Trials@uspto.gov
`571-272-7822
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`Paper 7
`Entered: February 9, 2015
`
`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.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`____________
`
`Case IPR2014-01342
`Patent 8,004,497 B2
`____________
`
`
`Before SALLY C. MEDLEY, PATRICK M. BOUCHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`On August 20, 2014, LG Electronics, Inc., LG Electronics U.S.A.,
`Inc., and LG Electronics Mobilecomm U.S.A., Inc. (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
`
`
`571-272-7822
`
`
`
`
`
`Paper 7
`Entered: February 9, 2015
`
`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.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`____________
`
`Case IPR2014-01342
`Patent 8,004,497 B2
`____________
`
`
`Before SALLY C. MEDLEY, PATRICK M. BOUCHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`On August 20, 2014, LG Electronics, Inc., LG Electronics U.S.A.,
`Inc., and LG Electronics Mobilecomm U.S.A., Inc. (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
`
`
`
`IPR2014-01342
`Patent 8,004,497 B2
`
`
`inter partes review of claims 1–4 of U.S. Patent No. 8,004,497 B2 (“the
`’497 patent”). Cypress Semiconductor Corp. (“Patent Owner”) filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”) on December 2, 2014.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review
`of claims 1–4. The Board has not made a final determination of the
`patentability of any claim.
`
`
`I. BACKGROUND
`A. The ’497 patent (Ex. 1001)
`The ’497 patent describes a sensing device having capacitive sensors
`that detect activation of touch-sensor buttons. Ex. 1001, 17:20–22. The
`number of capacitive sensors in the sensing device may be fewer than the
`number of touch-sensor buttons. Id. at 18:44–48. Figures 1B and 6B are
`reproduced below.
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`IPR22014-013442
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`Patennt 8,004,4997 B2
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`nummber of capaacitance seensors is illlustrated inn Figure 6BB and is acchieved byy
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`e aving threeg device haton sensinga three-buttt) depicts aFiguure 1B (left
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`ensing
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`capaacitance sennsors and FFigure 6B (right) deppicts a threee-button s
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`device having two sensorrs.
`The 1:1
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`corresponddence of b
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`uttons andd capacitannce sensorss shown in
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`Figuure 1B is deescribed byy the ’497 patent as ““conventioonal.” Id. aat 1:30.
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`The ability to ssense activvation of a greater nummber of buuttons withh a fewer
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`electtrical connnections bettween the capacitancce sensors aand electriically
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`isolaated areas tthat define the buttonns. In the eexample off Figure 6BB, button
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`601 includes a sensor eleement havinng a surfacce area of aa first condductive
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`mateerial shownn as white;
`ving a
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` button 603 includess a sensor eelement hav
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`buttoon 602 inclludes a sennsor element having eelectricallyy isolated ssurface
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`surfaace area off a second cconductivee material sshown witth hash marrkings; andd
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`areass of the first and secoond conducctive materrials. Id. aat 17:36–466. Each off
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`3
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`IPR2014-01342
`Patent 8,004,497 B2
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`the areas of the first conductive material are electrically coupled to first
`capacitance sensor 201(1) and each of the areas of the second conductive
`material are electrically coupled to second capacitance sensor 201(2). Id. at
`17:46–55.
`
`
`B. Illustrative Claim
`Claim 1 of the ’497 patent is illustrative of the claims at issue:
`1. A method, comprising:
`detecting a presence of a conductive object on a
`capacitance sensing device, the sensing device comprising at
`least two sensing areas each coupled to a capacitance
`measurement input; and
`recognizing activation of at least three button performed
`by the detected presence of the conductive object, wherein the
`number of buttons is equal to at least the number of sensing
`areas plus one and wherein a combination of the at least two
`sensing areas is used to recognize at least one of the activated
`buttons.
`
`
`C. References
`Petitioner relies on the following references.
`US 5,463,388
`Oct. 31, 1995
`US 4,242,676
`Dec. 30, 1980
`US 7,821,502 B2
`Oct. 26, 2010
`JP 10-64386
`Mar. 6, 1998
`
`Boie
`Piguet
`Hristov
`Matsushita
`
`
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1006
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–4 on the following grounds. Pet. 5.
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`4
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`IPR2014-01342
`Patent 8,004,497 B2
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`Reference(s)
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`Boie
`Boie and Piguet
`Hristov, Piguet, and art
`described in the ’497 patent
`Matsushita and Piguet
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`Basis
`
`§ 102(b)
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`Claims
`Challenged
`1 and 3
`2 and 4
`1–4
`
`1–4
`
`E. Related Proceedings
`Petitioner states that the ’497 patent is a subject of the following civil
`action: Cypress Semiconductor Corp. v. LG Electronics, Inc., No. 4:13-cv-
`04034-SBA (N.D. Cal.). Pet. 3.
`
`
`F. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Neither Petitioner nor
`Patent Owner proffers any explicit construction of any claim term.
`For purposes of this decision, we afford claim terms their ordinary and
`customary meaning as would be understood by one with ordinary skill in the
`art, and do not expressly construe them at this time.
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`5
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`IPR2014-01342
`Patent 8,004,497 B2
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`II. ANALYSIS
`A. Anticipation by Boie
`Petitioner contends that claims 1 and 3 are anticipated by Boie. Pet.
`11–18. To support their contention, Petitioner provides claim charts that
`map limitations of claims 1 and 3 to structures described by Boie. Id. at 17–
`18. Petitioner also cites the Declaration of Dr. Phillip Wright for support.
`See Ex. 1010 ¶¶ 52–57, 76–87. Patent Owner does not make arguments, at
`this time, regarding the merits of this ground of unpatentability against the
`challenged claims.
`Boie describes a keyboard input device with an insulating surface
`covering an array of electrodes. Ex. 1002, Abst. Figure 7 of Boie is
`reproduced below.
`
`
`Figure 7 depicts a plurality of keyboard keys on a matrix of sensing
`electrodes. Array 100 is a 4×4 matrix of electrodes, shown by the dotted
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`6
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`IPR2014-01342
`Patent 8,004,497 B2
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`lines, with a keyboard pattern overlay superimposed on the matrix. Id. at
`6:61–64. The identity of a key touched is determined from the x and y
`values computed for the centroid of capacitance resulting from the touch.
`Id. at 7:6–8.
`The present record supports the contention that Boie discloses
`detecting a presence of a conductive object on a capacitance sensing device.
`Pet. 13; Ex. 1010 ¶ 77. The present record also supports the contention that
`activation of buttons is recognized by detecting the presence of a conductive
`object. Pet. 14; Ex. 1010 ¶ 79. Because Boie discloses sixteen sensing
`electrodes (“sensing areas”) and seventeen keys (“buttons”), the present
`record supports the contentions that (1) the sensing device comprises at least
`two sensing areas; (2) activation of at least three buttons is recognized; and
`(3) the number of buttons is equal to at least the number of sensing areas
`plus one. Pet. 15; Ex. 1010 ¶ 80. As Petitioner observes from the drawing,
`at least the buttons “0,” “1,” “2,” “3,” “4,” “5,” “6,” “7,” “8,” “9,” “+,” and
`“Enter” require the combination of at least two sensing areas. Pet. 15–16;
`Ex. 1010 ¶ 81–82.
`In their analysis of claim 3, Petitioner observes that Boie describes
`periodically reading capacitance values for all elements in the array. Pet.
`16–17 (citing Ex. 1002, 5:10–24); Ex. 1010 ¶¶ 84–86). The present record,
`thus, supports Petitioner’s contention that the time dependence recited in
`claim 3 is disclosed by Boie.
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`7
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`IPR2014-01342
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`We conclude that Petitioner has demonstrated a reasonable likelihood
`of prevailing on their challenge of claims 1 and 3 as anticipated by Boie.
`
`
`B. Obviousness over Boie and Piguet
`Petitioner contends that claims 2 and 4 would have been obvious over
`Boie and Piguet. Pet. 18–28. To support their contention, Petitioner
`provides claim charts that map limitations of claims 2 and 4 to structures
`described by Boie. Id. at 27–28. Petitioner also cites the Declaration of Dr.
`Wright for support. See Ex. 1010 ¶¶ 89–95, 105–106. Patent Owner does
`not make arguments, at this time, regarding the merits of this ground of
`unpatentability against the challenged claims.
`The present record supports the contention that activation of buttons
`“2,” “8,” and “5” as shown in Figure 7 of Boie discloses the limitations of
`claim 2 as described by Petitioner and discloses the similar corresponding
`limitations of claim 4. See Pet. 18–22. The present record also supports the
`contention that the periodic reading of capacitance values in Boie as
`described above discloses “scanning the at least two sensing areas of the
`sensing device” as recited in claim 4. See id. at 25.
`Although Petitioner, thus, provides sufficient reasoning to support
`their contention that all limitations of claims 2 and 4 are disclosed by Boie,
`they additionally cite Piguet as “reinforc[ing] the teachings of Boie.” Pet.
`22. Piguet relates to an interactive device for data input that has at least one
`manually actuated sensor, a control display unit, and electronic conversion,
`
`8
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`IPR22014-013442
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`Patennt 8,004,4997 B2
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`reprooduced bellow.
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`memmorization, and decodding meanss. Ex. 100
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`3, 1:6–10.
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` Figure 7
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`of Piguet iis
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`Figuure 7 depictts data-inpput device wwith six eleectrodes 1220 that actt as sensor
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`elemments to perrmit selecttion of twelve symbools 125.
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`The pressent recordd supports tthe contenntion that seelection off symbols
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`“0,” “C,” and ““F” as showwn in Fig. 7 of Pigueet disclosess the limitaations of
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`claimm 2 and thee similar coorrespondiing limitatiions of claaim 4. See
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`Pet. 22–
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`25; EEx. 1010 ¶¶¶ 96–102.
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`likelihoodd
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`We concclude that PPetitioner hhas demonnstrated a rreasonable
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`of prrevailing oon their chaallenge of cclaims 2 annd 4 as obvvious over r Boie and
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`Piguuet.
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`C. Otther Grounnds
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`Pursuantt to 35 U.SS.C. § 316((b), rules fofor inter paartes proceeedings
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`weree promulgaated to takee into accoount the “reegulation oon the econnomy, the
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`integgrity of thee patent sysstem, the eefficient addministratioon of the OOffice, andd
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`IPR2014-01342
`Patent 8,004,497 B2
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`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R. §
`42.108(b).
`We have considered Patent Owner’s arguments that, to the extent we
`institute review, we should institute review based on Hristov, Piguet, and art
`described in the ’497 patent. Prelim. Resp. 8–21. We agree with Patent
`Owner that proceeding on a narrower set of grounds will result in
`efficiencies, but we disagree that proceeding only on the Hristov-based
`ground would be the best way to accomplish those efficiencies. Based on
`the record before us, we exercise our discretion and decline to institute
`review based on the asserted grounds that claims 1–4 would have been
`obvious over Hristov, Piguet, and the art described in the ’497 and that
`claims 1–4 would have been obvious over Matsushita and Piguet. See
`37 C.F.R. § 42.108(a).
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that an inter partes review is instituted with respect to the
`following grounds of unpatentability:
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`10
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`IPR2014-01342
`Patent 8,004,497 B2
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`1. Claims 1 and 3 as anticipated by Boie; and
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`2. Claims 2 and 4 as obvious over Boie and Piguet;
`
`FURTHER ORDERED that review is not instituted with respect to
`any other grounds;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’497 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
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`11
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`IPR2014-01342
`Patent 8,004,497 B2
`
`
`PETITIONER
`Jason M. Shapiro
`Soumya Panda
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`jshapiro@rfem.com
`spanda@rfem.com
`
`
`PATENT OWNER
`Robert R. Laurenzi
`Robert S. Magee
`KAYE SCHOLER LLP
`robert.laurenzi@kayescholer.com
`robert.magee@kayescholer.com
`
`
`
`
`12
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`
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