Paper 7
`Trials@uspto.gov
`571-272-7822
`
`Date 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 IPR2014-01343
`Patent 8,519,973 B1
`____________
`
`Before SALLY C. MEDLEY, PATRICK M. BOUCHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG
`
`Electronics Mobilecomm U.S.A., Inc., filed a Petition requesting an inter
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date 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 IPR2014-01343
`Patent 8,519,973 B1
`____________
`
`Before SALLY C. MEDLEY, PATRICK M. BOUCHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG
`
`Electronics Mobilecomm U.S.A., Inc., filed a Petition requesting an inter
`
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`IPR2014-01343
`Patent 8,519,973 B1
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`
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`partes review of claims 1–8, 11, 12, and 14–20 of U.S. Patent No. 8,519,973
`B1 (Ex. 1001, “the ’973 patent”) under 35 U.S.C. §§ 311–319. Paper 1
`(“Petition” or “Pet.”). Patent Owner, Cypress Semiconductor Corporation,
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314. Section 314 provides that an inter partes
`review may not be instituted “unless . . . the information presented in the
`petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1–8, 11, 12, and 14–20 of the ’973 patent.
`
`A. Related Proceedings
`According to Petitioner, the ’973 patent is involved in, at least, the
`following lawsuit: Cypress Semiconductor Corp. v. LG Electronics, Inc.,
`No. 4:13-cv-04034-SBA (N.D. Cal.). Pet. 3.
`
`B. The ’973 Patent
`The ’973 patent relates to an apparatus and method for detecting the
`presence of a conductive object on a sensing device, and recognizing three
`or more button operations performed by the conductive object using two
`sensing areas of the sensing device. Ex. 1001, 2:55–59, Fig. 6B. Figure 6B
`is reproduced below.
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`IPR22014-013443
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`Patennt 8,519,9773 B1
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`is one morre button
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`
`
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`Figure 66B illustrates a configguration whhere there
`
`
`claimed inn the ’973 ppatent.
`
`
`
`the numbeer of sensoors, as desccribed and
`than
`
`
`
`In Figure 6B, proccessing devvice 210 is
`
`
`used to deetect whethher a
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`
`
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`
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`condductive object is present on eithher, or nonee, of touchh-sensor buuttons 601–
`
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`603. Ex. 1001, 17:52–533. Processiing device 210 uses ccapacitancce sensors
`
`
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`the three bbuttons. Idd. at 18:12–
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`
`
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`201((1) and 2011(2) to meaasure capaccitance on
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`38. In Figure 66B, button 601 is couupled to caapacitance
`
`sensor 2011(1), button
`
`603
`
`
`
`
`
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`is coupled to capacittance sensoor 201(2), aand buttonn 602 is couupled to
`
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`Id. at 17:330–40. Bassed on the
`
`
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`bothh capacitance sensors 201(1) an
`d 201(2).
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`capaacitance vaariation measured at ppins 609 annd 610, proocessing deevice 210
`
`
`
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`
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`can ddetermine which of tthe three toouch-sensoor buttons hhave been ppressed,
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`whille using onnly two cappacitance seensors. Idd. at 18:39––48.
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`– – n
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`IPR2014-01343
`Patent 8,519,973 B1
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`C. Illustrative Claim
`Claims 1, 7, and 17 are independent claims. Claim 1 is a method
`claim and claims 7 and 17 are apparatus and system claims, respectively.
`Claims 2–6 depend, either directly or indirectly, from claim 1. Claims 8–16
`depend, either directly or indirectly, from claim 7. Claims 18–20 depend
`directly from Claim 17. Claim 1 is illustrative of subject matter in this
`proceeding, and is reproduced below.
`1. A method comprising:
`determining capacitance variations of a first number of
`two or more sense elements of a touch screen device using a
`processing device to detect a presence of a conductive object on
`any one of a second number of three or more button areas of the
`touch screen device, wherein the first number of sense elements
`is less than the second number of button areas; and
`recognizing an activation of one of the three or more
`button areas using the determined capacitance variations of the
`first number of two or more sense elements.
`
`Id. at 23:39–49.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–8, 11, 12, and 14–20 are unpatentable
`based on the following grounds:
`References
`Boie1 and Bisset2
`Hristov3, Piguet4, and art described
`in the ’973 patent
`
`Challenged Claim(s)
`1–8, 11, 12, and 14–20
`1–8, 11, 12, and 14–20
`
`Basis
`§ 103(a)
`§ 103(a)
`
`
`1 U.S. Patent No. 5,463,388, issued Oct. 31, 1995 (Ex. 1002) (“Boie”).
`2 U.S. Patent No. 5,543,588, issued Aug. 6, 1996 (Ex. 1008) (“Bisset”).
`3 U.S. Patent No. 7,821,502 B2, issued Oct. 26, 2010 (Ex. 1004) (“Hristov”).
`4 U.S. Patent No. 4,242,676, issued Dec. 30, 1980 (Ex. 1003) (“Piguet”).
`4
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`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner does not contend any specific claim terms need
`construction, and submits that the challenged claims should be given their
`plain and ordinary meaning. Pet. 6–7. Patent Owner also does not contend
`that any terms need construction. For purposes of this decision, we need not
`construe any limitations of the challenged claims.
`B. Obviousness over Boie and Bisset
`Petitioner contends that claims 1–8, 11, 12, and 14–20 are
`unpatentable under 35 U.S.C. § 103 as obvious over Boie and Bisset. To
`support its contention, Petitioner provides a detailed showing mapping
`limitations of claims 1–8, 11, 12, and 14–20 to structures described by Boie
`and Bisset. Pet. 10–37. Petitioner also cites the Declaration of Dr. Phillip
`Wright for support. See Ex. 1010 ¶¶ 51–59, 67–207.
`Boie (Ex. 1002)
`Boie describes a keyboard input device with an insulating surface
`covering an array of electrodes arranged in a grid and connected in columns
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`and rrows. Ex. 1002, Absstract. Eacch column
`
`
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`and row iss connectedd to
`
`lumn and rrow. Id.
`
`
`
`
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`circuuitry for measuring thhe capacitaance seen bby each co
`
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`The position off an objectt, such as aa finger or hhandheld sstylus, withh respect too
`
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`the aarray is dettermined frrom the cenntroid of ssuch capaciitance valuues, which
`
`
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`is caalculated inn a microcoontroller. IId. Figuree 7 of Boie
`
`
`
`
`is reproduuced beloww.
`
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`
`
`f sensing a matrix ofd keys on aof keyboardplurality oFigure 77 depicts a
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`
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`
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`electtrodes.
`
`
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`
`
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`Array 1000 is a 4x44 matrix of f electrodess, with a keeyboard paattern
`
`
`
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`overrlay superimmposed onn the matrixx. Id. at 6::61–64. Thhe identityy of a key
`
`
`
`
`
`
`
`
`
`
`touchhed is deteermined froom the x annd y valuees computeed for the ccentroid of
`
`capaacitance ressulting fromm the toucch. Id. at 7
`
`
`
`:6–8.
`
`Bisset (EEx. 1008)
`
`
`
`
`
`
`Bisset iss directed tto a handheeld computting devicee with capaacitive
`
`
`
`
`
`
`
`sensing electroonics that ““respond too the proximmity of a ffinger to tr
`
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`
`
`
`
`capaacitance chhanges of thhe conducttors causedd by fingerr proximityy into
`
`
`
`
`
`
`posittion and toouch pressuure informaation,” whhere the outtput of the
`
`
`
`
`capaacitance sennsing electtronics “is a simple XX, Y and prressure vallue of the
`
`
`
`
`” Ex. 10088, 5:20–24
`
`
`one oobject on iits surface.
`
`
`. The senssing circuittry is
`
`anslate thee
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`coupled to the sensor array and responds to changes in either or both of
`trans-capacitance, i.e., coupling between sense pads, and self-capacitance,
`i.e., coupling to a virtual ground. Id. at 10:1–8. The position sensor system
`then detects a position of a finger on the sensor array and measures a change
`in capacitance using sensor circuitry to determine a finger profile. Id. at
`10:44–48. Based on this finger profile, “[t]he position sensor system . . .
`[reports] the X, Y position of a finger placed near the sensor array 10 to
`much finer resolution than the spacing between the sets of first and second
`conductive traces.” Id. at 10:18–21
`Analysis
`With respect to independent claim 1, the present record supports the
`contention that Boie discloses “a first number of two or more sense elements
`of a touch screen device.” Pet. 11–12 (citing Ex. 1002, 2:50–52, 2:61–62,
`2:64–66, 3:5–8, Fig. 1); Ex. 1010 ¶¶ 97, 116. The present record also
`supports the contention that, because there are 16 electrodes (sensor
`elements) and 17 keys (pre-defined areas), Boie teaches the claim 1
`limitation of “a second number of three or more button areas of the touch
`screen device, wherein the first number of sense elements is less than the
`second number of button areas.” Pet. 12–13 (citing Ex. 1002, 6:62–64, 7:6–
`8, Fig. 7); Ex. 1010 ¶¶ 99, 103. Petitioner also has shown sufficiently that
`Boie describes “using a processing device to detect a presence of a
`conductive object,” as recited in claim 1. Pet. 13–14 (citing Ex. 1002, 3:56–
`57, 3:60–61, 5:8–10, 7:15–16, Figs. 4, 6, 8; Ex. 1010 ¶¶ 55, 99, 100). By
`discussing the processes performed by the microcontroller coupled to the
`electrode array, Petitioner also has shown sufficiently that Boie describes:
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`determining capacitance . . . of a first number of two or
`more sense elements of a touch screen device using a
`processing device to detect a presence of a conductive object on
`any one of a second number of three or more button areas of the
`touch screen device,
`as recited in claim 1. Pet. 13–15 (citing Ex. 1002, 3:56–57, 3:60–61, 5:8–
`24, 7:15–25, Figs. 4, 6, 8); Ex. 1010 ¶¶ 55, 99–102. Lastly, Petitioner has
`shown sufficiently that Boie describes “recognizing an activation of one of
`the three or more button areas using the determined capacitance . . . of the
`first number of two or more sense elements,” as claimed in claim 1. Pet. 15–
`17 (citing Ex. 1002, 6:61–14, Fig. 7); Ex. 1010 ¶¶ 104–106.
`Petitioner relies on Bisset for its teachings with respect to
`“determining capacitance variations” and “using the determined capacitance
`variations,” as recited in claim 1. Pet. 17–18 (citing Ex. 1008, 5:20–24,
`10:1–8, 10:18–21, 10:44–48, 11:25–29); Ex. 1010 ¶¶ 108–111, 113.
`Specifically, Petitioner contends that Bisset describes a position sensor that
`detects a position of a finger on a sensor array, measures the change in
`capacitance, uses this measured change in capacitance to determine a finger
`profile, and then, in turn, uses the finger profile to report the X, Y position of
`the finger placed near the sensor array “to much finer resolution than the
`spacing between the first and second conductive traces.” Pet. 18 (citing Ex.
`1008, 10:18–21 (emphasis omitted)); Ex. 1010 ¶ 113.
`Petitioner also provides articulated reasons with rational
`underpinnings that explain why one of ordinary skill in the art would have
`combined the position sensor system and sensor circuitry of Bisset with the
`electrode array and capacitive sensor of Boie. Pet. 19; Ex. 1010 ¶ 115.
`Namely, Petitioner states reasons that the sensor circuitry of Bisset would
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`enable the capacitive sensor of Boie to report the X, Y position of a finger
`placed on the electrode array with much finer resolution than available
`conductive traces. Pet. 19; Ex. 1010 ¶ 115.
`Independent claims 7 and 17, although apparatus and system claims,
`are similar to method claim 1. Petitioner accounts for the minor differences
`between independent claims 7 and 17 and claim 1, and, otherwise, submits a
`similar analysis for claims 7 and 17 as claim 1. Pet. 30–31, 35–36.
`Petitioner also accounts for all of the challenged dependent claims. Pet. 19–
`30, 31–37. Patent Owner does not make arguments, at this time, regarding
`the merits of this ground of unpatentability against the challenged claims.
`We have reviewed the proposed ground of obviousness over Boie and
`Bisset against claims 1–8, 11, 12, and 14–20, and we are persuaded that, on
`the present record, Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 1–8, 11, 12, and 14–20 on
`this ground. See Pet. 10–37.
`
`C. Obviousness based on the Art Described in the ’973 Patent,
`Hristov, and Piguet
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation 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.” 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
`
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`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 the
`art described in the ’973 patent, as opposed to Boie and Bisset, because
`doing so would result in efficiencies. Prelim. Resp. 12–19. We agree with
`Patent Owner that proceeding on a narrower set of grounds will result in
`efficiencies, but we disagree that proceeding only on this 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 ground that claims 1–8, 11, 12, and 14–20 are
`unpatentable under 35 U.S.C. § 103(a) based on Hristov, Piguet, and the art
`described in the ’973 patent. See 37 C.F.R. § 42.108(a).
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1–8, 11, 12, and 14–20 of the ’973 patent are
`unpatentable. At this stage of the proceeding, the Board has not made a final
`determination with respect to the patentability of the challenged claims.
`
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`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that an inter partes review is instituted on the ground that
`claims 1–8, 11, 12, and 14–20 of the ’973 patent are unpatentable under
`35 U.S.C. § 103(a) as obvious over Boie and Bisset;
`FURTHER ORDERED that the trial is limited to the grounds
`identified immediately above, and no other ground is authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’973 patent is instituted with trial 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 given of the institution of the trial.
`
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`IPR2014-01343
`Patent 8,519,973 B1
`
`For Petitioner:
`Jason Shapiro
`Rothwell, Figg, Ernst & Manbeck, PC
`jshapiro@rfem.com
`
`Soumya P. Panda
`Rothwell, Figg, Ernst & Manbeck, PC
`spanda@rfem.com
`
`
`For Patent Owner:
`Robert R. Laurenzi
`Kaye Scholer LLP
`robert.laurenzi@kayescholer.com
`
`Robert S. Magee
`Kaye Scholer LLP
`robert.magee@kayescholer.com
`
`
`
`12
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