PTAB

IPR2017-02065

Sony Interactive Entertainment LLC v. Genuine Enabling Technology LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus for Combining User Interface and Other Signals
  • Brief Description: The ’730 patent discloses a user input device, such as a keyboard or mouse, that connects to a computer via a single communication link. The device is also configured to receive input signals from an additional input/output (I/O) device (e.g., a microphone) and combine both data streams for transmission over that same link, thereby conserving computer resources.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 16, 18, 21-23, and 25 under 35 U.S.C. §102 over Kim

  • Prior Art Relied Upon: Kim (Patent 5,892,503).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kim, which was not considered during prosecution, discloses every limitation of the challenged claims. Kim describes a multimedia console keyboard that functions as a user input device linked to a host computer. The keyboard receives additional input signals from integrated or external devices like microphones or a mouse via dedicated ports. Kim’s analog-digital controller serves as the claimed "converter" by digitizing audio signals. Crucially, Kim’s application-specific integrated circuit (ASIC) performs the function of the claimed "framer" by merging the keyboard data stream with the audio data stream and encoding them into a combined data stream for transfer to the computer over multiple signal lines (KDATAR for keyboard, ADOUT for audio), which corresponds to the multi-signal embodiment of the ’730 patent.

Ground 2: Obviousness of Claims 16, 18, 21-23, and 25 under 35 U.S.C. §103 over Kim and Ure

  • Prior Art Relied Upon: Kim (Patent 5,892,503) and Ure (International Publication No. WO 97/50027).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that to the extent Kim does not explicitly teach a specific communication protocol embodiment, Ure remedies the deficiency. Ure discloses a keyboard that incorporates peripheral devices and improves the keyboard connection by applying a "high-speed multiplexed serial connection protocol," explicitly naming Universal Serial Bus (USB) as an example. The combination of Kim’s multimedia keyboard with Ure’s teaching of using USB for combined data streams would result in the claimed invention.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Kim and Ure to improve the functionality of Kim’s keyboard. Kim explicitly stated that "conventional serial communication protocols can be used," motivating a POSITA to look to known, improved protocols like the USB standard taught by Ure for its universal applicability and efficiency. Ure’s teaching of merging and formatting keyboard and peripheral data for USB transmission is directly relevant to the framer limitations.
    • Expectation of Success: A POSITA would have had a high expectation of success, as incorporating the well-established USB protocol into Kim’s keyboard system would have used known methods to achieve the predictable result of a more efficient, standardized connection.

Ground 3: Obviousness of Claims 16, 21-25 under §103 over Gorniak and Rosenberg

  • Prior Art Relied Upon: Gorniak (Patent 4,961,138) and Rosenberg (Patent 5,576,727).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative challenge based on different primary art. Gorniak taught a computer mouse that combines conventional directional and button inputs with an additional input from a pressure-sensitive device. Gorniak’s microprocessor merges these data streams and transmits them as a combined data stream over a serial port, thus teaching the core invention. Rosenberg taught a cursor-control device (e.g., a stylus) that handles additional inputs from external peripheral devices (like a foot pedal) and also receives output signals from the computer to provide force feedback.
    • Motivation to Combine: A POSITA would combine Rosenberg with Gorniak to add peripheral input capabilities and force feedback output, thereby improving the usability of Gorniak's mouse. For example, the pressure-sensitive input of Gorniak could be implemented in a peripheral foot pedal as taught by Rosenberg. Adding force feedback, also from Rosenberg, would provide tactile confirmation to the user (e.g., that a threshold was reached), a known way to improve user experience.
    • Expectation of Success: Combining these known features—peripheral inputs and force feedback—with Gorniak’s device would have involved the straightforward application of conventional components and protocols (like RS-232, taught by Rosenberg) and yielded the predictable result of an enhanced input device.

  • Additional Grounds: Petitioner asserted obviousness challenges against claim 24 based on the combinations of Kim/Ure/Drumm and Kim/Okada/Drumm, where Drumm (Patent 5,426,450) was used to teach a headset with integrated audio input and output. Petitioner also asserted an alternative obviousness ground for claims 16, 18, 21-23, and 25 over Kim and Okada (Patent 5,287,120) to address a potentially narrower claim construction limited to a single-signal, packetized data stream embodiment.

4. Key Claim Construction Positions

  • Petitioner argued that the term "framer" in independent claims 16 and 21 should be construed as "a component that merges and formats data from a user input device and from an additional I/O device into one or more signals, and coordinates the timing of the data for transmission together over a communication link using USB, RS-232, or similar protocols." This construction was central to the petition, as it established that the functionality could be performed by general-purpose components like a microprocessor or an ASIC, which were present in the prior art, rather than requiring a specific, dedicated "framer" component.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 16, 18, and 21-25 of the ’730 patent as unpatentable.