Unified Patents Inc. v. 602531 British Columbia Ltd. and WordLogic Corporation, IPR2017-01124 (PTAB Jul. 28, 2017)

IPR2017-01856
U.S. Patent 7,681,124
Filed on behalf of Unified Patents Inc.

By: Jason R. Mudd, Reg. No. 57,700
Eric A. Buresh, Reg. No. 50,394
jason.mudd@eriseip.com
eric.buresh@eriseip.com
ERISE IP, P.A.
6201 College Blvd., Suite 300
Overland Park, Kansas 66211
Telephone: (913) 777-5600
Jonathan Stroud, Reg. No. 72,518 Ashraf A. Fawzy, Reg. No. 67,914
jonathan@unifiedpatents.com afawzy@unifiedpatents.com
Unified Patents Inc. Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10 1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009 Washington, D.C. 20009
Telephone: (202) 805-8931 Telephone: (202) 871-0110
UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________
UNIFIED PATENTS INC.

Petitioner
v.
602531 BRITISH COLUMBIA LTD. and

WORDLOGIC CORPORATION
Patent Owner
____________
IPR2017-01856
Patent 7,681,124
____________
PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT 7,681,124
IPR2017-01856
U.S. Patent No. 7,681,124
TABLE OF CONTENTS
I. Introduction ......................................................................................................... 1
II. Summary of the 124 Patent .............................................................................. 2
A. Description of the alleged invention of the 124 patent .................................. 2
B. Summary of the prosecution history of the 124 patent .................................. 2
III. Requirements for Inter Partes Review under 37 C.F.R. 42.104 .................... 4
A. Grounds for standing under 37 C.F.R. 42.104(a) ......................................... 4
B. Identification of challenge under 37 C.F.R. 42.104(b)
and relief requested ......................................................................................... 5
C. Level of skill of a person having ordinary skill in the art ............................... 6
D. Claim construction under 37 C.F.R. 42.104(b)(3) ....................................... 6
IV. There is A Reasonable Likelihood that The Challenged Claims of the 124
Patent Are Unpatentable ................................................................................... 9
A. Overview of the prior art ............................................................................... 10
B. Ground 1: Claims 19-21 are obvious over Fukushima in view of Witten .... 10
C. Ground 2: Claims 36 and 40 are obvious over Fukushima in
view of Capps ................................................................................................ 29
D. Ground 3: Claims 1-11, 16-18, and 37-40 are obvious over Fukushima,
Capps, and Witten ......................................................................................... 38
E. Ground 4: Claims 12-15 are Obvious over Fukushima, Capps, Witten, and
Flinchem ........................................................................................................ 53
F. Ground 5: Claims 19-21 are obvious over Schroeder in view of Witten ...... 56
G. The Computer-Readable Medium Claims ................................................. 68
V. Conclusion........................................................................................................ 69
VI. Mandatory Notices Under 37 C.F.R. 42.8(a)(1) .......................................... 70
A. Real Party-In-Interest .................................................................................... 70
B. Related Matters ............................................................................................. 70
C. Lead and Back-Up Counsel ........................................................................... 70
IPR2017-01856
I. INTRODUCTION
Petitioner Unified Patents Inc. (Petitioner) respectfully requests an Inter
Partes Review (IPR) of claims 1-21 and 36-41 (collectively, the Challenged
Claims) of U.S. Patent 7,681,124 (the 124 Patent) (EX1001).
The 124 Patent relates to a user interface for predicting and presenting text
completion candidates in response to a users partial text entry. Notably, the 124
Patents purported claim to invention relates to updating a list of completion
candidates based on modified text entry or selection of a prior suggested candidate
and to the display of a digital keyboard but the fundamental technical concepts
described and claimed in the 124 Patent existed years before the earliest possible
priority date of the 124 Patent. For example, on-screen keyboards had existed by
the early 1990s, over ten years prior to the 124 Patent. Lieberman Decl. (EX1009)
at 25-26. Word completion and prediction software had also been developed
long before 1999, and the 124 Patent suggests no nonobvious methods of
suggesting completion candidates for partial text entries. Id. at 23-24. The
concept of a pop-up or disappearing keyboard also existed well before 1999. See
id. at 26-30. One of skill in the art would have recognized by 1999 that there
were many obvious ways one could design a user interface to perform the function
of displaying a digital keyboard and presenting a list of completion candidates. Id.
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at 24, 42. And the purportedly inventive concepts would have required the
implementation of well-known, predictable programming concepts. Id.
Each limitation of the Challenged Claims, or an obvious variation thereof,
already existed in the field of text input systems. Petitioner, therefore, respectfully
requests institution of inter partes review.
II. SUMMARY OF THE 124 PATENT
A. Description of the alleged invention of the 124 patent
The 124 Patent relates to a user interface for a predictive text entry system.
In general, the claims of the 124 Patent were allowed because of limitations
related to (i) displaying a digital keyboard while not displaying a list of suggested
words or phrases, and (ii) suggesting new candidates based on a prior selected
completion candidate. See File History (EX1002) at 12-13. As discussed in more
detail below, these concepts, or obvious variations thereof, already existed in the
prior art.
B. Summary of the prosecution history of the 124 patent
Application No. 11/134,810, which resulted in the 124 Patent, was filed on
May 19, 2005. 124 Patent (EX1001). For purposes of this proceeding, Petitioner
simply assumes that the priority date for the Challenged Claims is March 18, 1999,
the earliest claimed priority date. The 810 application, which was filed as a
divisional after a restriction requirement in its parent, originally included 33
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claims. File History (EX1002) at 790-798. Those 33 claims were subsequently
cancelled and replaced with a set of 41 new claims. Id. at 364-379. All but two
claims were rejected outright as either anticipated or obvious, with those two
claims indicated as containing allowable subject matter. Id. at 283. The first claim
related to clearing the display of the digital keyboard or a search listnot both. See
id. at 285, 365. The second claim related to searching for and displaying a new set
of completion candidates in response to receiving a signal associated with selecting
a completion candidate and initiating further searching. See id. at 285, 367. The
applicant re-drafted and added independent claims to include the subject matter of
these claims, and argued that the concept of having a second set of completion
candidates matching a portion of a selected completion candidate was not in the
prior art. Id. at 260-62, 265.
The examiner indicated the following reasons for allowance of the
Challenged Claims:
For independent claims 126, 127, 130, and 174 (issued claims 1, 5, 9,
and 36), the examiner stated that these include the notion whereby a
user only sees and can interact with either a digital keyboard or a
search list. Id. at 178.
For independent claims 138-139 (issued claims 19 and 20), the
examiner stated that these include the notion whereby the selection
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of a completion candidate is performed for the purpose of invoking a
further search, which then generates a refined list of completion
candidates; each entry in the refined list includes the characters
comprising the selected completion candidate. Id. at 179.
However, the concept of having a keyboard optionally displayed or
deactivated in certain circumstances was already well known in the art of user
interfaces by 1999. See Lieberman Decl. (EX1009), at 26-30. For example, U.S.
Patent No. 5,367,453 to Capps et al., describes interchangeably displaying a digital
keyboard and a search list of suggested words.
Regarding the second reason, this limitation merely repeats the search for
completion candidates based on the prior selected completion candidate. As
discussed below, this concept was taught by Darragh and Witten in their well-
known text, The Reactive Keyboard, published in 1992. See id. at 31-32.
III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.

42.104
A. Grounds for standing under 37 C.F.R. 42.104(a)
Petitioner certifies that the 124 patent is available for IPR and that the
Petitioner is not barred or estopped from requesting IPR challenging the claims of
the 124 patent.
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B. Identification of challenge under 37 C.F.R. 42.104(b) and relief
requested
In view of the prior art and evidence, claims 1-21 and 36-41 of the 124
Patent are unpatentable and should be cancelled. 37 C.F.R. 42.104(b)(1). Based
on the prior art references identified below, IPR of the Challenged Claims should
be granted. 37 C.F.R. 42.104(b)(2).
Exhibit
Proposed Ground of Unpatentability
Nos.
Ground 1: Claims 19-21 are obvious over U.S. Pat. No. 5,724,457
to Fukushima (Fukushima) in view of Darragh and Witten, The 1003, 1004
Reactive Keyboard (1992) (Witten)
Ground 2: Claims 36 and 41 are obvious over Fukushima in view
1003, 1005
of U.S. Pat. No. 5,367,453 to Capps et al. (Capps)
Ground 3: Claims 1-11, 16-18, and 37-40 are obvious over
1003, 1005,
Fukushima in view of Capps in further view of Witten 1004
Ground 4: Claims 12-15 are obvious over Fukushima in view of
Capps in further view Witten, and in further view of U.S. Pat. No. 1003, 1005,
1004, 1006
6,307,548 to Flinchem et al. (Flinchem)
Ground 5: Claims 19-21 are obvious over U.S. Pat. No. 5,797,098
1007, 1004
to Schroeder et al. (Schroeder) in view Witten
Section IV, infra, identifies where each element of the Challenged Claims is
found in the prior art. 37 C.F.R. 42.104(b)(4). The exhibit numbers of the
supporting evidence relied upon to support the challenges are provided above and
the relevance of the evidence to the challenges raised are provided in Section IV.
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37 C.F.R. 42.104(b)(5). Exhibits EX1001EX1026 are also attached.
C. Level of skill of a person having ordinary skill in the art
A person having ordinary skill in the art (PHOSITA) of the 124 Patent by
March 18, 1999, would have been a person with (1) the equivalent of a bachelors
degree in computer science, electrical engineering, computer engineering, or a
similar discipline, and (2) at least one year of experience working with technology
related to text input user interfaces and/or context-driven user interfaces, or an
equivalent amount of similar work experience or education, with additional
education substituting for experience or additional experience substituting for
education. Lieberman Decl. (EX1009) at 19-21.
D. Claim construction under 37 C.F.R. 42.104(b)(3)
In this proceeding, claim terms of an unexpired patent should be given their
broadest reasonable construction in light of the specification. 37 C.F.R.
42.100(b). Petitioner proposes the below constructions, and all claim terms not
specifically discussed below should be given their broadest reasonable construction
in light of the specification.
i. partial text entry
The BRI of partial text entry, as expressly defined by the specification, is
a sequence of one or more characters making up a leading portion of a word,
phrase, or character sequence. See 124 Patent (EX1001) at 5:60-62.
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ii. completion candidate
The 124 Patent describes a completion candidate as follows: Each
completion candidate stored in the dictionary 20 represents a word, phrase, or
character sequence according to a particular language. Character sequences may
include, but are not limited to, word continuations. Id. at 9:19-23; see also id. at
9:1-5, 9:66-10:5, 11:24-28, 11:57-61. 1 The 124 Patent also teaches that a
completion candidate may represent only part of the entry the user wishes to add
and, thus, need not complete the entirety of the entry. See id. at 15:62-67. The 124
Patent discloses that completion candidates are suggestions provided to a user in
response to either a partial text entry or a selection of a previous completion
candidate. See id. at 11:62-12:14, 15:62-16:6. Therefore, the BRI of completion
candidate must at least include words, phrases, or character sequences suggested
to continue or complete a word, phrase, or character sequence.
iii. pointing device
The BRI of pointing device, as expressly defined by the specification, is
an input device that allows a user to select one choice amongst one or many
choices, and the BRI also includes the expressly disclosed examples of a pen,
stylus, finger, mouse, trackball, or the like. Id. at 7:44-53, 11:35-48,
34:64-35:1.
1
Unless otherwise indicated, all emphases have been added by Petitioner.
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iv. displaying / activating or not displaying / deactivating /
clearing the digital keyboard or search list
Claims 1, 5, 9, and 36 recite limitations relating to displaying or
activating one of a search list or a digital keyboard while not displaying,
clearing, or deactivating the other. The specification describes such displaying or
activation as something that can preferably be performed automatically (in the
preferred embodiment):
When the digital keyboard 28 and the interactive search list are
interchangeable, the image of the digital keyboard 28 and the
image of the interactive search list 30 share substantially the
same display area on the graphical user interface 34. The data
entry system 26 for the first embodiment is preferably
programmed to automatically swap between the digital
keyboard 28 and the interactive search list 30 depending upon
the input provided by user [sic] from the pointing device.
Id. at 10:63-11:4; see also id. at 2:19-24, 35:35-46. But the 124 Patent also
teaches that this action may be performed manually by a user:
[A] physical button or switch located on the personal computing

device, or on the pointing device, and within easy reach of a user's
finger or hand, may be used to easily activate certain features of the
data entry system 26. As an example, when the button on the personal
computing device is pressed, the data entry system 26 may be
programmed to make, with each press, the digital keyboard 28
invisible or visible.
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Id. at 35:57-64; see also id. at Abstract, 2:37-52, 4:58-67.
The claim language itself does not specify whether the display/activation of
the keyboard or search list is done automatically or manually by user input.
Therefore, Petitioner notes that the BRI of these limitations includes both manually
and automatically activating, deactivating, displaying, or clearing the search list
and keyboard.2
IV. THERE IS A REASONABLE LIKELIHOOD THAT THE

CHALLENGED CLAIMS OF THE 124 PATENT ARE
UNPATENTABLE
This petition challenges six independent claims relating to devices or
methods for text entry on a user interface using completion candidates.
Independent claims 1, 5, 9, and 36 include limitations related to not displaying a
digital keyboard while displaying a search list. Independent claims 1, 9, 19, and 20
include limitations relating to displaying a second list (or new list or further
plurality) of completion candidates based on using a previously selected
completion candidate to perform further searching. As discussed in more detail
below, neither of these limitations nor their combinations were non-obvious, and
the dependent claims fail to add any non-obvious concepts to the independent
claims.
2
The Board, of course, may determine this express construction is unnecessary.
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A. Overview of the prior art
Each prior art reference below relates to systems and methods for text entry
on a computing device, and each recites ways of displaying text and some form of
intelligence related to what the system thinks the user is trying to type, whether
in the form of word or context predictions (Fukushima, Witten, and Schroeder),
text corrections (Capps), or text disambiguation (Flinchem). Each reference also
teaches that its features could be implemented on personal computing devices,
such as phones, PDAs, or personal computers.
A PHOSITA would have recognized that there were similar considerations
for the display and operation a graphical user interface for predictive text entry
systems allowing a user to select text from a list of suggestions for input into, for
example, a message, document, or form field. See Lieberman Decl. (EX1009) at
35-42. A PHOSITA developing a text-completion system would be motivated to
consider the teachings of these different text input systems and would find that
incorporating the features of one text system into another would require only minor
modifications in software and yield predictable results. Id.
B. Ground 1: Claims 19-21 are obvious over Fukushima in view of

Witten
U.S. Patent No. 5,724,457 to Fukushima (Fukushima) was filed on June 1,
1995 and issued March 3, 1998, and, therefore, is 102(b) prior art to the 124
Patent. See Fukushima (EX1003). Like the 124 Patent, Fukushima relates to a
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character input system wherein one or more predicted character string candidates
are suggested upon entry of a character. See id. at Abstract, 2:42-60, 3:8-22, 6:10-
22, Figs. 1-2, 5, 6A-6F, 9-14, Claims 1, 6, 13. Although the preferred embodiments
in Fukushima are taught using handwritten text entry, it teaches that its invention
could be implemented using keyboard entry. See id. at 5:39-45, 19:25-31.
Fukushima is both within the field of endeavor of and reasonably pertinent to, and,
thus, analogous to the alleged invention of the 124 Patent. See Lieberman Decl.
(EX1009) at 36-37, 42-43.
The Reactive Keyboard is a book copyrighted and published in 1992 by
John Darragh and Ian Witten (Witten). See Witten (EX1004) at 5. Witten was
copyrighted, indexed, bibliographically identifiable, and publicly available in
libraries by at least 1992-93, and it was in actual use by other researchers by no
later than December 1997. See Bennett Decl. (EX1026) at 28-39. Therefore,
Witten is a prior art printed publication to the 124 Patent under 35 U.S.C.
102(b).
Like the 124 Patent, Witten relates to text entry using predictive text
technology called the Reactive Keyboard, particularly in the context of aiding
users with disabilities to type efficiently. See Witten (EX1004) at 16-20. Witten not
only explains the use of the Reactive Keyboard, but it also provides a detailed
background of text entry technology. See id. at 38-59. Although Witten generally
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teaches the application of its system on desktop personal computers, the claims of
the 124 patent are not limited to hand-held devices. See 124 Patent (EX1001) at
7:64-8:8 ([T]he invention may be practiced with other personal computing
devices includingpersonal computers and other microprocessor-based electronic
devices) see also id. at 7:17-26 (describing desktop computers as one type of
personal computing device). Further, a PHOSITA would recognize that the
predictive text functional teachings of Witten cited in this Petition would be
equally applicable to a predictive text entry system on smaller devices. Lieberman
Decl. (EX1009) at 39, 42, 50. Therefore, Witten is both in the field of endeavor of
and reasonably pertinent to, and, thus, analogous to the 124 Patent.
Fukushima was cited in an information disclosure statement among over 200
prior art references, but its teachings were never specifically considered by the
examiner for the claims of the 124 Patent. Witten was never cited during
prosecution; though, a 1990 IEEE article describing aspects of the Reactive
Keyboard system was applied by the examiner in an obviousness rejection of
dependent claim limitations related to highlighting text in a predictive system. File
History (EX1002) at 311-12. However, the article was never applied to other
limitations, and the more complete Witten textbook relied on herein was never
cited during prosecution.
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i. Claim 19
19[P]. A computer-readable medium comprising codes for directing a processing

unit to process text entered into a personal computing device, by:
Claim 19 recites a computing device performing a set of steps related to text
entry and prediction. Fukushima teaches a computer-readable medium, such as a
computer or tablet, comprising software to process text entered into a personal
computing device. Fukushima (EX1003) at 1:6-9; see also id. at Abstract, 2:42-65;
5:64-6:9; 6:10-22; 9:16-47; Figs. 6(C) & 10(C).
19[a]. receiving and displaying a partial text entry, comprising receiving at least
part of the partial text entry via a keyboard, the partial text entry comprising at
least a first character;
Fukushima teaches receiving and displaying a partial text entry via a
graphical user interface of the device, such as via a handwritten entry or by
pointing on a touch screen, and the partial text entry comprises at least a first
character. For example, a user can use a stylus to draw a t, which is then
recognized by the device as a t and encoded as a t character code by the
device:
When one handwritten character is entered, as the result of process in

the character recognition portion 40, the character code of t is stored
in the direct character string storage buffer 50. by the step 406, in
place of the handwritten character t displayed, the encoded
character code t is displayed on the input character string region
111.
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FIG.6C
Id. at 9:8-15 and Fig. 6C; see also id. at 2:66-3:1, 4:63-67; 5:15-32, 5:38-45, Figs.
1, 5 (steps 405 and 406 demonstrating receiving and displaying a character input),
6B-E, 7, 11.
Fukushima teaches that while its invention was described in the context of
handwritten stylus character input, its present invention is applicable to
keyboard character input systems. Id. at 19:24-30, 5:39-45; see also Lieberman
Decl. (EX1009) at 53.
19[b]. in response to receipt of the first character of the partial text entry,
obtaining a plurality of completion candidates from among a group of
completion candidates, wherein each of the plurality of completion candidates
includes a portion matching the partial text entry;
Fukushima teaches obtaining a first plurality of completion candidates from
a dictionary (i.e., a group) of potential completion candidates in response to
receiving a first character of a partial text entry:
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Subsequently, by the character recognition portion 40, character
recognition is performed to store a new character in the direct
character string storage buffer 50. Then the display control portion
100 displays the new character on the input character string region
111 in place of the trace data (steps 405 and 406). At this time, the
FIG.6B
character string predicting portion 60 performs prediction for the
character following the new character to store the predicted character
in the predicted character string storage buffer 70.
Id. at 8:32-40; see also id. at 5:39-55, 6:38-54, 6:61-65, 7:21-43, 9:8-17, Figs. 1, 4-
6F. For example, upon entry of the very first character t, the system produces a
plurality of completion candidates of words that include a portion that starts with,
or matches, t, such as take or talk:
FIG.6C
Id. at Fig. 6C, see also id. at 6:10-22 (The character string predicting portion 60
generates candidate characters immediately following the direct character string in
the direct character string storage buffer 50. By retrieving word forward matching
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with the direct character string from the word dictionary, the prediction of the word
level can be realized.); 9:17-25, 13:27-36, Fig. 10C. Although Figure 6C shows
only the predicted portion of the candidate strings, Fukushima teaches that the
candidate strings may be displayed as full spelling of words (for example, not
only ading, but also trading is displayed). Id. at 10:10-15.
19[c]. displaying the plurality of completion candidates in a search list within a

graphical user interface;
Fukushima teaches displaying a plurality of candidate character strings in a
search list within a graphical user interface: On the predicted character string
region 112, the candidate character strings subsequent to t are displayed. The
display at this condition is as illustrated in Figure 6(C). Id. at 9:21-24; see also id.
at Abstract (A character string input system includes a display portion 110 for
displaying the predicted character string), 2:54-57, 3:26-19, 7:8:42-57, 9:36-
39; see also id. at 10:10-15 (full spelling of words). For example, Figures 6C and
6E illustrate a graphical user interface displaying a plurality of completion
candidates in a search list:
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FIG.6C
Id. at Figs. 6C & 6E.
19[d]. detecting user input corresponding to selection of a particular completion

candidate from among the plurality of completion candidates displayed in the
search list;
Fukushima teaches a selection command input portion for detecting user
input selecting a desired prediction character string (completion candidate) from
the displayed list of candidates:
[I]n the predicted character string region 112, the candidates of the
character string are displayed. Then, from the selection command
input portion 30, the command for selection is input to the display
portion 110. Then, at the trailing end of the input character string in
the input character string region 111, the candidate of the selected
character string is added so as to be displayed together with the front
portion.
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FIG.6E
Id. at 7:36-43 and Fig. 6E; see also id. at 5:39-45, Figs. 4-5, 6A-6F, Abstract, 2:58-
FIG.6F
60, 3:20-22, 4:63-5:1, 9:36-47.
-311
t r a d i n g
19[e]. modifying the display of the partial text entry to correspond to the
particular completion candidate selected from among the plurality of completion
-310
candidates at least while the particular completion candidate remains selected;
312
Fukushima teaches that when a user selects a prediction character string
from the search list, the direct character string portion of the display will be
modified to include the selected string. See id. at 3:42-47; see also id. at 7:36-43,
Figs. 1, 4, 6F. For example, Fukushima teaches that if a user has entered tr as the
partial text entry and then selects trading, from the search list, ading will be
added to the direct character string:
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Id. at Fig. 6F; see also id. at 9:36-47. Further, as noted, Fukushima teaches that the
completion candidates can also be the full spelling of words, instead of just the
portion to be added. See id. at 10:10-15.
19[f]. detecting modification of the partial text entry by the user via the
keyboard;
Fukushima teaches that if the user continues inputting text (such as by
adding r after t), the system will detect the user input modifying the text entry:
When r is input, the display on the input character string region 111
is varied to include the handwritten character r. Through the process
set forth above, the handwritten character r is recognized and the
display on the input character string region 111 is changed to display
encoded character codes of tr is displayed.
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FIG.6C
Id. at 9:16-35 and Figs. 6C, 6E.
19[g]. obtaining and displaying in the search list a modified plurality of

completion candidates from among the group of completion candidates, if the
partial text entry is modified via the keyboard, wherein each of the modified
plurality of completion candidates includes a portion matching the partial text
entry; and
Fukushima teaches that if the user continues inputting text (e.g., adding r)
without selecting a completion candidate, the system will detect user input
modifying the text entry and produce a modified list of completion candidates
beginning with (i.e., matching) the updated partial text entry:
When r is input, the display on the input character string

region 111 is varied to include the handwritten character r.
Then, the character strings following tr are predicted by the
character string predicting portion 60 and displayed on the
predicted character string region 112 of the display portion 110.
20
U.S. Patent Mar. 3, 1998
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Sheet 7 o f 16 5,724,457
U.S. Patent Mar. 3, 1998 Sheet 7 o f 16 U.S.5,724,457
Patent No. 7,681,124
FIG.6C FIG.6D
FIG.6D
FIG.6E
FIG.6E
FIG.6F
Id. at 9:16-39 and Figs. 6C-6E (annotated).
FIG.6F Also, as discussed, Fukushima teaches -311
t r a d n g
-311 i
that the completion candidatest can
r abed the
i full
n g spelling of words, not just the
-310
-310
portion to be added. See id. at 10:10-15. 312
312
19[h]. obtaining and displaying in the search list a further modified plurality of
completion candidates from among the group of completion candidates, if a
completion candidate is accepted via the search list from the modified plurality
of completion candidates, wherein each of the further modified plurality of
completion candidates includes a portion matching the accepted completion
candidate.
Fukushima does not teach producing a further modified list of completion
candidates based on a selected/accepted completion candidate (e.g., it does not
teach using the accepted trading completion candidate to display tradings,
etc.). Witten, however, teaches this limitation. For example, Witten teaches that
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after a completion candidate is selected from a modified list, the candidates
displayed in the prediction window are updated, providing a further modified list:
The window below gives predictions from which the user can select
the next characters of text. On the left is the visual context, the
characters that precede the cursor in the text window. On the right is a
menu of predictions that are offered as suggestions of how the context
might continue. The user enters text by choosing one of these and
clicking at a particular point within it. Characters up to that point are
inserted into the upper window, and both context and predictions in
the lower one are updated accordingly - the context moves on and the
predictions change completely. . . .
Figure 4.4 illustrates the entry of several words of text in a sequence
of eight screen images. For presentation purposes, the windows are
rather small and are placed side by side. First, the words
Reactive#Keyboard# are entered. The initial two letters are
taken from Research, and to the right of the second snapshot can be
seen the updated context and new predictions. At this point
active#Keyboard# is entered with a single mouse click, and
fresh predictions appear. Again two words - primed#with# - are
entered together. The fourth image shows the effect of moving the
cursor back into the context part of the prediction window: Now the
last few characters of context (with#) are highlighted and, when the
mouse is clicked, deleted from the text buffer (and, of course, from
the context too). The remaining illustrations show more words, some
of them incomplete, being entered. The net result is that six words are
22
IPR2017-01856
entered in eight selections from a four-item menu, including one
selection that was needed to delete an erroneously chosen word.
Witten (EX1004) at 89-91; see also id. at 89 (The prediction window is scrollable,
and always contains 128 predictions so that any ASCII character can be entered
and users can dispense with a physical keyboard.), 41 (it was common for a
predictive text system to change its display after each user selection to present a
new subset of predicted elements); see also id. at 96 (When a menu selection is
madea new set of menu items is generated from long-term memory; and the new
items are displayed.), 25 (Predictions of highly likely future selections - in other
words, continuations - can be made at each choice point.), 82 (text can be
generated solely by selecting from a menu of predicted continuations, without
resorting to a keyboard.). This is depicted in Fig. 4.4:
23
IPR2017-01856
Id. at 90. Figure 4.4 shows that the prediction window displays both the last-
selected completion candidate with the next modified list of suggested completion
candidates, which are continuations of the predicted text entry.
24
IPR2017-01856
Witten also teaches that a portion of the new completion candidates will
match the accepted completion candidate. For instance, where a user has accepted
the selected completion candidate, Re, on the left, Witten teaches that each of the
new completion candidates suggested are words or phrases that begin with Re,
such as Research, Reactive, Return, and Rehabilitations:

.,
,. File Edit Options
Untitled ===Predictions Window E!l
This text has been generated with the Shannon--shannon ..,...
Ill with-the .. ~earch-and-upd ;,,,;,
J. G. -CI eary-and-1 ti
Like I y-cont i nuat i ;,;,;,
This text has been generated with the

Re i th-the ..Re
This text has been generated with the This-text-has-be

Reactive Keyboard lfflEMI! Keyboard- M,UM&fhe-
Id. at 90 (Fig. 4.4) (excerpt); see also id. at communicat ion-ai
91 (First,
to-generated-wit
the words
This text has been generated with the the ..
ReactiveKeyboard areprimed
Reactive Keyboard entered.
with The initial two lettersa-stare
med-11111 taken from
andard-commu ;,;,;, Research
'both-the-predictijf
your-program,-th P
).
This text has been generated with the d-primed- ~-very-larg
Reactive Keyboard primed rm!I with-the ..
A PHOSITA would have been motivated to combine Wittens predictive text
entry feature
This of
text allowing a user towithobtain
has been generated the a new list of completion
a-very-large candidates
.. based
Reactive Keyboard primed from ID imed-from- ll;:e-text-generat
represented-by-t
on a selected completion candidate to Fukushimas predictive text
some-statistical entry system.
This text has been generated with the e-text-generated
See Lieberman
Reactive Decl. (EX1009)
Keyboard primed fromatthll!DI
49-50. A d-from-th
PHOSITA would have appreciated
~int-of-view
This-text-has-be
at-the-highest-o
that this feature would improve Fukushima by further enhancing the speed and
This text has been generated with the oint-of-view-if-t
Reactive Keyboard primed from this Pl!lllli om-this-p ~ex.CKP-pap
efficiency of user input and further reducing the number of characters
roves-extremely- to be
erhaps-easiest-t
manually input, which are stated goals of Fukushima (e.g., at 2:25-30, 19:1-7). Id.
Figure 4.4. Several snapshots of the screen during text entry with RK-Pointer.
25
IPR2017-01856
at 50. Further, Fukushima contemplates that suggested completion candidates can
be continuously updated as additional input is provided and that the completion
candidates will begin with (e.g., a portion will match) the updated partial text
entry, as discussed above for 19[g].3 Thus, a PHOSITA would have appreciated
that a selected completion candidate could be used to further search for additional
completion candidates, as taught by Witten, and that this search could be done
using Fukushimas text prediction functions in the same manner as though the
selected candidate had been manually entered character-by-character as in
Fukushima. Id. Such an added feature, therefore, would have required minimal
programming modifications in the system of Fukushima and would have yielded
predictable results. Id.
ii. Claim 20
20[P]. A method of processing text via a personal computing device using a

pointing device, the method comprising:
Fukushima teaches a method of processing text via a personal computing
device. See supra Sec. IV.B(i) at 19[P]. Fukushima also teaches that this method
may involve using a pointing device:
3
This continuous updating normally occurred in conventional text prediction systems
at the time, as Witten notes. See Witten (EX1004) at 41.
26
IPR2017-01856
The character string input portion 10 receives a trace data or pattern
data of a handwritten character. The character string input portion 10
may be realized by a pointing device and a plane which may detect
the pointing position as a two-dimensional coordinate data. In the
already commercialized pen type computer, the character string input
portion 10 has been realized by a stylus pen and a tablet. Also, the
character string input portion 10 may be realized by pointing on a
touch panel by a finger, or by employing a mouse as the pointing
device.
Id. at 5:23-32; see also id. at 7:3-14, 11:1-10.
20[a]. receiving via the personal computing device a partial text entry entered
into the personal computing device by a user with the pointing device, the partial
text entry comprising at least a first character;
Fukushima teaches this limitation. See supra Sec. IV.B(i) at 19[a].
Fukushima also teaches that text may be entered using a pointing device. See
Fukushima (EX1003) at 5:24-32.
retrieving a first plurality of completion candidates selected from among a group
of completion candidates stored in a dictionary, wherein each of the first
entry;
Fukushima teaches this limitation. See supra Sec. IV.B(i), claim 19[b].
Further, Fukushima expressly teaches that the completion candidates are stored in
and obtained from word dictionary 200. Fukushima (EX1003) at 6:10-15, 10:38-
54, Fig. 2, 5:19-22.
27
IPR2017-01856
20[c]. displaying the first plurality of completion candidates in a search list
within a graphical user interface;
Fukushima teaches this limitation. See supra Sec. IV.B(i), claim 19[c].
20[d]. receiving a user input signal associated with the pointing device;
Fukushima teaches this limitation. See Fukushima (EX1003) at 5:23-32, 7:3-
14, 11:1-10; see also Sec. IV.B(i) at 19[d].
20[e]. if the user input signal corresponds to a first type of user selection with the
pointing device associated with selecting one of the first plurality of completion
candidates, modifying the partial text entry to become a completion candidate
selected from among the first plurality of completion candidates displayed in the
search list;
This conditional if step in a method claim is not a limitation on the BRI of
the claim because the predicate action is not required to occur in this claim. See Ex
Parte Schulhauser, Appeal No. 2013-007847 at 7-9 (P.T.A.B. April 28, 2016)
(precedential) (The Examiner did not need to present evidence of the obviousness
of the remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim.). To the extent this
limitation is a necessary step, Fukushima nonetheless teaches it. See Section
IV.B(i), claim 19[d]-[e]; see also id. at 5:23-32, 7:3-14, 11:1-10 (relating to the use
of a pointing device).
28
IPR2017-01856
20[f]. if the user input signal corresponds to a second type of user selection with
the pointing device associated with using a selected one of the first plurality of
completion candidates to perform further searching, retrieving a second plurality
of completion candidates selected from among the group of completion
candidates stored in the dictionary, wherein each of the second plurality of
completion candidates includes a portion matching the selected one of the first
plurality of completion candidates.
This conditional if step is not a limitation on the BRI of the claim because
the predicate action is not required to occur in this claim. See Ex Parte
Schulhauser, Appeal No. 2013-007847 at 7-9. However, to the extent this
limitation is a necessary step, Witten teaches it. See Section B(i), claim 19[h]; see
also Fukushima (EX1003) at 5:23-32, 7:3-14, 11:1-10 (relating to the use of a
pointing device). Witten also teaches that in predictive text entry systems, words
could be stored in a dictionary or based on previously entered text. See Witten
(EX1004) at 52-57, 138. For the same reasons as expressed with respect to claim
19[h], a PHOSITA would have found it obvious to combine the teachings in Witten
with those of Fukushima. See Lieberman Decl. (EX1009) at 50.
iii. Claim 21
See infra Sec. IV.G.
C. Ground 2: Claims 36 and 40 are obvious over Fukushima in view of

Capps
U.S. Pat. No. 5,367,453 to Capps et al. (Capps) was filed on August 2,
1993 and issued on November 22, 1994 and, therefore, is prior art to the 124
Patent pursuant to 35 U.S.C 102(b). Capps relates to methods and apparatuses
29
IPR2017-01856
for correcting words entered into a pen-based computer system. Capps (EX1005)
at Abstract, 1:7-21. A PHOSITA would have recognized that interfaces designed to
implement text correction functionality would present similar problems and
solutions as interfaces for text prediction functionality; for example, both may
utilize word or character suggestion lists and both are aimed at attempting to
accurately predict the text a user is intending to enter by comparing input text
against stored text patterns, such as a dictionary. See Lieberman Decl. (EX1009) at
42, 58. And, like the 124 Patent, Capps teaches using a digital, on-screen
keyboard for entering characters into a computer system and allowing a user to
view either a list of suggested words or the digital keyboard. See Capps (EX1005)
at Abstract, 9:58-10:14, 10:34-41, Figs. 6A-9. Therefore, Capps is both in the field
of endeavor of and reasonably pertinent to, and, thus, analogous to the 124 Patent.
Lieberman Decl. (EX1009) at 54, 40.
i. Claim 36
36. A method of processing an input string at least partially entered into a

personal computing device with a pointing device, the method comprising:
Fukushima teaches this preamble. See supra Sections IV.B(i)-(ii) at 19[P]
and 20[P]-[a].
30
IPR2017-01856
36[a]. activating a digital keyboard for user input on a graphical user interface
of the personal computing device;
Fukushima does not expressly teach activating a digital keyboard. However,
it does teach that its system may be implemented using a touch panel or touch
screen. See Fukushima (EX1003) at 5:29-32, 7:3-14, 11:1-10. And, as discussed
above, Fukushima also teaches that its system may be applied to systems using a
keyboard to enter character input. See id. at 5:39-45; 19:24-30.
Capps, however, teaches the activation of a digital keyboard for character
input by a user in a text correction system:
If decision step 120 determines that the gesture is not on an ink word,
it is then determined in a step 124 whether the gesture is on the
keyboard icon K. If it is, then the correction list C is again hidden and
a keyboard is displayed on screen 52 in the step 126. The process 88
is then completed as indicated at 130.
...
FIG. 8 is used to illustrate the step 126 of FIG. 7. As can be seen in
FIG. 8, the correction list C has been removed from the screen 52
allowing the selected word object more to be seen on the screen 52.
A functional image of a keyboard 132 is displayed on the lower
portion of the screen 52. The keys of the keyboard 152 can be
activated by tapping the keys with the stylus 38. In this way, a word
can be explicitly entered into the computer system 10 to replace a
misrecognized word object W.
Capps (EX1005) at 10:9-33; see also id. at Figs. 6-10.
31
IPR2017-01856
U.S. Patent
,9%@
Nov. 22, 1994
Sheet 6 of 12
5,367,453
Id. at Figs. 6a & 8.
It would have been obvious to combine Capps with Fukushima. Digital
keyboards, including those on touchscreens, were already well known in the art,
and a PHOSITA would have been motivated to implement a digital keyboard, such
as Capps, in Fukushimas system based on Fukushimas teachings of a touch
screen and use of a keyboard for text input. See Lieberman Decl. (EX1009) at
53, 57-58. A PHOSITA also would have appreciated that providing a digital
keyboard for text input as an alternative to handwritten input, as taught by Capps,
would have improved Fukushimas system by furthering Fukushimas stated goal
of reducing errors in handwritten character recognition, which is also a stated
purpose of Capps keyboard (see Fukushima (EX1003) at 19:1-11, 1:25-33, 2:25-
32
IPR2017-01856
35; Capps (EX1005) at 1:57-2:10, 2:51-58). Lieberman Decl. (EX1009) at 58.
Both Capps and Fukushima relate to text entry systems designed to accurately and
efficiently predict the text a user intends to input on a personal computing device,
and implementing the already well-known on-screen digital keyboard in Capps
into Fukushimas text entry system would have required only minor, well-
understood modifications in software that would have yielded predictable results to
a PHOSITA. See id. at 53-58.
36[b]. monitoring for user input;
Fukushima teaches this limitation. Fukushima (EX1003) at 5:24-27 (The
character string input portion 10 may be realized by a pointing device and a plane
which may detect the pointing position as a two-dimensional coordinate data.);
see also id. at 5:39-45, 9:3-15, 19:24-30 (can be input via keyboard). Capps also
teaches this limitation. See, e.g., Capps (EX1005) at 10:24-33, Fig. 8.
36[c]. in response to user input corresponding to activating a search,

deactivating the digital keyboard for user input and displaying a first plurality of
possible completion candidates for the partially entered input string on the
graphical user interface, each possible completion candidate comprising the
partially entered input string, and awaiting further user input;
As discussed, Fukushima teaches activating a search for and displaying
completion candidates comprising a partially entered input string in response to
receipt of the input string. See supra Sec. IV.B(i) at 19[b]-19[c]. Fukushima does
not expressly teach deactivating a digital keyboard. Capps, however, teaches
33
IPR2017-01856
activating a search list of word correction candidates (such as by a user double
tapping on the entered word more shown in Figure 4b, which activates the search
list shown in Figure 6a) while not displaying Capps digital keyboard:
U.S. Patent
,9%@
Nov. 22, 1994
Sheet 4 of 12
5,367,453
Capps (EX1005) at Figs. 4b & 6A (annotated); 8:41-9:49 (describing process);
7:39-see also id. at 7:29-8:32; Figs. 3-5. Capps teaches that the user may select the
keyboard icon (labeled K) to display a digital keyboard with keys to be tapped to
allow characters to be typed, while hiding the correction search list, as shown in
Figs. 8 & 10 (id. at 10:9-51), or, alternatively, a button B may be used to hide the
keyboard, as shown in Figure 8, after the keyboard has been displayed:
34
IPR2017-01856
Id. at Fig. 8; 10:24-51. Capps also teaches that it may go into a wait state where
the system awaits a gesture from the user (i.e., awaiting further user input). Id. at
7:53-54.
As discussed above, Fukushima teaches use of a touch panel and that its
predictive text system may be implemented with a keyboard; and, further, it would
have been obvious to combine Capps feature of an optional digital keyboard and
search list, which can each be alternatively hidden or displayed, with Fukushimas
teaching of a search list for completion candidates. Lieberman Decl. (EX1009), at
53-58. A PHOSITA would have been motivated to combine the teachings of
35
IPR2017-01856
deactivating a keyboard and activating a search list (and vice versa), which would
have been obvious in light of the teachings in Capps, with the text prediction
system in Fukushima. Id. A PHOSITA would have appreciated that Fukushimas
stated goals of addressing low input speed, input efficiency, and error reduction
would be furthered by implementing the interchangeable keyboard and search list
functionality in Capps, which has similar stated goals and which provides for more
efficient use of screen space. Id. at 58; see also EX1003 (Fukushima) at 19:1-11,
1:14-27; EX1005 (Capps) at 1:57-2:10, 2:51-58. Further, a PHOSITA would have
recognized that the word correction list in Capps is analogous to the word
completion list in Fukushima, as both use predictive text entry; although they serve
slightly different predictive functions, they employ very similar technology, and
the considerations for how to display such lists would have been nearly identical
(e.g., space, number of suggestions, length of suggestions, the use of a dictionary,
etc.). Lieberman Decl. (EX1009) at 53-58, 42. As such, a PHOSITA would have
been capable of this combination and would have appreciated that it would have
yielded predictable results. Id. at 58. Therefore, this limitation is obvious over
Fukushima in view of Capps.
36[d]. in response to user input corresponding to selecting one of the first

plurality of possible completion candidates, updating the input string with the
selected completion candidate for use by an application; and
Fukushima teaches this limitation. See Section IV.B(i), 19[d]-[e].
36
IPR2017-01856
36[e]. in response to the user input corresponding to terminating the search once
activated, clearing the first plurality of completion candidates from the user
interface and activating the digital keyboard for further user input without
causing the input string to be updated, and awaiting further user input via the
digital keyboard.
Capps teaches that the search for candidates may be terminated and the
search list cleared by a user selecting to activate the keyboard for further input:
If decision step 120 determines that the gesture is not on an ink word,
it is then determined in a step 124 whether the gesture is on the
keyboard icon K. If it is, then the correction list C is again hidden and
a keyboard is displayed on screen 52 in the step 126. The process 88
is then completed as indicated at 130.
Capps (EX1005) at 10:9-14; see also id. at 10:24-33 (describing text entry with the
displayed keyboard), Fig. 7 (steps 124 and 126), Figs. 6a, 6b, 8. And, as noted,
Capps teaches awaiting further user input between gestures. Id. at 7:53-54. As
discussed, a PHOSITA would have been motivated to combine the teachings of
alternating between a keyboard and search list in Capps with the text prediction
system of Fukushima in order to allow the keyboard and search list to be viewed
easily using less screen space on a small computing device and to further
Fukushimas goals of enhancing input speed and efficiency, while reducing errors.
See Sec. IV.C at 36[c]; see also Lieberman Decl. (EX1009) at 53-58.
Implementing these concepts in Capps into the system of Fukushima would have
37
IPR2017-01856
required minor, well-known modifications in programming and yielded predictable
results. Lieberman Decl. (EX1009) at 58.
ii. Claim 41
See infra Sec. IV.G.
D. Ground 3: Claims 1-11, 16-18, and 37-40 are obvious over

Fukushima, Capps, and Witten
i. Claim 1
1[P]. A method of supporting text entry on a personal computing device by

allowing a user to automatically search for and select completion candidates
displayed in a search list based on a partial text entry, the method comprising:
Fukushima teaches this limitation. See Secs. IV.B(i), 19[P]-[c]; see also
Fukushima (EX1003) at Abstract, 2:42-60, 3:8-22, 6:10-22, Figs. 1-2, 5, 6A-6F, 9-
14, Claims 1, 6, 13.
[1(a)] receiving a user input signal;
Fukushima teaches this limitation. See Sec. IV.B(i), 19[a], [d], [f].
[1(b)] if the user input signal corresponds to declining all completion candidates
displayed in the search list, terminating automated searching with the search list
and displaying a digital keyboard while not displaying the search list with no
consequence to the text entered into the personal computing device, and waiting
for further user input from the digital keyboard;
This conditional if step in a method claim is not a limitation on the BRI of
the claim because the predicate action is not required to occur in this claim. See Ex
Parte Schulhauser, Appeal No. 2013-007847 at 7-9.
38
IPR2017-01856
To the extent this limitation is necessary, the combination of Fukushima and
Capps teaches it. Fukushima does not expressly teach ending the display of a
search list upon receipt of a user input corresponding to declining all completion
candidates and displaying a digital keyboard while not displaying the search list.
Fukushima does, however, disclose that a user may decline a set of suggested
completion candidates by opting to enter further text (e.g., modifying t to
become tr), rather than selecting a completion candidate from the displayed list.
Fukushima (EX1003) at 9:29-47; Figs. 6C-E. A PHOSITA would understand that a
user opting to enter further text in this situation had declined all of the suggested
completion candidates. See Lieberman Decl. (EX1009) at 55.
Further, while Fukushima does not expressly teach a digital keyboard or
displaying a digital keyboard while not displaying the search list, Fukushima does
teach that its system may be implemented using a touch panel or touch screen
and that its present invention may be implemented using a keyboard for
character entry. Fukushima (EX1003) at 5:29-32, 7:3-14, 11:1-10; see also id. at
5:39-45; 19:24-30.
Capps, meanwhile, teaches the concept of receiving user input (selection of
keyboard icon K) that corresponds to declining a list of correction candidates
and results in displaying a digital keyboard while hiding the list. See Capps
(EX1005) at 10:9-14 (a gesture on a keyboard icon hides the correction list and
39
IPR2017-01856
displays a digital keyboard); see also id. at 9:63-66 (By hide it is meant that the
view system of the present invention is told to remove the image of the correction
list C from the screen 52.), 10:15-23; see also id. at Fig. 7 (steps 124 and 126),
Figs. 6a, 6b, 8. Thus, the selection of the keyboard icon K would be understood by
a PHOSITA to be a user input signal declining all candidates in the correction list.
See Lieberman Decl. (EX1009) at 55. After this selection, the list is hidden and a
digital keyboard is displayed.
For the same reasons as discussed with respect to limitation 36[e], it would
have been obvious to modify the text prediction interface in Fukushima with the
alternating digital keyboard and search list feature taught by Capps. See supra Sec.
IV.C at 36[e]; see also Lieberman Decl. (EX1009) at 53-58, 42.
[1(c)] if the user input signal corresponds to accepting a completion candidate

from the search list to replace the partial text entry and to terminate automated
searching, terminating the automated searching with the search list, modifying
the partial text entry to become the accepted completion candidate, displaying the
digital keyboard while not displaying the search list, and waiting for further user
input from the digital keyboard;
This conditional if step is not a limitation on the BRI of the claim for the
same reasons discussed above. See Ex Parte Schulhauser, Appeal No. 2013-
007847 at 7-9.
To the extent this limitation is necessary, the combination of Fukushima and
Capps teaches it. Fukushima teaches the concept of a selection command, i.e., a
user input signal corresponding to accepting a completion candidate and modifying
40
IPR2017-01856
the partial text entry to become that completion candidate. See supra Sec. VI.B(i),
19[d]-[e].
Further, as mentioned above with respect to limitation 1[b], Capps discloses
the use of a digital keyboard, which can be displayed while the correction list is
hidden. As discussed, it would have been obvious to modify the text prediction
interface in Fukushima with the alternating digital keyboard and search list feature
taught by Capps. See supra Sec. IV.C(1) at 36[e]; see also Lieberman Decl.
(EX1009) at 53-58, 42.
[1(d)] if the user input signal corresponds to selecting a completion candidate

from the search list to initiate further searching, obtaining a new list of
completion candidates based on the selected completion candidate and displaying
the new list of completion candidates in the search list for further selection while
not displaying the digital keyboard, and waiting for further user input from the
search list.
As discussed with respect to limitation 19[h], Witten teaches performing
further searching to obtain and display a new list of completion candidates based
on a selected completion candidate being selected by the user. It would have been
obvious to a PHOSITA to combine this feature of Witten with the text prediction
system of Fukushima. See supra Sec. IV.B(i), 19[h]; see also Lieberman
Declaration (EX1009) at 48-51, 39, 42.
Further, as discussed above for 36[c], it would have been obvious to apply
Cappss teaching of a digital keyboard displayed interchangeably with a correction
search list, or at least an obvious variation thereof, to the text prediction interface
41
IPR2017-01856
in Fukushima to teach the second part of this limitation. See Sec. IV.C(1) at 36[c];
Lieberman Decl. (EX1009) at 53-58, 40, 42.
ii. Claim 2
2. The method of claim 1 wherein a portion of each completion candidate listed

in the new list of completion candidates, matches the selected completion
candidate.
Witten teaches this limitation. See Sec. IV.B(i), 19[h]. As discussed, it
would have been obvious to a PHOSITA to combine Wittens feature of further
searching for and displaying a new list of completion candidates based on a
selected candidate with the interface of Fukushima. See id.; see also Lieberman
Decl. (EX1009) at 50.
iii. Claim 5
5[P]. A method of processing an input string at least partially entered into a

personal computing device with a pointing device, the method comprising:
Fukushima teaches this preamble. See Sec. IV.B(i)-(ii), claims 19[P] and
20[P]-[a].
5[a]. performing a search of a set of completion candidates to locate a plurality

of possible completion candidates for completing the input string in response to
either a prior located possible completion candidate or a character selectable by
a user;
Witten teaches performing a search of a set of completion candidates in
response to a prior selected possible completion candidate. See Sec. IV.B(i), 19[h].
It would have been obvious to modify the interface of Fukushima with Wittens
42
IPR2017-01856
feature of obtaining a new set of possible completion candidates in response to a
prior selected, or located, completion candidate. See id.; see also Lieberman Decl.
(EX1009) at 50. Further, Fukushima teaches performing a search of a set (e.g., a
dictionary) of completion candidates in response to a character selectable by a
user, such as when the user enters t. See supra Sec. IV.B(i), 19[b] and 19[f]-[g].
5[b]. displaying at least one of: (i) the plurality of possible completion
candidates; and (ii) characters selectable by the user;
Both Witten and Fukushima teach the concept of displaying a plurality of
completion candidates. See Sec. IV.B(i), 19[f]-[h]. As discussed, it would have
been obvious to modify the interface of Fukushima to display the plurality of
possible completion candidates based on a prior located possible completion
candidate, as taught by Witten. See Sec. IV.B(i), 19[h]; see also Lieberman Decl.
(EX1009) at 50. Further, Fukushima teaches displaying characters selectable by
the user. See Sec. IV.B(i), 19[b] and 19[f]-[g].
5[c]. selecting one of the plurality of possible completion candidates for use by
an application in response to user input;
Witten teaches selecting, for use in an application, one of the plurality of
completion candidates obtained from the search performed in response to a prior
located possible completion candidate selected by the user. See Witten at 89-91,
Fig. 4-4; see also id. at 25, 82, 96 (each relating to presenting and then selecting
new predictions from a menu of completion candidates).
43
IPR2017-01856
5[d]. displaying a digital keyboard on a user interface when a user is entering
characters a keystroke at a time;
Capps teaches this limitation. As discussed, Fukushima discloses that a
keyboard may be used with its invention. Fukushima (EX1003) at 5:39-45; see
also id. at 19:24-30. Fukushima also discloses use of a touch screen or touch
panel for input. Id. at 5:29-32, 7:3-14, 11:1-10. Fukushima also discloses entering
characters one at a time. See, e.g., id. at 9:3-47 (teaching the entry of t and then
r, etc.).
Capps teaches the use of a digital keyboard to enter characters, as discussed
in Section IV.C(i) with respect to limitation 36[a]. As discussed with respect to
limitation 36[a], it would have been obvious to combine Capps digital keyboard
with Fukushima for entering characters one at a time. See supra Sec. IV.C(i) at
36[a]; see also Lieberman Decl. (EX1009) at 57-58, 50.
5[e]. monitoring for user input;
Fukushima teaches this limitation. See supra Sec. IV.C(i), 36[b].
5[f]. if the user input corresponds to activating a search list, clearing the display
of the digital keyboard, displaying the search list and waiting for further user
input; and
This conditional if step is not a limitation on the BRI of this claim because
the predicate action is not required to occur. See Ex Parte Schulhauser, Appeal No.
2013-007847 at 7-9.
44
IPR2017-01856
However, to the extent this is a necessary limitation, this limitation is
obvious over Fukushima in view of Capps. See supra Sec. IV.C(i) at 36[c].
5[g]. if the user input corresponds to terminating use of the search list once
activated, clearing the display of the search list, displaying the digital keyboard
and waiting for further user input.
2013-007847 at 7-9.
However, to the extent this is a necessary limitation, this limitation is
obvious over Fukushima in view of Capps. See supra Sec. IV.C(i), 36[e].
iv. Claim 6
6. The method of claim 5 wherein performing the search of the set of completion
candidates in response to the prior located possible completion candidate,
comprises performing the search of the set of completion candidates in response
to the prior located possible completion candidate being selected by the user.
Witten teaches this limitation. See supra Sec. IV.B(i), 19[h]. It would have
been obvious to a PHOSITA to implement Wittens search for completion
candidates based on a prior selected completion candidate into Fukushimas
interface. See id.; see also Lieberman Decl. (EX1009) at 50.
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IPR2017-01856
v. Claim 9
9[P]. A method of processing text entered into a personal computing device, the
method comprising:
Claim 9 is nearly identical to claim 19, except that it is a method claim that
describes the use of a digital keyboard while claim 19 relates to a generic
computer implementing a method using a nonspecific keyboard. The 124 Patent
recognizes that on-screen digital keyboards already existed in the prior art;
therefore, requiring the keyboard to be a digital keyboard fails to distinguish claim
9 in a non-obvious manner over the prior art applied to claim 19 (i.e., Fukushima
in view of Witten). See Sec. IV.B(i), 19[P]; see also 124 Patent (EX1001) at 1:50-
61. Therefore, Fukushima, or an obvious variation thereof, teaches this preamble.
See Section IV.B(i), 19[P]. Further, as discussed above, Capps teaches receiving
text entry via a digital keyboard, and for the same reasons discussed with respect to
claim 36, it would have been obvious to a PHOSITA to implement Capps digital
keyboard for entering text in Fukushima. See supra Sec. IV.C(i).
part of the partial text entry via a digital keyboard displayed in a graphical user
interface of the personal computing device, the partial text entry comprising at
Fukushima or an obvious variation thereof, or Fukushima in view of Capps,
teaches this limitation. See supra Sec. IV.B(i), 19[a], Sec. IV.D(v), 9[P].
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IPR2017-01856
obtaining a first plurality of completion candidates from among a group of
completion candidates, wherein each of the first plurality of completion
candidates includes a portion matching the partial text entry;
Fukushima teaches this limitation. See Sec. IV.B(i), 19[b].
9[c]. displaying the first plurality of completion candidates in a search list within
a graphical user interface;
Fukushima teaches this limitation. See Sec. IV.B(i), 19[c].

candidate from among the first plurality of completion candidates displayed in
the search list;
Fukushima teaches this limitation. See Sec. IV.B(i), 19[d].
particular completion candidate selected from among the first plurality of
completion candidates;
Fukushima teaches this limitation. See Sec. IV.B(i), 19[e].
9[f]. detecting modification of the partial text entry by the user via the digital
keyboard;
teaches this limitation. See Sec. IV.B(i), 19[f]; see also Sec. IV.D(v), 9[P].

completion candidates from among the group of completion candidates, each
time the partial text entry is modified via the digital keyboard, wherein each of
the modified plurality of completion candidates includes a portion matching the
partial text entry; and
teaches this limitation. See Sec. IV.B(i), 19[g], see also Sec. IV.D(v), 9[P].
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IPR2017-01856
Further, Fukushima teaches that the modified completion candidates are obtained
and displayed each time the partial text entry is modified. For example, in
Figures 4-5, Fukushima teaches that if a new character is entered in the direct
character string (i.e., partial text entry) at step 405, the candidate character strings
(i.e., modified plurality of completion candidates) are subsequently updated at step
410, and the process restarts. See Fukushima (EX1003) at 8:16-49, Figs. 4-5, 6E-F.
9[h]. in response to receiving a user input signal associated with initiating

further searching with a completion candidate selected from the search list, (i)
obtaining a further plurality of completion candidates from among the group of
completion candidates; and (ii) displaying the further plurality of completion
candidates in the search list while not displaying the digital keyboard in the
graphical user interface.
Witten teaches obtaining and displaying a further plurality of completion
candidates based on a completion candidate being selected from the search list, and
it would have been obvious to combine this feature into the system of Fukushima.
See Sec. IV.B(i), 19[h]; see also Lieberman Decl. (EX1009) at 50.
Capps teaches displaying a search list of candidates while not displaying the
digital keyboard. See Sec. IV.C(i), 36[c]. It would have been obvious to modify the
system of Fukushima to incorporate the feature of displaying the search list of
candidates while not displaying the digital keyboard, as taught in Capps. See id.;
see also Lieberman Decl. (EX1009) at 57-58. Therefore, limitation 9[h] is
obvious over Fukushima in view of Witten and Capps.
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IPR2017-01856
vi. Claim 10
Claim 10. The method of claim 9, wherein each individual completion candidate
U.S.either
from Patent Mar. 3, of
the first plurality 1998 Sheet
completion candidates 5,724,457
11 o f 16 or the modified plurality
of completion candidates is displayed in the search list with the part of the
individual completion candidate matching the partial text entry displayed in a
manner different from the remaining part of the individual completion
candidate. FIG.10A
-331 in Fukushima.
U.S. This limitation Mar.
Patent is obvious
3, 1998 in light
Sheetof11 othe
f 16 teachings 5,724,457
Specifically, Fukushima teaches that bold, color, underlining or other methods may
FIG.10A
be used to visually differentiate a prediction portion from the partial-entry portion:
FIG.10B
In the shown embodiment, by utilizing the bold -331
letter for the
t 331
predicted character string, the predicted character string is
discriminated from the input character string. The method of
providing distinction for the predicted character is not specified to the
FIG.10B
FIG.10C
bold letter, but can be differentiated in color or in providing underline
t
t k e
a methods.
and other various
331
-331
Fukushima (EX1003) at 13:34-39, see also id. at Figs. 10A-10F.
FIG.10C
FIG.10D
tt aa k e -331
b -331
FIG.10D
FIG.10E
tt a
a bb 1 e -331
-331
FIG.10E
FIG. 1 OF
tt aa bb 11 ee t 49 -331
331
IPR2017-01856
Id. at Figs. 10C & 10E. Further, Fukushima teaches that a user may sequentially
flip through the plurality of completion candidates, with the matching portion (t)
displayed differently from the remaining portion (e.g., ake, alk, able,
U.S. until
Patent 5,724,457
ablet,), the desired candidate is Sheet
Mar. 3, 1998 16 o f 16
selected, as shown below. Id. at 16:66-
17:25.
F IG .1 5 A
331
t a k e
FIG.15B
a 1 k 331
FIG.15C
t a b 1 e 331
FIG.15D
t a b 1 e t -331
FIG.15E
t a b 1 e t -331
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IPR2017-01856
Id. at Figs. 15A-15E. While Fukushima does not expressly show these plurality of
completion candidates with the predicted portion appearing in bold in the search
list per se, a PHOSITA would have found it obvious in light of Fukushima to
display the candidates in this manner in the search list as well, especially given
Fukushimas teaching that full spelling[s] can be used in the search list. See
Fukuishima (EX1003) at 10:10-15; see also Lieberman Decl. (EX1009) at 47. A
PHOSITA would have recognized this visual differentiation technique would have
similarly benefitted Fukushimas separate search list (e.g., because multiple
candidates are displayed simultaneously) in a predictable manner and would have
readily been capable of such minor modifications in Fukushimas software (i.e.,
simply moving the location of differentiated candidates from the entry field to the
search list). See id. at 47.
vii. Claim 16
16. The method of claim 9, wherein each of the plurality of completion

candidates obtained from the group of completion candidates begins with the
partial text entry; and wherein each of the modified plurality of completion
candidates obtained from the group of completion candidates begins with the
partial text entry.
As discussed with respect to limitations 19[b] and 19[g], Fukushima teaches
that each completion candidate in the search list, initial or modified, begins with
the partial text entry. See Section IV.B(i) at 19[b], 19[g]; see also Fukushima
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(EX1003) at 6:10-22, 10:10-15 (full spelling may be used for completion
candidates), Figs. 6C & 6E.
viii. Claim 37
37. The method of claim 36 wherein updating the input string with the selected
completion candidate further comprises displaying a second plurality of possible
completion candidates on the graphical user interface, each comprising the
updated input string, and awaiting further user input.
As discussed, Witten teaches this step in that a selected candidate is used to
update the input string and search for and display further matching candidates, i.e.,
candidates comprising the updated input string, and it would have been obvious
to incorporate this feature into Fukushimas system. See Section IV.B(i), 19[h]; see
also Lieberman Decl. (EX1009) at 46, 49-50.
ix. Claim 39
39. The method of claim 36 wherein each of the first plurality of possible
completion candidates is of at least a predetermined minimum length set by the
user.
Witten teaches this limitation. Witten (EX1004) at 92. Witten teaches that
there are many approaches to determine the allowed length of candidates in text
prediction interfaces. Id. The simplest example Witten teaches is using a fixed
length that fills all available menu space, and it explains that [a] minimum length
of approximately seven characters may be desirable based on the observation that a
minimum preview size of seven letters is needed by normal subjects for efficient
copy-typing. Id.
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IPR2017-01856
Witten teaches that this length feature may be set by the user through the
Reactive Keyboards display control. Id. at 98 (Display control is the means
whereby users modify the parameters of the prompting device. Display control
has been discussed above in terms of how the user can set the length of
predictions.); see also generally id. at 96-99.
A PHOSITA would have found it obvious to incorporate this feature of
Witten into the system of Fukushima in order to avoid annoying or distracting a
user with candidates of too few letters. See Lieberman Decl. (EX1009) at 51-52;
see also Witten (EX1004) at 73 (Table 3.5, listing criticisms on older systems such
as predictions were distracting and needs explicit modifiability to user
preferences). Such would have required only minor modifications in software and
would have yielded predictable results. Lieberman Decl. (EX1009) at 51-52.
x. Claims 3-4, 7-8, 11, 15, 17-18, 38, and 40
See infra Section IV.G.
E. Ground 4: Claims 12-15 are Obvious over Fukushima, Capps,

Witten, and Flinchem
U.S. Patent No. 6,307,548 to Flinchem et al. was filed on September 24,
1998 and is prior art to the 124 Patent pursuant to 35 U.S.C. 102(e). Flinchem
claims priority to its provisional application, filed on September 25, 1997, which
includes a disclosure that is substantially identical to the specification of Flinchem.
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IPR2017-01856
See Flinchem Provisional (EX1008). Flinchem was not cited during prosecution of
the 124 Patent.
Like the 124 Patent, Flinchem relates to systems and methods for entering
text on a computing device, such as a phone, using a digital keyboard. See
Flinchem (EX1006) at Abstract, 1:12-61, 3:34-42; see also id. at 4:55-5:3, 6:4-18,
Figs. 1, 18A-K. Flinchem teaches a keyboard disambiguating system that
suggests words or word stems, ordered by frequency of use that could result from
the keystroke sequence as it is typed by a user. See id. at Abstract, 3:43-57, 4:4-9,
4:55-65, 10:46-59, Figs. 1, 3A-C. Therefore, Flinchem is both within the field of
endeavor of and reasonably pertinent to, and, thus, analogous to the 124 Patent.
See Lieberman Decl. (EX1009), at 59, 41-42.
i. Claim 12
12. The method of claim 9, further comprising: (a) receiving at least the first
character of the partial text entry via the digital keyboard; and (b) displaying
simultaneously the search list and the digital keyboard in the graphical user
interface when the partial text entry comprises at least the first character.
The 124 Patent admits that prior art systems that continually displayed
both a digital keyboard and completion candidate list existed. See 124 Patent
(EX1001) at 2:1-22. Further, Flinchem teaches a digital keyboard 56 being
simultaneously displayed with selection list 70 during input of a keystroke
sequence (i.e., partial text entry comprising at least a first character):
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IPR2017-01856
In accordance with yet another aspect of the invention, multiple
interpretations of the keystroke sequence are provided to the user in
the selection list. These multiple interpretations are simultaneously
presented to the user upon receipt of each keystroke entered by the
user. The user may select from the alternate interpretations by
pressing the Select key a number of times, or by directly touching the
desired interpretation in the selection list presented on a touchscreen.
Flinchem (EX1006) at 4:55-5:3, Fig. 1; see also id. at 10:28-35, Figs. 3A-3C,18A-
K. A PHOSITA would have been motivated to simultaneously display the search
list and the digital keyboard in the graphical user interface when the partial text
entry comprises at least the first character, as taught by Flinchem, in Fukushimas
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IPR2017-01856
system because it was intuitive and beneficial to display at least short search lists
(without consuming excessive space) at the same time as displaying the keyboard
to provide a simpler interface with fewer screen changes and user gestures. See
Lieberman Decl. (EX1009) at 59-61. This would have been a matter of simple
and intuitive user interface design. Id.
ii. Claim 14
14. The method of claim 9, further comprising displaying simultaneously the

digital keyboard and the search list in the graphical user interface while the
digital keyboard is in use.
Flinchem teaches this limitation. See Sec. IV.E(i), claim 12 (Flinchem
teaches that the search list is simultaneously presented to the user upon receipt of
each keystroke entered by the user). As discussed, it would have been obvious to
incorporate this feature of Flinchem into the system of Fukushima. See id.; see also
Lieberman Decl. (EX1009) at 59-61.
iii. Claims 13, 15
F. Ground 5: Claims 19-21 are obvious over Schroeder in view of

Witten
U.S. Patent No. 5,797,098 to Schroeder (Schroeder) was filed on July 19,
1995 and issued on August 18, 1998, and, therefore, is prior art to the 124 Patent
under 35 U.S.C. 102(e). Like the 124 Patent, Schroeder teaches a character input
system wherein one or more completion candidates, such as words, are predicted
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IPR2017-01856
and displayed for selection based upon input of a partial text entry. See Schroeder
(EX1007) at Abstract, 1:37-53, 4:20-7:54, Figs.4-6. And like the 124 Patent,
Schroeder is similarly directed to speeding up input, particularly on handheld
devices with space limitations. Id. at Abstract, 1:5-33. Therefore, Schroeder is both
within the field of endeavor of and reasonably pertinent to, and, thus, analogous to
the 124 Patent. See Lieberman Decl. (EX1009) at 62, 38, 42. Schroeder was
cited in an IDS among over 200 prior art references but was never substantively
discussed during prosecution of the 124 Patent.
i. Claim 19
19[P]. A computer-readable medium comprising codes for directing a processing

unit to process text entered into a personal computing device, by:
Schroeder teaches a computer-readable medium for directing a processing
unit, such as a cellphone, to process text input into the device for a predictive text
entry system:
An improved user interface for cellular or mobile phones, including

[a] word completion method in which a telephone displays user-
defined or predefined candidate words matching initial characters
input by a user, and assigns those candidate words to one or more
available programmable keys.
Schroeder (EX1007) at 1:37-53; see also id. at 4:20-7:54 (describing predictive
character and word entry), Abstract, Figs. 1A-6; see also id. at 3:46-63 (describing
57
IPR2017-01856
the use of a processing system, including a CPU and memory); see also
Lieberman Decl. at 70.
part of the partial text entry via a keyboard, the partial text entry comprising at
Schroeder teaches receiving and displaying a partial text entry:
[A]s shown in FIG. 4, if the user has entered the letters PLE in the
display 11 (either using prior art techniques, or the predictive
keyboard input technique described above), a dictionary lookup
routine may display the word PLEASE, PLEAD, and PLEDGE
on a portion of the display 11 so that the candidate words are placed
adjacent to associated soft keys 9.
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IPR2017-01856
Schroeder (EX1007) at 6:27-34 and Fig. 4; see also id. at 6:46-61, 7:10-25
(describing the search process in a dictionary tree), Fig. 5 (steps 500, 506).
obtaining a plurality of completion candidates from among a group of
completion candidates, wherein each of the plurality of completion candidates
includes a portion matching the partial text entry;
Schroeder teaches, or at least renders obvious, this limitation. Schroeder
teaches obtaining a first plurality of completion candidates from a dictionary (i.e., a
group) of potential candidates in response to receiving a partial text entry, wherein
a portion of each completion candidates, which are word candidates, include a
portion that matches the partial text entry.
[A]s shown in FIG. 4, if the user has entered the letters PLE in the
display 11 (either using prior art techniques, or the predictive
keyboard input technique described above), a dictionary lookup
routine may display the word PLEASE, PLEAD, and PLEDGE
on a portion of the display 11 so that the candidate words are placed
adjacent to associated soft keys 9.
Id. at 6:27-41; see also id. at 6:46-61, 7:10-25 (describing the search process in a
dictionary tree), Figs. 4-6.
Schroeder notes that its system may begin lookup after any integer N
number of characters entered, although it provides 2 or 3 characters as an
example. Id. at 6:46-65. Further, claim 1 of Schroeder expressly teaches
providing completion candidates after a first character in the context of predictive
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IPR2017-01856
text entry. Id. at claim 1 (displaying a next character subset, comprising a
plurality of characters based on at least one preceding input character;); see
also id. at 5:6-14. A PHOSITA would have understood that Schroeders N
represents any number of initial characters, including one. See Lieberman Decl.
(EX1009), at 63. Alternatively, as discussed above, Witten teaches obtaining
completion candidates upon receipt of a first character:
Dictionary words are displayed selectively, based on a context

of one or more initial letters, and accepting a predicted word
completes the initial user-spelled word prefix. Considerable
savings in the average number of strokes per selection (i.e., cost
C) accrue if long words are predicted and selected after only
one or two prefix letters are chosen.
Witten (EX1004) at 52; see also id. at 17-18 (using text from Thomas Hardys Far
From the Madding Crowd as context, noting that the system will recommend
predictions for the user after [h]aving typed the first letter.) Obtaining
completion candidates upon entry of the first character is merely a matter of
programmer preference as to a finite number of known alternatives; therefore, a
PHOSITA would have found it obvious to implement this concept from Witten into
the system of Schroeder, and it would have yielded predictable results. See
Lieberman Decl. (EX1009) at 67-68, 33. Further, a PHOSITA would have been
motivated to combine Wittens teaching of making predictions after a first
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IPR2017-01856
character based on Schroeders express teaching of N input characters, and a
PHOSITA would have found this combination beneficial so as to further reduce
the amount of manual input, which would have furthered Schroeders stated goal
of speeding up input. See id.; see also Schroeder (EX1007) at Abstract, 6:17-22.
19[c]. displaying the plurality of completion candidates in a search list within a

graphical user interface;
Schroeder teaches this limitation. See Section IV.F(i), 19[b].

candidate from among the plurality of completion candidates displayed in the
search list;
Schroeder teaches this limitation:
If one of the candidate words is the word being entered by the user,
then the user need only press the associated soft key 9 to have the
entirety of the candidate word automatically entered into the display
11. Thus, for example, if the user was entering the word PLEASE,
and had already entered the letters PLE, the user need only press the
left-most soft key 9 shown in FIG. 4 to enter the entirety of the word
PLEASE.
Schroeder (EX1007) at 6:23-41; see also id. at 6:46-61, 7:10-25 (describing the
search process in a dictionary tree), Figs. 4-6.
particular completion candidate selected from among the plurality of completion
candidates at least while the particular completion candidate remains selected;
Schroeder teaches this limitation:
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If one of the candidate words is the word being entered by the user,
then the user need only press the associated soft key 9 to have the
entirety of the candidate word automatically entered into the display
11. Thus, for example, if the user was entering the word PLEASE,
and had already entered the letters PLE, the user need only press the
left-most soft key 9 shown in FIG. 4 to enter the entirety of the word
PLEASE.
Id. at 6:23-41; see also id. at 6:46-61, 7:10-25 (describing the search process in a
dictionary tree), Figs. 4-6.
19[f]. detecting modification of the partial text entry by the user via the
keyboard;
Schroeder teaches that if the user continues inputting text without selecting a
completion candidate, the system will continue to detect user input: The user can
continue entering text or commands as desired. If the user does not accept one of
the candidate words (STEP 512), additional input is accepted from the user (STEP
500). See id. at 7:6-9, Fig. 5.

completion candidates from among the group of completion candidates, if the
partial text entry is modified via the keyboard, wherein each of the modified
entry; and
A PHOSITA would understand from Schroeders Figure 5 flow chart that if
a user continues to input text without selecting a completion candidate (STEP 512),
the system will return to the start of the word prediction process at STEP 500,
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IPR2017-01856
await additional user input, and again display closest word matches to the modified
input (i.e., a modified plurality of completion candidates) including a portion
matching the partial text entry:

US. Patent Aug. 18, 1998 Sheet 6 0f 14 5,797,098
/ 500
ACCEPT USER INPUT ___I
502
INPUT I
PROCESS COMMAND COMMAND?
506
DISPLAY INPUT /
CHARACTER
A
MATCH INPUT CHARACTER
f 508
TO DICTIONARY TREE
AFTER lI/INPUT / 570

CHARACTERS, DISPLAY
CLOSEST WORD MATCH
572
USER
ACCEPTS VIA
ASSOCIATED
KEY?
YES
REPLACE USER INPUT

CHARACTERS WITH [574
MATCHING WORD
FIG. 5
See id. at Fig. 5, see also id. at 6:23-7:9; see also Lieberman Decl. (EX1009) at
64.
63
IPR2017-01856
19[h]. obtaining and displaying in the search list a further modified plurality of
completion candidates from among the group of completion candidates, if a
completion candidate is accepted via the search list from the modified plurality
of completion candidates, wherein each of the further modified plurality of
completion candidates includes a portion matching the accepted completion
candidate.
Witten teaches this limitation. See Section IV.B(i), 19[h]. A PHOSITA
would have been motivated to combine Wittens feature of allowing a user to
obtain a new list of further modified completion candidates based on a selected
completion candidate with Schroeders system. See Lieberman Decl. (EX1009) at
66, 68. For example, Schroeder already contemplates that completion candidates
suggested in the list can be continuously updated as additional input is provided
and that the completion candidates will begin with (i.e. a portion will match) the
partial text entry, as discussed above for 19[g]. A PHOSITA would have
appreciated that Schroeder could be modified such that a selected completion
candidate could be used to further search for additional completion candidates, as
taught by Witten, and that this would further Schroeders goal of enhancing speed
and efficiency of input. Id. at 68. Such a feature would have required minimal
programming modifications in the system of Schroeder and would have had
predictable results regarding the display of search candidates. Id.
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ii. Claim 20
20[P]. A method of processing text via a personal computing device using a

pointing device, the method comprising:
Schroeder teaches a method of processing text via a personal computing
device. See Section IV.F(i), 19[P]. A PHOSITA would have understood Schroeder
to teach that its inputs could be performed via a pointing device for each of the
limitations of claim 20, based on Schroeders teaching that a touch panel could
be used. See Schroeder (EX1007) at 2:43-45 (The keys of the cellular telephone 1
may be implemented using any convenient keyboard technology, such as touch
panel, membrane, mechanical, or optical switches.); see also Lieberman Decl.
(EX1009) at 65. Interacting with a touch panel is within the BRI of pointing
device. See 124 Patent (EX1001) at 7:44-53 ([T]he term pointing device
means an input device that allows a user to select one choice amongst one or many
choices (a user-based selection). Some pointing devices enable a user to make
user-based selections, by pointing to a desired choice and include, by way of
example, a pen, stylus, or finger.). Further, the 124 Patent itself recognizes that
pen-based and touch-screen computer systems, including touch screen keyboards,
for example, existed in the prior art. See 124 Patent (EX1001) at 1:30-61.
Therefore, Schroeder, or at least an obvious variation thereof, teaches this
preamble.
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IPR2017-01856
20[a]. receiving via the personal computing device a partial text entry entered
into the personal computing device by a user with the pointing device, the partial
text entry comprising at least a first character;
Schroeder teaches or at least renders obvious this limitation. See Section
IV.F(i), 19[a] & Sec. IV.F(ii), 20[P].
retrieving a first plurality of completion candidates selected from among a group
of completion candidates stored in a dictionary, wherein each of the first
entry;
Schroeder teaches this limitation. See Section IV.F(i), 19[b], 20[P]. Further,
Schroeder teaches use of a dictionary tree for the search function used for word
completion. Schroeder (EX1007) at 7:10-25, Fig. 6. A PHOSITA would
understand that Schroeder uses a dictionary, which the 124 Patent teaches is
merely a data structure for storing completion candidates. See 124 Patent
(EX1001) at 9:11-39; see also Lieberman Decl. (EX1009) at 63.
20[c]. displaying the first plurality of completion candidates in a search list

within a graphical user interface;
Schroeder teaches this limitation. See Section IV.F(i), claim 19[c].
20[d]. receiving a user input signal associated with the pointing device;
Schroeder teaches or at least renders obvious this limitation. See Sections
IV.F(i), 19[d], IV.F(ii), 20[P].
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IPR2017-01856
20[e]. if the user input signal corresponds to a first type of user selection with the
pointing device associated with selecting one of the first plurality of completion
candidates, modifying the partial text entry to become a completion candidate
selected from among the first plurality of completion candidates displayed in the
search list;
2013-007847 at 7-9. However, to the extent this limitation is a necessary step,
Schroeder teaches or at least renders it obvious. See Sections IV.F(i)-(ii), 19[d]-[e]
and 20[P].
20[f]. if the user input signal corresponds to a second type of user selection with
the pointing device associated with using a selected one of the first plurality of
completion candidates to perform further searching, retrieving a second plurality
of completion candidates selected from among the group of completion
candidates stored in the dictionary, wherein each of the second plurality of
completion candidates includes a portion matching the selected one of the first
plurality of completion candidates.
2013-007847 at 7-9. However, to the extent this limitation is a necessary step,
Schroeder in view of Witten renders it obvious. See Section IV.B(i), 19[h]; see
also Section IV.F(ii), 20[P] (relating to pointing device); Lieberman Decl.
(EX1009) at 68. Witten also teaches that in predictive text entry systems, words
can be stored in a dictionary. See Witten (EX1004) at 52-57, 138.
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iii. Claim 21
G. The Computer-Readable Medium Claims
Claims 3, 4, 7, 8, 11, 13, 15, 17, 18, 21, 38, 40, and 41 recite a computer-
readable medium containing instructions for directing a processor unit to perform
the obvious methods recited in claims 2, 1, 6, 5, 10, 12, 14, 16, 9, 20, 37, 39, and
36, respectively. These limitations could be satisfied by a generic computer
carrying out the claimed methods and are therefore obvious over the same grounds
as their respective parent claims. Lieberman Decl. (EX1009) at 69-70; see also
Dann v. Johnston, 425 U.S. 219, 230 (1976) (quoting Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 19 (1966)) (noting that it is but an evenhanded
application to require that those persons granted the benefit of a patent monopoly
be charged with an awareness of computer technology). Additionally, each of the
prior art references cited in this Petition teaches a computing device having
instructions for directing a processor to carry out their inventions. See Fukushima
(EX1003) at 1:5-12, 1:14-20 (disclosing a computer or wordprocessor for carrying
out the invention); Witten (EX1004) at 39; Capps (EX1005) at 1:6-56, 2:37-50,
3:34-65, Fig. 1; Flinchem (EX1006) at claims 1(d), 25(d); Schroeder (EX1007) at
3:46-63, Fig. 1b. A PHOSITA would have understood the same. Lieberman Decl.
(EX1009) at 69-70.
68
IPR2017-01856
Further, during prosecution, the examiner recognized that these limitations
fall with their parents:
In regard to Claims 157, 159 and 162-166, [these claims] merely

recite a computer-readable medium having computer-readable
instructions for execution on a processing unit to perform the method
of Claims 142, 144 and 147-151, respectively. Thus, SofType
discloses every limitation of Claims 157, 159 and 162-166, as
indicated in the above rejection for Claims 142, 144 and 147-151.
File History (EX1002), at 303; see also id. at 306, 313. Therefore, these claims are
obvious over the same grounds as their parents.
V. CONCLUSION
For the forgoing reasons, Petitioner respectfully requests inter partes review
of claims 1-21 and 36-41 of the 124 Patent.
Respectfully submitted,
BY: /s/ Jason R. Mudd_

Jason R. Mudd, Reg. No. 57,700
Eric A. Buresh, Reg. No. 50,394
Ashraf Fawzy, Reg. No. 67,914
Jonathan Stroud, Reg. No. 72,518
ATTORNEYS FOR PETITIONER
69
IPR2017-01856
VI. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1)
A. Real Party-In-Interest
The Petitioner is the real party-in-interest. 37 C.F.R. 42.8(b)(1). No other
party exercised control or could exercise control over Petitioners participation in
this proceeding, the filing of this petition, or the conduct of any ensuing trial.
B. Related Matters
Pursuant to 37 C.F.R. 42.8(b)(2), the 124 Patent is presently the subject of
the following patent infringement lawsuits:
WordLogic Corporation et al. v. Fleksy, Inc., Case No. 1:16-cv-
11714 (N.D. Ill.); and
WordLogic Corporation et al. v. Chicago Logic, Inc., Case No. 1:16-
cv-11713, (N.D. Ill).4
C. Lead and Back-Up Counsel
Petitioner provides the following designation and service information for
lead and back-up counsel. 37 C.F.R. 42.8(b)(3) and (b)(4). Jason Mudd will serve
as lead counsel. Ashraf Fawzy will serve as first back-up counsel. Eric Buresh and
4
In the complaints filed in these matters, WordLogic Corporation and 602531 British
Columbia Ltd. represent that 602531 British Columbia Ltd. owns the 124 Patent and that
WordLogic Corporation is the parent company of 602531 British Columbia Ltd.
70
IPR2017-01856
Jonathan Stroud will serve as additional back-up counsel. Please direct all
correspondence regarding this proceeding to lead and back-up counsel at their
respective e-mail addresses: jason.mudd@eriseip.com, eric.buresh@eriseip.com,
ptab@eriseip.com, afawzy@unifiedpatents.com, and
jonathan@unifiedpatents.com. 37 C.F.R. 42.8(b)(4).
Lead Counsel Back-Up Counsel

Jason R. Mudd (Reg. No. 57,700) Ashraf A. Fawzy (Reg. No. 67,914)
jason.mudd@eriseip.com afawzy@unifiedpatents.com
ptab@eriseip.com Unified Patents Inc.
Postal and Hand-Delivery Address: 1875 Connecticut Ave. NW, Floor 10
ERISE IP, P.A. Washington, D.C. 20009
6201 College Blvd., Suite 300 Telephone: (202) 871-0110
Overland Park, Kansas 66211 Eric A. Buresh (Reg. No. 50,394)
Telephone: (913) 777-5600 eric.buresh@eriseip.com
ptab@eriseip.com
Postal and Hand-Delivery Address:
ERISE IP, P.A.
6201 College Blvd., Suite 300
Overland Park, Kansas 66211
Telephone: (913) 777-5600
Jonathan Stroud (Reg. No. 72,518)
jonathan@unifiedpatents.com
Postal and Hand-Delivery Address:
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Telephone: (202) 805-8931
71
IPR2017-01856
APPENDIX OF EXHIBITS
Exhibit 1001 U.S. Patent 7,681,124 to Gunn et al. (124 Patent)

Exhibit 1002 File History of U.S. Patent 7,681,124 (File History)
Exhibit 1003 U.S. Pat. No. 5,724,457 to Fukushima (Fukushima)
Exhibit 1004 Darragh and Witten, The Reactive Keyboard (1992) (Witten)
Exhibit 1005 U.S. Pat. No. 5,367,453 to Capps et al. (Capps)
Exhibit 1006 U.S. Pat. No. 6,307,548 to Flinchem et al. (Flinchem)
Exhibit 1007 U.S. Pat. No. 5,797,098 to Schroeder et al. (Schroeder)
Exhibit 1008 Provisional Application No. 60/060,223 to Flinchem et al.
(Flinchem Provisional)
Exhibit 1009 Declaration of Dr. Henry Lieberman (Lieberman Decl.)
Exhibit 1010 Curriculum Vitae of Dr. Henry Lieberman
Exhibit 1011 McGranahan et al., An Annotated Bibliography on Human
Computer Interaction for GIS, National Center for Geographic
Information & Analysis, U. Maine Department of Service
Engineering (July 1991)
Exhibit 1012 Guyon et al., Usability Study of text entry interfaces for wireless
personal organizers and communications, Interfaces to real and
virtual worlds, Montpellier (1996)
Exhibit 1013 Sears, Improving touchscreen keyboards: design issues and a
comparison with other devices, Interacting with Computers, 3(3),
pp. 253-269 (1991)
Exhibit 1014 U.S. Pat. No. 4,725,694 to Auer et al. (1986)
Exhibit 1015 Sears et al., A new era for touchscreen applications: High
precision, dragging icons, and refined feedback, U. Maryland
Dept. of Computer Science, at 14, 24 (June 1990) (published in
Advances in Human-Computer Interaction, 3, p. 15 (1991))
Exhibit 1016 U.S. Pat. No. 5,910,802 to Shields et al. (1997)
Exhibit 1017 Guyon and Warwick, Handwriting as a Computer Interface,
National Science Foundation, Survey of the State of the Art of
Human Language Technology (1995)
Exhibit 1018 Apple Computer, Inc., Newton MessagePad 2000 Users Manual
(1997)
Exhibit 1019 U.S. Pat. No. 5,276,794 to Lamb (1994)
IPR2017-01856
Exhibit 1020 U.S. Pat. No. 5,459,796 to Boyer (1994)
Exhibit 1021 U.S. Pat. No. 7,768,501 to Maddalozzo et al. (1998)
Exhibit 1022 Sears et al., Investigating touchscreen typing: the effect of
keyboard size on typing speed, U. Maryland Dept. of Computer
Science, (Oct. 1992) (published in Behaviour & Information
Technology, 12(1), pp. 17-22 (1993))
Exhibit 1023 S. Hunnicutt, Input and output alternatives in word prediction,
KTH Royal Institute of Technology 28 (2-3), pp. 15-29 (1987)
Exhibit 1024 U.S. Patent No. 5,896,321 to Miller (1997)
Exhibit 1025 Heidi Koester and Simon Levine, Model Simulations of User
Performance with Word Prediction, AAC Augmentative and
Alternative Communication (14), pp. 25-35 (March 1998)
Exhibit 1026 Declaration of Scott Bennett, Ph.D.
IPR2017-01856
CERTIFICATION OF WORD COUNT
The undersigned certifies pursuant to 37 C.F.R. 42.24 that the foregoing

Petition for Inter Partes Review, excluding any table of contents, mandatory
notices under 37 C.F.R. 42.8, certificates of service or word count, or appendix of
exhibits, contains 13,949 words according to the word-processing program used to
prepare this document (Microsoft Word).
Dated: July 28, 2017
BY: /s/ Jason R. Mudd_

ATTORNEY FOR PETITIONER

IPR2017-01856
CERTIFICATE OF SERVICE ON PATENT OWNER

UNDER 37 C.F.R. 42.105
Pursuant to 37 C.F.R. 42.6(e) and 42.105, the undersigned certifies that

on July 28, 2017, a complete and entire copy of this Petition for Inter Partes
Review including exhibits was provided via Federal Express to the Patent Owner
by serving the correspondence address of record for the 124 Patent as listed on
PAIR:
Kilpatrick Townsend & Stockton LLP

Mailstop: IP Docketing 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
Further, a courtesy copy of this Petition for Inter Partes Review was sent via
e-mail to Patent Owners litigation counsel:
Anthony E. Dowell
aedowell@dowellip.com
DOWELL IP
333 W. North Ave #341
Chicago, Illinois 60610
Phone: (312) 291-8351
BY: /s/ Jason R. Mudd __

ATTORNEY FOR PETITIONER

Unified Patents Inc. v. 602531 British Columbia Ltd. and WordLogic Corporation, IPR2017-01124 (PTAB Jul. 28, 2017)

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IPR2017-01856

U.S. Patent 7,681,124

Filed on behalf of Unified Patents Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

602531 BRITISH COLUMBIA LTD. and

PETITION FOR INTER PARTES REVIEW

Petitioner Unified Patents Inc. (Petitioner) respectfully requests an Inter

Claims) of U.S. Patent 7,681,124 (the 124 Patent) (EX1001).

Patents purported claim to invention relates to updating a list of completion

candidates based on modified text entry or selection of a prior suggested candidate

of displaying a digital keyboard and presenting a list of completion candidates. Id.

implementation of well-known, predictable programming concepts. Id.

Each limitation of the Challenged Claims, or an obvious variation thereof,

requests institution of inter partes review.

II. SUMMARY OF THE 124 PATENT

A. Description of the alleged invention of the 124 patent

completion candidate. See File History (EX1002) at 12-13. As discussed in more

B. Summary of the prosecution history of the 124 patent

divisional after a restriction requirement in its parent, originally included 33

of completion candidates in response to receiving a signal associated with selecting

candidates matching a portion of a selected completion candidate was not in the

prior art. Id. at 260-62, 265.

The examiner indicated the following reasons for allowance of the

search list. Id. at 178.

For independent claims 138-139 (issued claims 19 and 20), the

further search, which then generates a refined list of completion

candidates; each entry in the refined list includes the characters

comprising the selected completion candidate. Id. at 179.

However, the concept of having a keyboard optionally displayed or

Patent No. 5,367,453 to Capps et al., describes interchangeably displaying a digital

keyboard and a search list of suggested words.

completion candidates based on the prior selected completion candidate. As

III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.

A. Grounds for standing under 37 C.F.R. 42.104(a)

the 124 patent.

Patent are unpatentable and should be cancelled. 37 C.F.R. 42.104(b)(1). Based

be granted. 37 C.F.R. 42.104(b)(2).

C. Level of skill of a person having ordinary skill in the art

degree in computer science, electrical engineering, computer engineering, or a

related to text input user interfaces and/or context-driven user interfaces, or an

equivalent amount of similar work experience or education, with additional

education substituting for experience or additional experience substituting for

education. Lieberman Decl. (EX1009) at 19-21.

D. Claim construction under 37 C.F.R. 42.104(b)(3)

In this proceeding, claim terms of an unexpired patent should be given their

broadest reasonable construction in light of the specification. 37 C.F.R.

specifically discussed below should be given their broadest reasonable construction

in light of the specification.

i. partial text entry

The BRI of partial text entry, as expressly defined by the specification, is

a sequence of one or more characters making up a leading portion of a word,

phrase, or character sequence. See 124 Patent (EX1001) at 5:60-62.

The 124 Patent describes a completion candidate as follows: Each

completion candidate stored in the dictionary 20 represents a word, phrase, or

character sequence according to a particular language. Character sequences may

Patent discloses that completion candidates are suggestions provided to a user in

response to either a partial text entry or a selection of a previous completion

candidate. See id. at 11:62-12:14, 15:62-16:6. Therefore, the BRI of completion

candidate must at least include words, phrases, or character sequences suggested

to continue or complete a word, phrase, or character sequence.

iii. pointing device

The BRI of pointing device, as expressly defined by the specification, is