Paper No. 6
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC. AND
`LG ELECTRONICS MOBILECOMM U.S.A, INC.
`Petitioners,
`
`v .
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`
`Case IPR2014-01302
`Patent 8,059,015
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Before ANDREW KELLOGG, Trial Paralegal
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC. AND
`LG ELECTRONICS MOBILECOMM U.S.A, INC.
`Petitioners,
`
`v .
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`
`Case IPR2014-01302
`Patent 8,059,015
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Before ANDREW KELLOGG, Trial Paralegal
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2014-01302
`
`Page
`
`I.
`
`II.
`
`A.
`
`B.
`
`C.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ...........1
`
`THE BOARD SHOULD PROCEED ONLY ON GROUNDS 1 AND 2.......2
`
`Petitioner fails to articulate why the multiple grounds of purported
`invalidity are not redundant, the differences between the grounds and the
`differences among the references underlying the grounds ..........................4
`
`Proceeding on multiple grounds will be inefficient.....................................7
`
`Efficiency dictates that the Board institute trial only on the
`Hristov-Based Grounds (Grounds 1 and 2) .................................................9
`
`1.
`
`2.
`
`3.
`
`Hristov describes Boie as redundant.........................................................9
`
`The Hristov-Based Grounds assert only a single reference....................12
`
`Proceeding only on the Hristov-Based Grounds would be most
`efficient in view of the related patents and proceedings ........................12
`
`a. The IPRs for the ’015 Patent, ’497 Patent and
`’973 Patents are related .......................................................................13
`
`III. CONCLUSION..............................................................................................19
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2014-01302
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`Page(s)
`
`CASES
`Larose Industries, LLC v. Capriola Corp.,
`IPR2013-00120 (Paper 20, July 22, 2013) ...........................................................5
`
`Liberty Mutual Ins. Comp. v. Progressive Ins. Comp.,
`CBM2012-00003 (Paper 7, October 25, 2012) ....................................................4
`
`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00075 (Paper 15, June 13, 2013)...........................................................5
`
`Scentair Technologies v. Prolitec, Inc.,
`IPR2013-00179 (Paper, 18 August 23, 2013) ......................................................5
`
`Sony Corp. v. Yissum Research Development Co. of the Hebrew Univ. of
`Jerusalem,
`IPR2013-00219 (Paper 33, Nov. 21, 2013)..........................................................5
`
`Zoll Lifecor Corp. v. Koninklijke Philips Elecs. N.V.,
`IPR2013-00616 (Paper 14, Jan 13, 2014)...........................................................15
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00133 (Paper 53, February 26, 2014) .................................................15
`
`STATUTES
`
`37 C.F.R. § 42 ............................................................................................................4
`
`37 C.F.R. § 42.1(b) ..........................................................................................4, 6, 20
`
`37 C.F.R. § 42.8(b)(2)..............................................................................................13
`
`37 C.F.R. § 42.107(a).................................................................................................1
`
`37 C.F.R. § 42.108(b) ................................................................................................6
`
`35 U.S.C. § 314(a) ...................................................................................................19
`
`35 U.S.C. § 326(b) .....................................................................................................4
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`ii
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`Case IPR2014-01302
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`Page(s)
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`OTHER AUTHORITIES
`
`157 Cong. Rec. S1350 (daily ed. Mar. 8, 2011) ......................................................19
`
`iii
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`
`
`Exhibit No.
`
`LIST OF EXHIBTS
`
`Description
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`Case IPR2014-01302
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`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`U.S. Patent No. 8,004,497 to XiaoPing (filed on May 18, 2006)
`(issued on Aug. 23, 2011)
`Petition To Institute an Inter Partes Review of U.S. Patent No.
`8,004,497 (Case No. IPR2014-01342)
`U.S. Patent No. 8,519,973 to XiaoPing (filed on April 9, 2012)
`(issued on Aug. 27, 2013)
`Petition To Institute an Inter Partes Review of U.S. Patent No.
`8,519,973 (Case No. IPR2014-01343)
`Liberty Mutual Ins. Comp. v. Progressive Ins. Comp., CBM2012-
`00003 (Paper 7, October 25, 2012)
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00075 (Paper 15, June
`13, 2013)
`Scentair Technologies v. Prolitec, Inc., IPR2013-00179 (Paper 18,
`August 23, 2013)
`Larose Industries, LLC v. Capriola Corp., IPR2013-00120 (Paper
`20, July 22, 2013)
`Sony Corp. v. Yissum Research Development Co. of the Hebrew
`Univ. of Jerusalem, IPR2013-00219 (Paper 33, November 21, 2013)
`Patent and Trademark Office, Office Patent Trial Practice Guide
`(published in Fed. Reg. Vol. 77, No. 157, August 14, 2012)
`Zoll Lifecor Corp. v. Koninklijke Philips Elecs. N.V., IPR2013-
`00616 (Paper 14, January 13, 2014)
`Congressional Record, 112th Congress, 1st Session, Vol. 157, No.
`34, S1348 (March 8, 2011) (statement of Sen. Leahy)
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133 (Paper
`53, February 26, 2014)
`
`iv
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`
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`Case IPR2014-01302
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`I. INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.107(a), the Patent Owner, Cypress
`
`Semiconductor Corp. (“Cypress” or “Patent Owner”), hereby submits the
`
`following Preliminary Response to the Petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 8,059,015 (“the ’015 Patent,” Exhibit 1001). For reasons explained
`
`below, this Preliminary Response is similar to the Preliminary Responses that will
`
`be filed in response to the Petitions for Inter Partes Review of U.S. Patent No.
`
`8,004,497 (“the ’497 Patent,” Exhibit 2001) (IPR2014-01342, petition attached as
`
`Exhibit 2002) and U.S. Patent No. 8,519,973 (“the ’973 Patent,” Exhibit 2003)
`
`(IPR2014-01343, petition attached as Exhibit 2004). In each IPR, including the
`
`present IPR for the ’015 Patent, the Petitioner proposes multiple pieces of
`
`redundant prior art in multiple redundant grounds within each petition and
`
`proposes the same or similar redundant art across the three petitions. Proceeding on
`
`redundant grounds and art within and across similar petitions without proper
`
`justification, as Petitioner urges, would run contrary the Board’s duty to pursue a
`
`just, speedy and efficient resolution of these proceedings. For the present ‘015
`
`Patent Petition, to the extent the Board determines that institution is warranted, the
`
`Board should proceed on only the limited grounds proposed herein.
`
`For reasons that will be fully explained, Patent Owner respectfully requests
`
`that the Board deny the Petition for IPR of the ’015 Patent on Grounds 3 and 4 and
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`1
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`Case IPR2014-01302
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`proceed, if at all, only on Grounds 1 and 2. Similarly, Patent Owner will request
`
`that this Board deny the Petition for IPR of the ’973 Patent on Ground 1 and deny
`
`the Petition for the ’497 Patent on Grounds 1, 2 and 4. All of these challenges rely
`
`on the same redundant references.1 Denying Petitioner’s challenges in this fashion
`
`would still allow for institution of trial against all of the claims challenged by
`
`Petitioner while providing for the most efficient proceeding in line with PTAB
`
`precedent.
`
`II. THE BOARD SHOULD PROCEED ONLY ON GROUNDS 1 AND 2
`
`The present Petition challenges claims 1, 2, 4-7, 13, 15, 17-19, 21 and 22 of
`
`the ’015 Patent (“the challenged claims”). Petition, Paper 1 at 5. Petitioner presents
`
`two sets of separate grounds against each of the challenged claims using different
`
`prior art references and combinations as follows:
`
`Grounds 1 and 2: All Challenged Claims - Hristov-Based Grounds
`
`Ground 1: Claims 1, 2, 4 and 6 are anticipated by Hristov (Exhibit 1004,
`
`U.S. Patent No. 7,821,502).
`
`Ground 2: Claims 5, 7, 13, 15, 17-19, 21 and 22 are obvious under §103(a)
`
`over Hristov.
`
`1 Ground 4 of the ’497 Patent IPR Petition is directed to an additional
`
`reference, Matsushita, and should be denied for the reasons that will be noted in
`
`Patent Owner’s Preliminary Response to the ’497 Patent IPR Petition.
`
`2
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`Case IPR2014-01302
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`Grounds 3 and 4: All Challenged Claims - Boie, Andre and Hristov
`(Boie-Based Grounds):
`
`Ground 3: Claims 1, 2, 4-7, 13, 17-19, 21 and 22 are obvious under §103(a)
`
`over Boie (Exhibit 1002, U.S. Patent No. 5,463,388) and Andre (Exhibit 1012,
`
`U.S. Patent No. 7,844,914).
`
`Ground 4: Claim 15 is obvious under §103(a) over Boie, Andre and
`
`Hristov.
`
`As shown above, Grounds 1 and 2 are based on a single reference, Hristov.
`
`Grounds 3 and 4 together challenge the same claims as those of Grounds 1 and 2,
`
`but assert Boie as the primary reference in combination with Andre. Boie and
`
`Andre are also combined with Hristov, but only as to claim 15 (Ground 4). Except
`
`for the Ground 4 challenge to claim 15, where Hristov is used merely as secondary
`
`reference, Grounds 1 and 2 do not share any common references with Ground 3
`
`and 4, yet challenge the same set of claims. Thus, for the complete set of
`
`challenged claims, Petitioner presents alternative grounds of invalidity based on
`
`Section 102 and Section 103 without explaining why the Board should consider
`
`two sets of grounds of invalidity against the same claims using different references.
`
`For each challenged claim, Petitioner thus presents, without justification, two sets
`
`of grounds where only one is substantively necessary to address Petitioner’s
`
`assertion of invalidity. This is neither efficient nor fair. Patent Owner requests a
`
`fair and efficient process if the Board decides to institute IPR on the challenged
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`3
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`Case IPR2014-01302
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`claims of the ’015 Patent. Trial should proceed, if at all, only on a single coherent
`
`non-redundant set of grounds against each challenged claim, namely, the Hristov-
`
`Based Grounds, Grounds 1 and 2.
`
`A.
`
`Petitioner fails to articulate why the multiple grounds of
`purported invalidity are not redundant, the differences between
`the grounds and the differences among the references underlying
`the grounds
`
`Part 42 of Title 37, Code of Federal Regulations, governs proceedings before
`
`the Board and 37 C.F.R. § 42.1(b) provides that “[t]his part shall be construed to
`
`secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§ 42.1(b). When applying these regulations, the Board has considered “the effect of
`
`the regulations on the economy, the integrity of the patent system, the efficient
`
`administration of the Office, and the ability of the Office to timely complete
`
`proceedings” as mandated by 35 U.S.C. § 326(b). Liberty Mutual Ins. Comp. v.
`
`Progressive Ins. Comp., CBM2012-00003 (Paper 7, October 25, 2012), Exhibit
`
`2005 at 2. Granting Inter Partes Review on Petitioner’s redundant grounds would
`
`be contrary to these statutory considerations and would frustrate Congressional
`
`intent.
`
`A petition that includes alternative grounds for challenging patentability
`
`should explain the differences between the references and why the proposed
`
`grounds are not redundant. The focus of a redundancy designation is whether “the
`
`Petitioner articulated a meaningful distinction in terms of relative strengths and
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`4
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`Case IPR2014-01302
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`weaknesses with respect to application of the reference disclosures to one or more
`
`claim limitations.” Oracle Corp. v. Clouding IP, LLC, IPR2013-00075 (Paper 15,
`
`June 13, 2013), Exhibit 2006 at 3. Even where the references may be
`
`fundamentally different with respect to theories of invalidity or disclosures of
`
`certain claim limitations, such differences are insufficient, “[w]hat matters for
`
`determining redundancy of grounds is whether petitioner has articulated
`
`meaningful distinction in the potential strength and weaknesses of the applied prior
`
`art.” Id. at 4. See also, Scentair Technologies v. Prolitec, Inc., IPR2013-00179
`
`(Paper, 18 August 23, 2013), Exhibit 2007 at 3 (“To avoid a determination that a
`
`requested ground of review is redundant of another requested ground, a petitioner
`
`must articulate a meaningful distinction in terms of relative strengths and
`
`weaknesses with respect to application of the prior art reference disclosures to one
`
`or more claim limitations.”); Larose Industries, LLC v. Capriola Corp., IPR2013-
`
`00120, (Paper 20, July 22, 2013), Exhibit 2008 at 4 (“[T]he focus of redundancy is
`
`on whether a petitioner articulated a meaningful distinction in terms of relative
`
`strengths and weaknesses with respect to application of the prior art reference
`
`disclosures to one or more claim limitations.”). Where redundant grounds are
`
`offered, the Board may choose to proceed only upon non-redundant grounds. See
`
`id. at 3; Sony Corp. v. Yissum Research Development Co. of the Hebrew Univ. of
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`5
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`Case IPR2014-01302
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`Jerusalem, IPR2013-00219 (Paper 33, Nov. 21, 2013), Exhibit 2009 at 3 (citing 37
`
`C.F.R. §§ 42.1(b), 42.108(b)).
`
`The ‘015 IPR Petition is silent as to how any one prior art reference
`
`underlying a proposed ground of invalidity is different from another and, indeed,
`
`fails to even offer a description of the individual references themselves. Although
`
`the Declaration accompanying the Petition does describe each of the references
`
`underlying the Hristov-Based Grounds and the Boie-Based Grounds, the declarant
`
`fails to explain how any one reference is different from the others or how one
`
`reference is stronger or weaker than another as applied to the claim elements. See
`
`Exhibit 1010, Declaration of Dr. Philip Wright (“Declaration”) at ¶¶ 49-55,
`
`describing Hristov; ¶¶ 56-63, describing Boie; ¶¶ 64-66, describing Andre. A
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`cursory overview of the prior art that fails to compare and contrast the art is
`
`insufficient to support Petitioner’s request for trial on multiple references and
`
`multiple grounds.
`
`With specific regard to the grounds, the underlying principle regarding
`
`redundancy is that a Petitioner should assert the strongest ground and not burden
`
`the Patent Owner or the Board with other grounds that provide no meaningful
`
`difference over the strongest ground. If there is no meaningful difference between
`
`grounds then the Petitioner should assert just one cohesive set of related grounds.
`
`Simply proposing different grounds of unpatentability based on different
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`6
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`Case IPR2014-01302
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`combinations of prior art references does not meaningfully distinguish the asserted
`
`prior art references or their combinations.
`
`Here, Petitioner fails to explain why any one set of grounds proposed for
`
`invalidating the challenged claims is different from the other set of grounds or why
`
`one set of grounds is not redundant with respect to the other. The Petition describes
`
`the Hristov-Based Grounds (Ground 1 and Ground 2) in pages 10-30 and the Boie-
`
`Based Grounds (Ground 3 and Ground 4) from pages 31-54, but never explains
`
`their differences or their relative strengths and weaknesses. Similarly, Petitioner’s
`
`declarant explains his opinion as to the Hristov-Based Grounds at ¶¶ 82-154 and
`
`the Boie-Based Grounds at ¶¶ 155-218 without ever explaining how one set of
`
`grounds is different from the other set. Exhibit 1010, Declaration. In the absence of
`
`such analysis, the Board has no obligation to proceed on both grounds.
`
`B.
`
`Proceeding on multiple grounds will be inefficient
`
`Petitioner’s assertion of redundant grounds without articulating why one set
`
`of grounds has any particular strength or weakness relative to the other set of
`
`grounds is little more than an attempt to advance the same argument multiple times
`
`based on different but undistinguished art. A trial considering both the Hristov-
`
`Based Grounds and the Boie-Based Grounds would run contrary to the legislative
`
`intent of the AIA and would compel the Board to unnecessarily expend time and
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`7
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`Case IPR2014-01302
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`effort to consider two sets of grounds, when the same result, whatever that result
`
`may be, could be reached through trial instituted on only a single set of grounds.
`
`The multiple sets of grounds that Petitioner presents rely upon different
`
`references. The Hristov-Based Grounds, Grounds 1 and 2, rely solely upon Hristov
`
`while the Boie-Based Grounds, Grounds 3 and 4, rely primarily on Boie in
`
`combination with Andre. By necessity, more effort must be expended by Patent
`
`Owner and the Board to address both sets of grounds than would be needed if only
`
`a single set of grounds were pursued. Because Petitioner failed to explain the
`
`differences between the proposed grounds or the underlying references, failed to
`
`articulate their respective strengths and weaknesses, and because proceeding on
`
`only a single set of grounds would be more efficient than proceeding on both sets
`
`of grounds, Patent Owner urges the Board to proceed upon only a single set of
`
`grounds. Should the Board decide to institute trial, Patent Owner believes it would
`
`be most efficient to proceed only on the Hristov-Based Grounds, Grounds 1 and 2,
`
`for the reasons that follow.2
`
`2 No adverse inference should be drawn from Patent Owner’s decision not to
`
`wholly oppose institution of this IPR. See Patent and Trademark Office, Office
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`Patent Trial Practice Guide (published in Fed. Reg. Vol. 77, No. 157, August 14,
`
`2012), Exhibit 2010 at § II-C.
`
`8
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`Case IPR2014-01302
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`C.
`
`Efficiency dictates that the Board institute trial only on the
`Hristov-Based Grounds (Grounds 1 and 2)
`
`As a prior art reference, Hristov, the underlying reference for Grounds 1 and
`
`2, affords the Board an opportunity to narrow the grounds of review without
`
`prejudice to Petitioner. The relation of Boie as prior art to Hristov, Petitioner’s
`
`assertion that Hristov can stand on its own as an invalidating reference, and the
`
`presence of Hristov as a prior art reference in all of the related IPRs justifies
`
`resolution of this matter with a directed review utilizing only Hristov as the
`
`common prior art reference. Moreover, all of the claims of the ’015 Patent
`
`challenged in Grounds 1 and 2 are likewise challenged in Grounds 3 and 4, claims
`
`1, 2, 4-7, 13, 15, 17-19, 21 and 22. Paper 1 at 5, 10, 21, 30 and 54. Thus, Petitioner
`
`would have a full opportunity to challenge the validity of all of the claims it raises
`
`even if the Board proceeds only on the Hristov-Based Grounds, Grounds 1 and 2.
`
`1.
`
`Hristov describes Boie as redundant
`
`Hristov describes itself as including the teachings of Boie but further
`
`including improvements on Boie’s teachings and therefore Boie should be
`
`considered redundant in light of Hristov. Hristov was filed on July 5, 2006, more
`
`than 10 years after Boie’s October 31, 1995 issue date. Compare Exhibits 1002 and
`
`1004, Cover Pages. The inventors of Hristov were aware of Boie and discuss the
`
`disclosure of Boie in the Background section of Hristov. Hristov, Exhibit 1004 at
`
`9
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`
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`2:19-31 and Fig. 2. Hristov even illustrates Boie in Figure 2 and explicitly
`
`describes it as prior art:
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`Case IPR2014-01302
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`Hristov then provides a description of Boie. Hristov describes the design of Boie’s
`
`sensors with regard to Figure 2: “Fig. 2 schematically shows a position sensor 12
`
`based on a matrix of conductors . . . . [where] [t]he position sensor 12 comprises a
`
`number of vertically aligned strip electrodes (columns) 14 mounted on an upper
`
`surface of an insulating substrate 16 and a number of horizontally aligned strip
`
`electrodes (rows) 15 mounted on an opposing lower surface of the insulating
`
`substrate.” Id. at 2:19-25. Hristov also describes Boie’s capacitance measurement
`
`circuitry: “[e]ach vertical strip electrode is connected to a channel of capacitance
`
`measurement circuitry in a controller 18.” Id. at 2:25-27. Hristov next explains the
`
`coordinate output operation of Boie: “[t]hus, this type of position sensor allows an
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`10
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`Case IPR2014-01302
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`X-Y coordinate output of a continuous nature by means of calculation of a centroid
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`of capacitance among the rows and columns rather than among discrete pads.” Id.
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`at 2:27-31.
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`After describing Boie, the inventors of Hristov identify the teachings that
`
`Boie lacks in comparison to Hristov’s disclosure. Id. at 2:31-33. Hristov describes
`
`Boie’s shortcomings with respect to sensor layer design: “[h]owever [Boie’s] type
`
`[of position sensor] requires two sensing layers so that the matrix traces can be
`
`routed, and does not allow the use of optically clear materials.” Id. at 2:31-33.
`
`Having addressed Boie’s failings, Hristov states that it (Hristov) provides for a
`
`touch surface that would “require only one sensing layer with no crossovers in the
`
`sensing region” and “be usable with clear sensing layers.” Id. at 2:38-40. Thus,
`
`Hristov describes Boie as having sensors, capacitance measurement circuitry and
`
`the ability to output touch coordinates, but lacking a particular construction of
`
`sensing layers that Hristov teaches. Hristov therefore builds upon the teachings of
`
`Boie and adds the additional feature of facilitating a single sensing layer and a
`
`clear sensing layer. In the absence of Petitioner’s explanation as to how Hristov
`
`and Boie differ, for purposes of the Board’s review of the challenged claims,
`
`Boie’s teachings as compared to Hristov’s may be considered redundant. The
`
`references cover the same subject matter and because Hristov was written after
`
`Boie and purports to build upon Boie’s teachings by including additional features,
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`Case IPR2014-01302
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`it may be considered the more fulsome disclosure. Therefore, the Board should
`
`proceed with grounds based on Hristov as the primary reference, i.e., Grounds 1
`
`and 2.
`
`2.
`
`The Hristov-Based Grounds assert only a single reference
`
`Petitioner asserts that Hristov alone renders each challenged claim
`
`anticipated or obvious. On the other hand, Petitioner admits that Boie lacks at least
`
`the element “pre-defined areas disposed adjacent to one another” of independent
`
`claims 1 and 7 and therefore combines Boie with the teachings of Andre to meet
`
`this claim element. Paper 1 at 38, 47. Thus, Petitioner asserts that Hristov can stand
`
`on its own as a prior art reference, whereas Boie cannot. Boie must be combined
`
`with at least one additional reference, Andre, under Petitioner’s alternate invalidity
`
`theory for the challenged claims. Id. Because Hristov can, according to Petitioner,
`
`stand on its own as an invalidating reference as to the challenged claims whereas
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`Boie cannot, it would be more efficient to proceed on the grounds based on
`
`Hristov, Grounds 1 and 2, as opposed to those based on Boie, Grounds 3 and 4.
`
`3.
`
`Proceeding only on the Hristov-Based Grounds would be
`most efficient in view of the related patents and proceedings
`
`The ’015 Patent shares a common inventor, disclosure, and similar claim
`
`language with the ’497 Patent and the ’973 Patent. The three patents are related as
`
`are Petitioner’s respective IPR Petitions against each patent. Considering the three
`
`IPRs collectively, Petitioner asserts Hristov as an invalidating prior art reference in
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`12
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`Case IPR2014-01302
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`a more straight-forward manner, i.e., alone, in combination with fewer references,
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`and/or in fewer combinations with other art generally, as compared to any other
`
`asserted reference. The Board should therefore proceed on the Hristov-Based
`
`Grounds in this proceeding, as well as in the ’497 Patent IPR and the ’973 Patent
`
`IPR, as those grounds constitute the most logical and efficient path forward across
`
`all three cases.
`
`a.
`
`The IPRs for the ’015 Patent, ’497 Patent and
`’973 Patents are related
`
`The IPRs for the ’015 Patent, ’497 Patent and ’973 Patent are related. To this
`
`end, Petitioner admits that the IPRs for the ’497 Patent and ’973 Patent would be
`
`affected by a decision in the present proceeding pursuant to 37 C.F.R. § 42.8(b)(2).
`
`Paper 1 at 3.
`
`The ’’015 Patent of the present IPR proceeding is related to the underlying
`
`patents of the ’497 Patent IPR and the ’973 Patent IPR. The ’973 Patent is a
`
`continuation of the ’497 Patent and therefore shares a common specification and
`
`inventors with the ’‘497 Patent. Compare Exhibits 2001 and 2003, Cover Pages.
`
`The ’015 Patent, in turn, shares a common inventor, Jiang XiaoPing, with the
`
`’497 Patent and ’973 Patent. Compare Exhibits 1001, 2001 and 2003, Cover Pages.
`
`Further, the respective patent specifications share similar content and disclosures.
`
`For example, the three patents describe a similar type of sensor array and detection
`
`13
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`
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`circuitry. Compare Exhibit 1001 at 2:28-31 and Exhibit 2001 at 3:1-4. Their
`
`respective illustrations are indistinguishable:
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`Case IPR2014-01302
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`Figure 5A, ‘973/’497 Patents
`
`Figure 5A of the ’015 Patent
`
`The challenged claims of the three patents also share similar, but not
`
`identical, claim language. Claim 1 of the ’015 Patent recites “the presence of the
`
`conductive object is determined” (Exhibit 1001 at 24:18-19) and claim 1 of the
`
`’497 Patent recites “detecting the presence of a conductive object” (Exhibit 2001 at
`
`23:34). Claim 1 of the ’015 Patent recites “sensor elements” (Exhibit 1001 at 24:7)
`
`while claim 1of the ’497 Patent recites “sensing areas” (Exhibit 2001 at 23:26, 31,
`
`32). Claim 1 of the ’015 Patent recites selecting a “keyboard key” (Exhibit 1001 at
`
`24:17) while claim 1 of the ’497 Patent recites recognizing activation of “buttons”
`
`(Exhibit 2001 at 23:28). Similar, but not identical, claim language is also found
`
`between the ’015 Patent and the ’973 Patent. Claim 1 of the ’015 Patent recites
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`14
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`
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`Case IPR2014-01302
`
`“the presence of the conductive object is determined” (Exhibit 1001 at 24:18-19)
`
`and claim 1 of the ’973 Patent recites “to detect a presence of a conductive object”
`
`(Exhibit 2003 at 23:42-43). Claim 1 of the ’015 Patent recites “sensor elements”
`
`(Exhibit 1001 at 24:7) while claim 1of the ’973 Patent also recites “sense
`
`elements” (Exhibit 2003 at 23:41). Claim 1 of the ’015 Patent recites selecting a
`
`“keyboard key” (Exhibit 1001 at 24:17) while claim 1 of the ’973 Patent recites
`
`recognizing activation of “button areas” (Exhibit 2003 at 23:47-48).
`
`Thus, the common inventors, disclosures and similar claim language of the
`
`underlying patents confirm that the ’015 Patent IPR is related to the ’973 Patent
`
`IPR and the ’497 Patent.
`
`In view of the relatedness of the three IPRs, a consideration of the
`
`efficiencies gained across the three cases if the Board institutes trial only on the
`
`Hristov-Based Grounds is warranted. Where the Board identifies related patents in
`
`a family, it may direct the parties to proceed in a consistent manner so as to avoid
`
`unnecessary and redundant work both by the parties and the Board. See, e.g., Zoll
`
`Lifecor Corp. v. Koninklijke Philips Elecs. N.V., IPR2013-00616 (Paper 14, Jan 13,
`
`2014), Exhibit 2011 at 2 (ordering the Petitioner to “file the identical brief in all
`
`eight (8) pending cases”); ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-
`
`00133 (Paper 53, February 26, 2014), Exhibit 2013 at 1-2 (ordering consolidated
`
`oral hearing across four IPRs of related patents where claim construction and prior
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`15
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`Case IPR2014-01302
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`art overlap). Should the Board consolidate any phase or aspect of the cases,
`
`selection of the Hristov-Based Grounds in the ’015 Patent IPR would translate
`
`favorably for action in the other cases, which should also be limited to the Hristov-
`
`Based Grounds to achieve efficiency.
`
`The similarity of grounds asserted across the three IPRs reflects the
`
`similarity of the challenged patents. The following table summarizes the grounds
`
`asserted against each challenged claim in each of the three IPRs:
`
`’497
`Claim
`1
`
`2
`
`3
`
`4
`
`’973
`Claim
`1
`
`2
`
`3
`
`4
`
`Invalidity
`Grounds
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`
`Invalidity
`Grounds
`102 - Boie
`103- APA, Hristov,
`and Piquet
`103- Matsushita,
`and Piquet
`103 - Boie, and
`Piquet
`103- APA, Hristov,
`and Piquet
`103- Matsushita,
`and Piquet
`102 - Boie
`103- APA, Hristov,
`and Piquet
`103- Matsushita,
`and Piquet
`103 - Boie, and
`Piquet
`103- APA, Hristov,
`and Piquet
`103- Matsushita,
`and Piquet
`
`16
`
`’015
`Claim
`1
`
`Invalidity
`Grounds
`102 - Hristov
`103 - Boie and
`Andre
`
`2
`
`4
`
`5
`
`102 - Hristov
`103 - Boie and
`Andre
`
`102 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`
`
`’973
`Claim
`5
`
`6
`
`7
`
`8
`
`11
`
`12
`
`14
`
`15
`
`Invalidity
`Grounds
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`
`’497
`Claim
`
`Invalidity
`Grounds
`
`Case IPR2014-01302
`
`’015
`Claim
`6
`
`Invalidity
`Grounds
`102 - Hristov
`103 - Boie and
`Andre
`
`7
`
`13
`
`15
`
`17
`
`18
`
`19
`
`21
`
`103 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie,
`Andre, and
`Hristov
`
`103 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`
`17
`
`
`
`’497
`Claim
`
`Invalidity
`Grounds
`
`Case IPR2014-01302
`
`’015
`Claim
`
`Invalidity
`Grounds
`Andre
`
`22
`
`103 - Hristov
`103 - Boie and
`Andre
`
`’973
`Claim
`
`16
`
`17
`
`18
`
`19
`
`20
`
`Invalidity
`Grounds
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`103 - Boie,
`and Bisset
`103- APA,
`Hristov, and
`Piquet
`
`See Exhibit 2002 at 11; Exhibit 2004 at 10. What is immediately apparent is that
`
`Hristov is consistently asserted alone or in combination with the APA and Piquet
`
`in all grounds across all three petitions. It is asserted in combination with the APA
`
`and Piquet against all challenged claims of the ’973 Patent and ’497 Patent and, as
`
`discussed above, asserted alone against all of challenged claims of the ’015 Patent.
`
`18
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`
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`Case IPR2014-01302
`
`Boie, on the other hand, is asserted in at least five distinct ways alone and in
`
`combination with four different references: (1) alone (claims 1 and 3 of the ’497
`
`patent); (2) with Andre (claims 1, 2, 4, 5, 6, 7, 13, 15, 17, 18, 19, 21 and 22 of the
`
`’015 Patent); (3) with Piquet (clams 2 and 4 of the ’497 Patent); (4) with Bisset
`
`(claims 1-8, 11, 12, 14-20 of the ’973 patent); and (5) with Hristov itself (claim 15
`
`of the ’015 Patent). Should the Board consolidate any parts of the related IPR
`
`proceedings, the Hristov-Based Grounds are the best, most efficient choice on
`
`which to proceed across all three petitions. The Hristov-Based Grounds would
`
`require consideration of the fewest number of references, fewest unique
`
`combinations of references, and the minimal number of invalidity arguments.
`
`III. CONCLUSION
`
`Congress empowered this Board to use its expertise to review patents
`
`through Inter Partes Review as a “more efficient alternative to litigation.” 157
`
`Cong. Rec. S1350 (daily ed. Mar. 8, 2011) (statement of Sen. Leahy), Exhibit
`
`2012. The Petitioner has the burden to show that institution is warranted in these
`
`cases at all. See 35 U.S.C. § 314(a). To the extent that the Board determines that
`
`institution is warranted on any claim of the ’015 Patent, Patent Owner respectfully
`
`suggests that it should only do so only on those challenges based primarily on the
`
`Hristov reference, Grounds 1 and 2. Patent Owner submits that this is the most fair
`
`way to ensure the “just, speedy, and inexpensive resolution of [this] proceeding”
`
`19
`
`
`
`while maintaining the future integrity of Board decisions related to needlessly
`
`redundant challenges. 37 C.F.R. § 42.1(b).
`
`Case IPR2014-01302
`
`Dated: November 25, 2014
`
`Respectfully submitted,
`
`By: /Robert R. Laurenzi/
`Robert R. Laurenzi
`Reg. No. 45,557
`
`Kaye Scholer LLP
`250 West 55th Street
`New York, NY 10019-9710
`T: 212.836.7235
`F: 212.836.6427
`Email: Robert.Laurenzi@kayescholer.com
`
`Counsel for Patent Owner
`Cypress Semiconductor Corporation
`
`20
`
`
`
`Case IPR2014-01302
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
`
`that on November 25, 2014, a complete and entire copy of this Patent Owner
`
`Cypress Semiconductor Corp.’s Preliminary Response was provided via email to
`
`the Petitioner by serving the correspondence email address of record as follows:
`
`Jason Shapriro
`Soumya Panda
`ROTHWELL, FIGG, ERNST & MANBECK
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`Email: jshapiro@rothwellfigg.com
`spanda@rothwellfigg.com
`
`By: /Robert R. Laurenzi/
`Robert R. Laur
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