PTAB

IPR2014-00438

SkyHawke Technologies LLC v. L&H Concepts LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Handheld Electronic Golf Scorecard
  • Brief Description: The ’566 patent describes a handheld electronic device for scoring golf. The core inventive concept is purported to be its user interface, which replaces traditional alphanumeric keys with a limited set of screen-dependent keys—specifically "entry," "tab," and "scroll" keys—to navigate through a defined sequence of information screens for data entry.

3. Grounds for Unpatentability

Ground 1: Obviousness over Palmer and Vanden Heuvel - Claims 1-3 are obvious over Palmer in view of Vanden Heuvel.

  • Prior Art Relied Upon: Palmer (International Publication No. WO 92/04080) and Vanden Heuvel (Patent 5,426,422).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Palmer disclosed the primary claimed subject matter: a handheld electronic device for recording and reporting golf information, including a memory, display, and keypad for data input. However, Palmer used a more conventional keypad. Vanden Heuvel, a reference for a handheld selective call receiver, disclosed the specific user interface allegedly missing from Palmer: a system using screen-dependent data input fields navigated by a limited set of keys that function as entry, bi-directional tab, and bi-directional scroll keys. Petitioner contended that implementing Vanden Heuvel’s well-understood input method into Palmer’s golf device would render the claims of the ’566 patent obvious.
    • Motivation to Combine: A POSITA would combine these references as a simple substitution of one known input method (Vanden Heuvel's tab/scroll keys) for another (Palmer's keypad) to achieve the predictable result of a more user-friendly golf scorecard. The motivation was to simplify the device’s design, increase the display size by removing a full keypad, and make the device easier to use on a golf course.
    • Expectation of Success: A POSITA would have a high expectation of success, as combining a known user interface with a known electronic device was a routine design task that would yield predictable improvements in usability.

Ground 2: Obviousness over Gaming References - Claims 1-5, 13, and 17 are obvious over Game Boy in view of Ultra Golf and PGA Tour Golf.

  • Prior Art Relied Upon: Game Boy (The Nintendo® Game Boy® Compact Video Game System Owner’s Manual), Ultra Golf (The Ultra Golf Instruction Booklet), and PGA Tour Golf (EA SPORTS Presents PGA Tour Golf Instruction Booklet).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted this combination from the highly relevant field of handheld gaming renders all challenged claims obvious. The Game Boy manual disclosed the self-contained handheld computer unit with a memory, power source, display, and key-based input (Up, Down, Left, Right, A, B, START, SELECT keys). The Ultra Golf and PGA Tour Golf game manuals disclosed the specific software implementation for golf, including pre-game setup screens (selecting players, courses, clubs), game-interactive screens (scorecards, shot trackers), and post-game statistics screens. These games utilized the Game Boy’s key-based system for screen-dependent data entry, such as cycling through letters to enter a player's name or selecting options from a menu, which directly maps to the claimed keying means.
    • Motivation to Combine: A POSITA would have been motivated to combine the features of PGA Tour Golf (a sophisticated golf simulation) with a game like Ultra Golf on the Game Boy platform as a simple matter of routine programming and design choice. Both references are from the same technical field and describe golf simulation games, making their features readily interchangeable and combinable to create a more feature-rich game that would predictably incorporate all elements of the challenged claims.
    • Expectation of Success: The combination involved applying known software features from one golf game to another on a standard, well-understood hardware platform (the Game Boy). This was a routine programming task with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges that built upon the Palmer and Vanden Heuvel combination by adding Osamu (UK Patent Application No. 2,249,202) to teach storing different levels of game play detail, and TurboTax (User Manual) to teach a pre-game mode selection screen.

4. Key Claim Construction Positions

  • Petitioner argued that the numerous means-plus-function limitations in the challenged claims (e.g., "key entry means," "field select key means") were governed by 35 U.S.C. § 112(f).
  • A central contention was that the ’566 patent specification failed to disclose any specific algorithm or structure corresponding to these functions. It only provided a generic reference to a "microprocessor" and undisclosed "algorithms."
  • Therefore, Petitioner argued that any general-purpose processor from the prior art programmed to perform the claimed functions (such as those in Vanden Heuvel or the Game Boy) would meet the structural requirements of the claims, as the patent itself provided no specialized structure to distinguish over them.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 13, and 17 of Patent 5,779,566 as unpatentable.