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 IPR2014-01342
`Patent 8,004,497
`
`Before ANDREW KELLOGG, Trial Paralegal
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`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 IPR2014-01342
`Patent 8,004,497
`
`Before ANDREW KELLOGG, Trial Paralegal
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2014-01342
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ...........1
`
`THE BOARD SHOULD PROCEED ONLY ON GROUND 3......................2
`
`A.
`
`B.
`
`C.
`
`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..............................8
`
`Efficiency dictates that the Board institute trial only on the
`Hristov-based ground (Ground 3) .........................................................9
`
`1.
`
`2.
`
`3.
`
`Hristov describes Boie as redundant.........................................10
`
`Petitioner asserts that Hristov includes all of the elements
`of at least challenged independent claim 1 ...............................12
`
`Proceeding only on the Hristov-based grounds would be
`most efficient in view of the related patents and
`proceedings ...............................................................................14
`
`III. CONCLUSION..............................................................................................21
`
`i
`
`
`
`Case IPR2014-01342
`
`TABLE OF AUTHORITIES
`
`CASES
`Larose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (Paper 20, July 22, 2013) ...........................................................5
`
`Page(s)
`
`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 Techs. v. Prolitec, Inc.,
`IPR2013-00179 (Paper 18, August 23, 2013) ......................................................5
`
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00219 (Paper 33, Nov. 21, 2013)..........................................................6
`
`Zoll Lifecor Corp. v. Koninklijke Philips Elecs. N.V.,
`IPR2013-00616 (Paper 14, Jan 13, 2014)...........................................................17
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00133 (Paper 53, February 26, 2014) .................................................17
`
`STATUTES
`
`35 U.S.C. § 314........................................................................................................21
`
`35 U.S.C. § 326(b) .....................................................................................................4
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.1(b) ..........................................................................................4, 6, 22
`
`37 C.F.R. § 42.8(b)(2)..............................................................................................15
`
`37 C.F.R. § 42.107(a).................................................................................................1
`
`37 C.F.R. § 42.108(b) ................................................................................................6
`
`157 Cong. Rec. S1350 (daily ed. Mar. 8, 2011) ......................................................21
`
`ii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`Case IPR2014-01342
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`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)
`
`U.S. Patent No. 8,059,015 to Hua & XiaoPing (filed on
`May 25, 2006) (issued on Nov. 15, 2011)
`
`Petition To Institute an Inter Partes Review of U.S. Patent
`No. 8,059,015 (Case No. IPR2014-01302)
`
`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 Techs. v. Prolitec, Inc., IPR2013-00179 (Paper 18,
`August 23, 2013)
`
`Larose Indus., 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)
`
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-
`
`iii
`
`
`
`Case IPR2014-01342
`
`00133 (Paper 53, February 26, 2014)
`
`2013
`
`112th Congress, 1st Session, Issue 157 Cong. Rec. S1350
`(daily ed. March 8, 2011) (statement of Sen. Leahy)
`
`iv
`
`
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`Case IPR2014-01342
`
`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. 8,004,497 (“the ‘497 Patent,” Exhibit 1001). For the reasons
`
`explained below, this Preliminary Response is similar to the Preliminary Response
`
`that is filed concurrently herewith in response to the Petition for Inter Partes
`
`Review of U.S. Patent No. 8,519,973 (“the ‘973 Patent,” Exhibit 2001) (IPR2014-
`
`01343, petition attached as Exhibit 2002) and the Preliminary Response that was
`
`filed in response to the Petition for Inter Partes Review of U.S. Patent No.
`
`8,059,015 (“the ‘015 Patent,” Exhibit 2003) (IPR2014-01302, petition attached as
`
`Exhibit 2004). In each IPR petition, including the present IPR petition for the ‘497
`
`Patent, the Petitioner proposes multiple pieces of redundant prior art in multiple
`
`redundant grounds within each petition and proposes the same or similar redundant
`
`prior art across the three petitions. Proceeding on redundant grounds and prior art
`
`within and across similar petitions without proper justification, as Petitioner urges,
`
`would run contrary to the Board’s duty to pursue the just, speedy, and efficient
`
`resolution of these proceedings. For the present ‘497 Patent IPR Petition, to the
`
`extent the Board determines that institution is warranted, the Board should proceed
`
`on a single ground.
`
`1
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`
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`Case IPR2014-01342
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`For reasons that will be fully explained herein, Patent Owner respectfully
`
`requests that the Board deny the Petition for IPR of the ’497 patent on Grounds 1,
`
`2 and 4 and proceed, if at all, only on Ground 3. Similarly, Patent Owner requested
`
`that this Board deny the Petition for IPR of the ‘015 Patent on Grounds 3 and 4 and
`
`that this Board deny the Petition for IPR of the ’973 Patent on Ground 1. All of
`
`these challenges rely on the same redundant references, except for Ground 4 of the
`
`‘497 Patent IPR Petition. (Ground 4 utilizes a Japanese language reference not
`
`raised in the other two petitions.) Denying Petitioner’s redundant challenges in
`
`would still allow for the 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 GROUND 3
`
`The present Petition challenges claims 1-4 of the ‘497 Patent (“the
`
`challenged claims”). Petition, Paper 1 at 5. Petitioner presents four separate
`
`grounds of invalidity against the challenged claims:
`
`Ground 1: Claims 1 and 3 are anticipated under Section 102(b) over Boie
`
`(Exhibit 1002, U.S. Patent No. 5,463,388).
`
`Ground 2: Claims 2 and 4 are obvious under Section 103(a) over Boie and
`
`Piquet (Exhibit 1003, U.S. Patent No. 4,242,676).
`
`2
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`
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`Case IPR2014-01342
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`Ground 3: Claims 1-4 are obvious under Section 103(a) over the APA
`
`(“Admitted Prior Art”, Exhibit 1001, ‘497 Patent), Hristov (Exhibit 1004, U.S.
`
`Patent No. 7,821,502), and Piquet.
`
`Ground 4: Claims 1-4 are obvious under Section 103(a) over Matsushita
`
`(JPH1064386A, Exhibit 1006), and Piquet.
`
`When each challenged claim is considered individually, the table below shows that
`
`Petitioner asserts three theories of invalidity against each of claims 1-4.
`
`Claim Challenge
`1
`102 – Boie
`103 - APA, Hristov and Piquet
`103 - Matsushita and Piquet
`
`2
`
`3
`
`4
`
`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
`
`Here, Petitioner presents three alternate grounds of invalidity against each claim
`
`but without explanation how or why the theories underlying the respective grounds
`
`are not redundant and without discussion as to why the Board should consider
`
`three theories of invalidity against each challenged claim. Petitioner thus presents,
`
`3
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`Case IPR2014-01342
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`without justification, three theories of invalidity against each claim 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 should
`
`the Board decide to institute IPR of any of the challenged claims of the ‘497
`
`Patent. Trial should proceed, if at all, only on a single cohesive theory of
`
`invalidity, namely, that based on Ground 3.
`
`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 underlying the grounds and
`
`4
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`Case IPR2014-01342
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`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 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 Techs. 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 Indus., 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
`
`5
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`
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`Case IPR2014-01342
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`id. at 3; Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of
`
`Jerusalem, IPR2013-00219 (Paper 33, Nov. 21, 2013), Exhibit 2009 at 3 (citing 37
`
`C.F.R. §§ 42.1(b), 42.108(b)).
`
`The ‘497 Patent IPR Petition is silent as to how any one prior art reference
`
`underlying the proposed grounds 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 each ground, the declarant fails to explain how any one
`
`reference is different from the others or how any one reference is stronger or
`
`weaker than another as applied to the claim elements. See Exhibit 1010,
`
`Declaration of Dr. Philip Wright (“Declaration”) at ¶¶ 47-50, describing the
`
`alleged APA; ¶¶ 52-57, describing Boie; ¶¶ 58-60, describing Hristov; ¶¶ 61-64,
`
`describing Piguet; ¶¶ 65-70, describing Matsushita. A cursory overview of the
`
`prior art that fails to compare and contrast the prior 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 a
`
`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 a petitioner should assert just one ground. Simply proposing different
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`6
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`Case IPR2014-01342
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`grounds of unpatentability based on different combinations of prior art references
`
`does not meaningfully distinguish the asserted prior art references or their
`
`combinations.
`
`Here, Petitioner fails to explain why one ground proposed for invalidating
`
`the challenged claims is different from the other or why one ground is not
`
`redundant with respect to the other. The Petition describes Ground 1 in pages 11
`
`through 18, Ground 2 in pages 18 through 28, Ground 3 in pages 28 through 46,
`
`and Ground 4 in pages 46 through 60 but never explains their differences or
`
`relative strengths and weaknesses. Similarly, Petitioner’s declarant provides his
`
`opinion as to Ground 1 at ¶¶ 76-87, Ground 2 at ¶¶ 77-110, Ground 3 at ¶¶ 111-
`
`160 and Ground 4 at ¶¶ 161-199 without ever explaining how one ground is
`
`different from the other. Declaration, Exhibit 1010. Petitioner’s failure to explain
`
`the differences among the prior art and the grounds is particularly notable in the
`
`present case where common references are asserted across the proposed grounds,
`
`such as Piquet in Grounds 2, 3 and 4 and Boie in Grounds 1 and 2. The overlap of
`
`prior art references raises the specter of redundancy of the proposed grounds, yet
`
`Petitioner remains silent on the question. In the absence of analysis demonstrating
`
`that the proposed grounds are not redundant, the Board has no obligation to
`
`proceed on all of the proposed grounds.
`
`7
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`Case IPR2014-01342
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`B.
`
`Proceeding on multiple grounds will be inefficient
`
`Petitioner’s assertion of redundant grounds without articulating why one
`
`ground has any particular strength or weakness relative to any other ground is little
`
`more than an attempt to advance the same argument multiple times based on
`
`different but undistinguished art. A trial considering Grounds 1, 2, 3 and 4, where
`
`each challenged claim faces three separate theories of invalidity based on a variety
`
`of prior art combinations, would run contrary to the legislative intent of the
`
`America Invents Act and would compel the Board to unnecessarily expend time
`
`and effort to consider four grounds, when the same result, whatever that result may
`
`be, could be reached through trial instituted on a single ground.
`
`The multiple grounds that Petitioner presents rely upon five different
`
`references in total. Grounds 1 and 2 rely upon Boie. Ground 4 relies upon
`
`Matsushita. Grounds 2, 3 and 4 rely upon Piquet. Ground 3 also relies on the APA
`
`and Hristov. By necessity, more effort must be expended by Patent Owner and the
`
`Board to address all four proposed grounds that assert a total of five prior art
`
`references than would be needed if only a single ground 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 ground would be more efficient than
`
`8
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`Case IPR2014-01342
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`proceeding on four grounds, Patent Owner urges the Board to proceed upon only a
`
`single ground.
`
`Should the Board decide to institute trial, Patent Owner believes it would be
`
`most efficient to proceed only on Ground 3 for the reasons that follow.1
`
`C.
`
`Efficiency dictates that the Board institute
`trial only on the Hristov-based ground (Ground 3)
`
`As a prior art reference, Hristov, the primary underlying reference for
`
`Ground 3, 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
`
`whereas Matsushita cannot, and the presence of Hristov as a prior art reference in
`
`all of the related IPR proceedings 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 ‘497 Patent challenged in Ground 3 are also challenged in
`
`Grounds 1, 2 and 4 (claims 1-4). Paper 1 at 5. Thus, Petitioner would have a full
`
`1 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
`
`Patent Trial Practice Guide (published in Fed. Reg. Vol. 77, No. 157, August 14,
`
`2012), Exhibit 2010 at § II-C
`
`9
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`Case IPR2014-01342
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`opportunity to challenge the validity of all of the claims in question even if the
`
`Board proceeds only on the Hristov-based ground, Ground 3.
`
`1.
`
`Hristov describes Boie as redundant
`
`Hristov describes itself as including the teachings of Boie but further
`
`including improvements on Boie’s teachings, 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 2:19-31 and
`
`Fig. 2. Hristov even purports to illustrate Boie’s teachings in Figure 2 and
`
`explicitly describes it as prior art:
`
`Hristov also 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
`
`10
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`Case IPR2014-01342
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`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. Additionally, Hristov 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. Next, Hristov
`
`explains the coordinate output operation of Boie: “[t]hus, this type of position
`
`sensor allows an X-Y coordinate output of a continuous nature by means of
`
`calculation of a centroid of capacitance among the rows and columns rather than
`
`among discrete pads.” Id. at 2:27-31.
`
`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
`
`11
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`Case IPR2014-01342
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`sensing layers that Hristov teaches. Hristov therefore builds upon the teachings of
`
`Boie and adds additional features such as facilitating a single sensing layer and a
`
`clear sensing layer. In the absence of any explanation from Petitioner as to how
`
`Hristov and Boie differ or how one reference is stronger than the other, for the
`
`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, Hristov is the more
`
`fulsome disclosure for consideration. Therefore, the Board should proceed with the
`
`ground based on Hristov, Ground 3.
`
`2.
`
`Petitioner asserts that Hristov includes all of the elements of
`at least challenged independent claim 1
`
`Although Petitioner proffers Hristov in combination with other prior art as a
`
`Section 103 obviousness challenge, the Petition and Declaration nevertheless states
`
`that Hristov teaches “all of the features” of challenged independent claim 1. Paper
`
`1 at 34 (“Hristov also teaches all of the features of claim 1”) and Exhibit 1010 at
`
`¶131 (“Hristov also teaches all of the features of claim 1 . . .”). On the other hand,
`
`Petitioner admits that Matsushita lacks at least the element “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
`
`12
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`Case IPR2014-01342
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`to recognize at least one of the activated buttons” of claim 1 and therefore
`
`combines Matsushita with the teachings of Piquet to meet this claim element.
`
`Paper 1 at 51. Thus, with regard to independent claim 1, Petitioner asserts that
`
`Hristov can stand on its own as a prior art reference, whereas Matsushita cannot.
`
`Matsushita must be combined with at least one additional reference, Piquet, under
`
`one of Petitioner’s invalidity theories for claim 1, i.e., Ground 4. Id. Because
`
`Hristov can, according to Petitioner, stand on its own as an invalidating reference
`
`as to the challenged independent claims whereas Matsushita cannot, it would be
`
`more efficient to proceed on the ground based on Hristov (Ground 3) as opposed to
`
`the ground based on Matsushita (Ground 4) should the Board decide to institute
`
`trial.
`
`Matsushita is a Japanese language reference. See Exhibit 1006. If inter
`
`partes review is instituted on Ground 4 with Matsushita as the base reference,
`
`Patent Owner’s counsel will likely be required to secure their own translation of
`
`the document to ensure accuracy. Any translation disputes, which could involve
`
`testimony of translators, would have to be resolved by the Board. Utilizing an
`
`English language document such as Hristov avoids this needless inefficiency.
`
`Finally, Petitioner’s assertion that Hristov teaches all of the elements of the
`
`challenged independent claim raises the question why Petitioner asserted Hristov
`
`in combination with the alleged APA and Piquet as a Section 103 challenge as
`
`13
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`Case IPR2014-01342
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`opposed to asserting Hristov alone under Section 102. Petitioner’s actions in this
`
`respect further demonstrate the overall redundant nature of the grounds underlying
`
`the Petition as well as highlight Petitioner’s failure to carefully and succinctly put
`
`forth what it considers to be its strongest theory of invalidity.
`
`3.
`
`Proceeding only on the Hristov-based grounds would be
`most efficient in view of the related patents and proceedings
`
`The ‘497 Patent shares a common inventor, disclosure, and similar claims
`
`language with the ‘973 Patent and the ‘015 Patent. The three patents are related as
`
`are Petitioner’s respective IPR Petitions challenging each patent. Considering the
`
`three IPRs collectively, Petitioner asserts Hristov as an invalidating prior art
`
`reference in a more straight-forward manner, i.e., in combination with fewer prior
`
`art references and in a fewer number of combinations generally, as compared to
`
`any other asserted reference. The Board should therefore proceed on the Hristov-
`
`based ground in this proceeding, as well as the Hristov-based grounds in the ‘973
`
`Patent IPR and the ‘015 Patent IPR, as these grounds constitute the most logical
`
`and efficient path forward across all three cases.
`
`a.
`
`The IPRs for the ‘497 Patent, ‘973 Patent, and ‘015
`Patent are related
`
`The IPR proceedings for the ‘973 Patent, the ‘497 Patent and the ‘015 Patent
`
`are related. To this end, Petitioner admits that the IPR proceedings for the ‘973
`
`14
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`
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`Case IPR2014-01342
`
`Patent and the ‘015 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 challenged ‘497 Patent of the present proceeding is the grandparent
`
`continuation parent to the ’973 Patent. Exhibit 2001, Cover Page. The patents share
`
`a sole common inventor and a common specification. Compare Exhibits 1001 and
`
`2001. The challenged claims of the ‘497 Patent, claims 1-4, like the challenged
`
`claims of the ‘973 Patent, relate to detecting the presence of a conductive object
`
`with respect to sensors in order to recognize the activation of buttons. The
`
`challenged claims of the two patents share similar, but not identical, claim
`
`language. For example, claim 1 of the ‘973 Patent recites “to detect the presence of
`
`a conductive object” (Exhibit 2001 at 23:42) and claim 1 of the ‘497 Patent recites
`
`“detecting the presence of a conductive object” (Exhibit 1001 at 23:24). Claim 1 of
`
`the ‘973 Patent refers to “sense elements” (Exhibit 2001 at 23:41) and claim 1 of
`
`the ‘497 Patent references “sensing areas” (Exhibit 1001 at 23:26). Claim 1 of the
`
`‘973 Patent recites “recognizing an activation of one of three or more button areas”
`
`(Exhibit 2001 at 23:47-48) and claim 1 of the ‘497 Patent recites “recognizing
`
`activation of at least three button performed by the detected presence of the
`
`conductive object” (Exhibit 1001 at 23:28-29). This similarity of claim language
`
`further confirms the relation between the IPR proceedings.
`
`15
`
`
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`Case IPR2014-01342
`
`The present IPR proceeding is also related to the ‘015 Patent IPR
`
`proceeding. The ‘497 Patent and the ‘015 Patent share a common inventor, Jiang
`
`XiaoPing. Compare Exhibits 1001 and 2003, Cover Pages. Further, the respective
`
`patent specifications share similar content and disclosure. For example, both
`
`patents describe a similar type of sensor array and detection circuitry. Compare
`
`Exhibit 2003 at 2:28-31 and Exhibit 1001 at 3:1-4. Their respective illustrations are
`
`indistinguishable:
`
`Figure 5A of the ‘497 Patent
`
`Figure 5A of the ‘015 Patent
`
`The challenged claims of each patent also share similar, though not identical, claim
`
`language. Claim 1 of the ‘015 Patent recites “the presence of the conductive object
`
`is determined” (Exhibit 2003 at 24:18-9) and claim 1 of the ‘497 Patent recites
`
`“detecting the presence of a conductive object” (Exhibit 1001 at 23:34). Claim 1 of
`
`the ‘015 Patent recites “sensor elements” (Exhibit 2003 at 24:7) while claim 1of
`
`16
`
`
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`Case IPR2014-01342
`
`the ‘497 Patent recites “sensing areas” (Exhibit 1001 at 23:26, 31, 32). Claim 1 of
`
`the ‘015 Patent recites selecting a “keyboard key” (Exhibit 2003 at 24:17) while
`
`claim 1 of the ‘497 Patent recites recognizing activation of “buttons” (Exhibit 1001
`
`at 23:28). Thus, the common inventors, disclosures, and similar, but not identical,
`
`claim language of the underlying patents confirm that the ‘015 Patent IPR petition
`
`is also related to the ‘497 Patent IPR petition.
`
`In view of the relatedness of the three IPR proceedings, 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 2012 at 1-2 (ordering consolidated
`
`oral hearing across four IPRs of related patents where claim construction and prior
`
`art overlap). Should the Board consolidate any phase or aspect of the cases,
`
`selection of the Hristov-based ground in the ‘497 Patent IPR petition would
`
`translate favorably for action in the other cases, which should also be limited to the
`
`Hristov-based grounds to achieve efficiency.
`
`17
`
`
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`Case IPR2014-01342
`
`The similarity of grounds asserted across the three IPR petitions illustrates
`
`the similarity of the challenged patents. The following table summarizes the
`
`grounds asserted against each claim in each of the three IPR petitions:
`
`‘973
`Claim
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`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
`
`‘497
`Claim
`1
`
`2
`
`3
`
`4
`
`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
`
`‘015
`Claim
`1
`
`Invalidity
`Grounds
`102 - Hristov
`103 - Boie and
`Andre
`
`2
`
`4
`
`5
`
`6
`
`7
`
`102 - Hristov
`103 - Boie and
`Andre
`
`102 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`102 - Hristov
`103 - Boie and
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`18
`
`
`
`Case IPR2014-01342
`
`‘015
`Claim
`13
`
`Invalidity
`Grounds
`103 - Hristov
`103 - Boie and
`Andre
`
`15
`
`17
`
`18
`
`19
`
`21
`
`22
`
`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
`Andre
`
`103 - Hristov
`103 - Boie and
`Andre
`
`‘973
`Claim
`7
`
`8
`
`11
`
`12
`
`14
`
`15
`
`16
`
`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
`
`‘497
`Claim
`
`Invalidity
`Grounds
`
`19
`
`
`
`Case IPR2014-01342
`
`‘497
`Claim
`
`Invalidity
`Grounds
`
`‘015
`Claim
`
`Invalidity
`Grounds
`
`‘973
`Claim
`17
`
`18
`
`19
`
`20
`
`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
`
`See Exhibit 2002 at 5; Exhibit 2004 at 5. What is immediately apparent is that
`
`Hristov is consistently asserted alone or in combination with the APA and Piquet
`
`in all grounds and across all three petitions. Hristov is asserted in combination with
`
`the APA and Piquet against all challenged claims of the ‘973 Patent and the ‘497
`
`Patent and asserted alone against all of the challenged claims of the ‘015 Patent.
`
`Boie, on the other hand, is asserted in at least five distinct ways, alone and in
`
`c
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