board determined that claim 8 is unpatentable. The Board reached the same conclusion on similar grounds for the other challenged claims.

Patent Owner requested the Board to afford no weight to the testimony of Dr. Gutwin. Patent Owner asserted that Dr. Gutwin contradicted his Declaration multiple times during his deposition. The Board was unconvinced that Dr. Gutwin exhibited any “condemning demeanor or evasion.” The Board concluded that Dr. Gutwin was being “cautious, not necessarily evasive” in his responses. Thus, the Board declined Patent Owner’s invitation to ignore Dr. Gutwin’s testimony.

Paper 31: Final Written Decision
Dated: July 10, 2015
Patent 5,779,566
Before: James T. Moore, Patrick R. Scanlon, and Mitchell G. Weatherly
Written by: Moore
Related proceedings: L&H Concepts, LLC v. SkyHawke Technologies, LLC, No. 2:13-cv-00199-JRG (E.D. Tex.); ex parte reexamination 90/008,817; IPR2014-00438