Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
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`v.
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`NEODRON LTD.,
`Patent Owner.
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`____________
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`
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`Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`PATENT OWNER RESPONSE
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`Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`Table of Contents
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`Summary of Grounds ............................................................................................................. 4
`I.
`Person of Ordinary Skill in the Art ........................................................................................ 4
`II.
`III. Ground 1: Obviousness by Trent ........................................................................................... 5
`A. Petitioner’s invalidity theory requires a mixture of Trent’s separate absolute position
`sensing and relative motion sensing embodiments; yet Petitioners and Dr. Bederson
`fail to explain why it would be possible, much less obvious, to combine these
`embodiments. ................................................................................................................ 5
`IV. Ground 2: Obviousness by Trent in view of Engholm ........................................................ 12
`A. Petitioner fails to establish any cognizable motivation to combine Trent’s disclosure
`of closed-loop capacitive sensors with Engholm’s disclosure of partially circular
`controls for measurement instruments. ....................................................................... 12
`V. Ground 3: Obviousness by Bryan in view of Trent and Engholm ....................................... 17
`A. Petitioner and Dr. Bederson incorrectly rely on an unsupported and unworkable
`modification of Bryan to satisfy the “set a parameter to an initial value based on the
`first position” limitation. ............................................................................................. 17
`Petitioner does not show any cognizable motivation to combine Bryan with Trent and
`Engholm. ..................................................................................................................... 22
`Petitioner and Dr. Bederson do not identify any “first position along the sensing path”
`as claimed, because the first position in their theory is a position on an icon, not a
`position along a sensing path. ..................................................................................... 24
`VI. Conclusion ........................................................................................................................... 26
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`B.
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`C.
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`Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`List of Exhibits
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`Ex. 2001
`Ex. 2002
`Ex. 2003
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`Declaration of Mr. Richard Flasck
`Curriculum Vitae of Mr. Richard Flasck
`Deposition of Dr. Benjamin Bederson, taken 8/12/2020
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`I.
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`Summary of Grounds
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`Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`Petitioner challenges claims 1-24 of the ’173 Patent under three grounds: (Pet.
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`at 3):
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`Ground 1: Obviousness of claims 1-2, 8-11, and 17-19 in light of U.S. Patent
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`Publication 2004/0252109 (“Trent”) in light of the knowledge of a POSITA.
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`Ground 2: Obviousness of claims 1-3, 5-12, and 14-19 in light of Trent in
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`view of US Patent No. 6,229,456 (“Engholm”), and further in light of the knowledge
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`of a POSITA.
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`Ground 3: Obviousness of claims 1-3, 5-12, and 14-19 in light of U.S. Patent
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`No. 5,559,301 (“Bryan”) in view of Trent and Engholm, and further in light of the
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`knowledge of a POSITA.
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`For the reasons below, Petitioner has not shown unpatentability of any claim
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`of the ’173 Patent. The Board should affirm the validity of all challenged claims as
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`set forth below.
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`II.
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`Person of Ordinary Skill in the Art
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`A person of ordinary skill in the art with respect to the ’173 Patent would have
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`a bachelor’s degree in physics, electrical engineering, or a related field, and at least
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`two years of experience in the research, design, development, and/or testing of touch
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`sensors, touchscreens and display stacks, human-machine interaction and interfaces,
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`Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`and/or graphical user interfaces, and related firmware and software. A person with
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`less education but more relevant practical experience, or vice versa, may also meet
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`this standard. Patent Owner’s expert Mr. Flasck agrees with this standard. Ex. 2001
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`¶ 20.
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`III. Ground 1: Obviousness by Trent
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`Petitioner’s and Dr. Bederson’s analysis in Ground 1 is based exclusively on
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`Trent in light of the background knowledge of a POSITA. Ex. 2003 at 12:18-13:3.
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`A.
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`Petitioner’s invalidity theory requires a mixture of Trent’s
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`separate absolute position sensing and relative motion sensing
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`embodiments; yet Petitioners and Dr. Bederson fail to explain
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`why it would be possible, much less obvious, to combine these
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`embodiments.
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`As Mr. Flasck explains, Trent teaches two distinct embodiments of its
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`“closed-loop” capacitive touch sensors. Ex. 2001 ¶¶ 25-33. In one embodiment, the
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`sensor determines the absolute position of a user’s finger; Mr. Flasck calls this the
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`“absolute position sensing embodiment.” See, e.g., Ex. 1005 ¶¶ 25, 92, 105, 124-
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`129; Id. Figs. 28, 31; Ex. 2001 ¶¶ 27-29. In the other embodiment, which Mr. Flasck
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`calls the “relative motion sensing embodiment,” the sensor is only capable of
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`determining the relative motion of a user’s finger and is incapable of unambiguously
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`determining its position. See, e.g., Ex. 1005 ¶¶ 23, 91-104, 142; Id. Fig. 30; Ex. 2001
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`¶¶ 30-32. The Petition and its supporting expert declaration from Dr. Bederson fail
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`to acknowledge the distinction between these two embodiments. Worse, the
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`Petition’s invalidity theory depends on one embodiment to show the presence of half
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`of the limitations of the ’173 Patent’s independent claims, while depending on the
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`other embodiment to satisfy the remaining limitations. Neither the Petition nor Dr.
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`Bederson provide any theory why it would be obvious to mix and match aspects of
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`Trent to produce the specific combination of elements claimed in the ’173 Patent.
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`Trent’s absolute position sensing embodiment is introduced in paragraph 25.
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`As Trent explains, that embodiment is “configured to sense a first position of an
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`object.” Ex. 1005 ¶ 25. Based on that sensing, the embodiment “generate[s] at least
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`one action in response to the first position.” Id. The absolute position sensing
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`embodiment is shown most clearly in Figure 28:
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`U.S. Patent No. 8,432,173
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`Ex. 1005 Fig. 28 (coloring added); see also id. ¶ 105. This is an aspect of Trent’s
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`disclosure of capacitive sensing, which forms the basis of Petitioner’s and Dr.
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`Bederson’s theory. See, e.g., Ex. 2003 at 36:1-18 (“[A:] … [F]or ground 1… I relied
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`on Trent’s… disclosure of capacitive sensing, which is required by the [’173 Patent]
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`claims.”). In this embodiment, there are eight distinct capacitive sensing electrodes
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`covering the circular closed-loop sensor, which are connected via eight electrical
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`leads 94 to the remainder of the system. Ex. 1005 Fig. 28, ¶ 105; Ex. 2001 ¶ 28. As
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`Mr. Flasck explains in additional detail, this configuration allows the absolute
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`U.S. Patent No. 8,432,173
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`position sensing embodiment to unambiguously determine the position of a user’s
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`touch on the closed-loop sensor. Ex. 2001 ¶ 28.
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`The absolute position sensing embodiment is key to Petitioner’s mapping of
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`claim elements 1[a]-[c], 10[a]-[c], and 19[c]-[e]. Each of these groups of claim
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`elements requires capacitive couplings and first signals sufficient to “determin[e]…
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`the first position of the object along the sensing path” (emphasis added). And the
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`Petition and Dr. Bederson accordingly rely on the position sensing embodiment to
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`show those limitations. Pet. at 22-29; Ex. 1002 ¶¶ 79-94; see also Ex. 2001 ¶ 34. For
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`example, the Petition and Dr. Bederson quote from paragraph 92 of Trent; although
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`that paragraph is in a section generally devoted to the relative motion sensing
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`embodiment, the quoted portion specifically contrasts the absolute position sensing
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`embodiment, describing it as a non-preferred alternative: “In a preferred
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`embodiment, this user motion is only interpreted in a relative manner. That is, the
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`absolute position of the input object in the loop path is insignificant…. However, it
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`may occasionally be useful to use this absolute position (i.e., an exact starting
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`point)….” Pet. at 27 and Ex. 1002 ¶ 90 (quoting Ex. 1005 ¶ 92) (emphasis added).
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`See also Ex. 2001 ¶ 34. For another example, the Petition and Dr. Bederson rely on
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`Figure 31 of Trent. Pet. at 24-25 and Ex. 1002 ¶ 85 (quoting Ex. 1005 ¶ 112). As
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`Mr. Flasck explains, Figure 31 is an illustration of Trent’s absolute position sensing
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`embodiment. Ex. 2001 ¶¶ 29, 34.
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`On the other hand, Trent’s separate disclosure of a relative position sensing
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`embodiment is introduced in paragraph 23 of Trent, which explains that the
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`embodiment is “configured to sense motion of an object.” Ex. 1005 ¶ 23. Based on
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`that sensing, the relative motion sensing embodiment is configured to “generate an
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`action in response to the motion on the touch sensor.” Id. This embodiment is
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`illustrated in Figure 30:
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`Ex. 1005 Fig. 30. As Mr. Flasck explains in greater detail, this embodiment
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`configures the capacitive touch sensing electrodes in a manner that is optimized to
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`determine the motion of a user’s finger, for example determining that a motion from
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`the twelve o’clock position to the one o’clock position is a clockwise rotation. Ex.
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`2001 ¶ 31-32. But the embodiment is incapable of unambiguously determining the
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`position of that finger; for example, if the user touches at the twelve o’clock position,
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`this embodiment cannot determine whether the touch is located at 12 o’clock, 3
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`o’clock, 6 o’clock, or 9 o’clock. Id.
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`The two embodiments of Trent are separate and not interchangeable. Ex. 2001
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`¶ 33. The teachings about one embodiment do not necessarily apply to the other
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`embodiment. Id. Yet the Petition and Dr. Bederson interchange the two
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`embodiments without explanation or comment, rendering their invalidity theory
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`unreliable. As addressed above, they rely on the absolute position sensing
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`embodiment for the first three primary limitations of each independent claim, which
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`require the determination and use of a “first position.” And this is no accident;
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`because Trent’s relative motion sensing embodiment cannot determine a position,
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`Petitioner and Dr. Bederson have no choice but to turn to the absolute position
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`sensing embodiment.
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`But in turning to the remaining limitations of the independent claims, 1[d]-[f],
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`10[d]-[f], and 19[f]-[h], the Petition and Dr. Bederson instead rely exclusively on
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`the relative motion sensing embodiment. Pet. at 29-37; Ex. 1002 ¶¶ 95-104; Ex. 2001
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`¶ 35. For example, they rely on Trent’s discussion in paragraph 73 of the relative
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`motion sensing embodiment, which is “designed to sense motions along a
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`substantially closed loop.” Pet. at 30-31 and Ex. 1002 ¶ 97 (quoting Ex. 1005 ¶ 73)
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`(emphasis added). The Petition and Dr. Bederson both emphasize the disclosure that
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`this embodiment of Trent is responsive to motions along the loop, not to positions.
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`Pet. at 30-31 and Ex. 1002 ¶ 97. As Mr. Flasck explains, the Petition and Dr.
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`Bederson are relying on the relative motion sensing embodiment here, not the
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`absolute position sensing embodiment. Ex. 2001 ¶ 35.
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`The absolute position sensing and relative motion sensing embodiments
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`function differently. Ex. 2001 ¶ 36. Neither the Petition nor Dr. Bederson provides
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`any explanation why it would be obvious, or even possible, to combine the two
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`embodiments. Id. The claims of the ’173 Patent require a particular combination of
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`determining a first position, on the one hand, and a displacement from that first
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`position, on the other. Id. Because the Petition has not shown any disclosure in Trent
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`of that combination, nor shown any teaching that would render it obvious, the
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`Petition’s invalidity theories based on Trent each fails.
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`Because the Petition does not establish that Trent discloses or renders obvious
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`limitations 1[a]-[f], 10[a]-[f], and 19[c]-[h] of the ’173 Patent as arranged in the
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`claims, and the Petition does not include any other reference or background
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`knowledge of a POSITA that would cure this defect, the Petition has not established
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`the obviousness of any claim of the ’173 Patent on the basis of Ground 1.
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`IV. Ground 2: Obviousness by Trent in view of Engholm
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`Case No. IPR2020-00267
`U.S. Patent No. 8,432,173
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`Ground 2 is based exclusively on Trent in light of Engholm and the
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`background knowledge of a POSITA. Ex. 2003 at 13:7-21.
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`A.
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`Petitioner fails to establish any cognizable motivation to combine
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`Trent’s disclosure of closed-loop capacitive sensors with
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`Engholm’s disclosure of partially circular controls for
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`measurement instruments.
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`Ground 2 depends on the combination of Trent and Engholm to show several
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`claim limitations. Pet. at 42-60. Notably, Ground 2 relies exclusively on Engholm to
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`show the presence of dependent claims 3, 5, 6, 7, 12, 14, 15, and 16; there is no
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`contention that any of these claims are rendered obvious by Trent, alone or in
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`combination with the knowledge of a POSITA. Pet. at 51-59. But the Petition’s and
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`Dr. Bederson’s theory of motivation to combine is deficient. In essence, they state
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`that Trent and Engholm solve similar problems in similar fields and therefore a
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`POSITA would be motivated to combine them. Pet. at 40-42, 47, 53-54; Ex. 1002
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`¶¶ 112-115, 127, 139, 141. This is insufficient. If the Petition and Dr. Bederson had
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`addressed the differences between Trent and Engholm and the specific problems
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`each reference addresses, it would have been clear that there is no motivation to
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`combine them in order to form the specific invention claimed in the ’173 Patent.
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`Engholm teaches methods and apparatuses specific to one particular
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`application: measurement instruments. Ex. 2001 ¶ 39. For example, Engholm is
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`entitled “Method and apparatus for facilitating user interaction with a measurement
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`instrument using a display-based control knob.” Ex. 1006, Title (emphasis added).
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`The abstract confirms that its disclosure is about “user interaction with a
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`measurement instrument.” Id., Abstract. The original assignee is Tektronix, Inc., a
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`well-known maker of measurement instruments. Id., cover page; Ex. 2001 ¶ 39.
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`In particular, Engholm teaches a “display-based control knob,” which is
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`formed by displaying an indicator with a particular design, including a “partially
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`circular drag area” along with increment and decrement buttons below it. See Ex.
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`1006, Figs. 4a-4e, 2:19-54, 5:36-51, 7:61-8:11; 8:28-34. Engholm illustrates several
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`variants of the partially circular drag area, which by their very commonality illustrate
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`that the disclosed control knob is not fully circular:
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`Ex. 1006 Figs. 4a-4e. In each case, the drag area (404, 414, 424, 434, 444) comprises
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`a semicircle or, in the case of Figure 4c, slightly more than a semicircle. Id. at 5:7-
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`8:34, Figs. 4a-4e. The remainder of the area is taken up by increment buttons (410,
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`420, 430, 440, and 450) and decrement buttons (408, 418, 428, 438, and 448). Id.;
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`see Ex. 2001 ¶ 40.
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`Trent, on the other hand, is not about measurement instruments; it is about
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`capacitive, resistive, or inductive sensing. Engholm does not refer to capacitive,
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`resistive, or inductive touch sensing at all. Ex. 2001 ¶ 41. In contrast to Engholm,
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`Trent exclusively teaches fully circular sensors, which it describes as “closed-loop”
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`sensors. Id. ¶ 42.
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`A POSITA consulting either Trent or Engholm would not be motivated to also
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`consider the other reference. For example, Engholm specifically teaches using a
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`conventional input method (mouse, touchscreen, trackpad), which is necessary to
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`support its additional increment and decrement buttons. Ex. 1006 at 4:5-9. A
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`POSITA would not be motivated to use the special-purpose circular touch sensor
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`disclosed by Trent, which does not support that functionality. Ex. 2001 ¶ 43.
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`Likewise, a POSITA designing a circular touch sensor according to Trent’s
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`disclosure would not be motivated to consider Engholm, which specifically relates
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`to measurement instruments and improvements in the particular “partially circular”
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`knob functionality disclosed there, not the circular sensor functionality disclosed in
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`Trent. Id.
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`Regarding claims 3, 5, 12, and 14 in particular, the Petition and Dr. Bederson
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`state only that Engholm would provide a benefit over Trent in order to “allow a user
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`to more accurately select a preferred volume when moving their finger around the
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`volume dial without unintentionally changing values after initially setting the value,”
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`but give no explanation why a POSITA would seek that benefit. Pet. at 53-54; Ex.
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`1002 ¶ 138. As Mr. Flasck explains, Trent concerned with making precise, fine
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`adjustments; introducing Engholm’s debounce threshold would reduce the
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`effectiveness of Trent’s closed-loop sensor, because making fine adjustments below
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`the debounce threshold would become impossible or awkward. Ex. 2001 ¶ 44. See,
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`e.g., Ex. 1005 ¶ 18 (in overview of the problems in the prior art that Trent will
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`overcome, describing shortcoming of “physical knobs or ‘jog dial’ controls” that
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`require “friction to limit accidental activation, which increases the difficulty of fine
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`adjustment”); id. ¶ 108 (describing relative motion sensing embodiment as
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`preferable when “fine resolution is needed”).
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`Ground 2 relies on the same analysis of Trent as Ground 1 to show most
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`limitations of each independent claim. The same faults identified in Section IV
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`above also apply to Ground 2. Because Ground 2 does not establish the obviousness
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`of any independent claim of the ’173 Patent, the Petition has not established the
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`invalidity of any claim of the ’173 Patent on the basis of Ground 2.
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`Furthermore, as addressed above, Ground 2 does not establish that a POSITA
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`would be motivated to combine Trent and Engholm in the particular way required
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`to invalidate the claims of the ’173 Patent. This is fatal to each argument in Ground
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`2 that is based on the combination of Trent and Engholm. For example, because the
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`invalidity theories for the additional limitations of dependent claims 3, 5, 6, 7, 12,
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`14, 15, and 16 rely exclusively on the teachings of Engholm (in combination with
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`the teachings of Trent to satisfy the independent claim limitations), Ground 2 fails
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`to establish the obviousness of any of claims 3, 5, 6, 7, 12, 14, 15, and 16.
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`V. Ground 3: Obviousness by Bryan in view of Trent and Engholm
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`Ground 3 is based exclusively on Bryan in light of Trent and Engholm and
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`the background knowledge of a POSITA. Ex. 2003 at 13:22-15:1. Ground 3 suffers
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`from at least three fatal defects, each of which provides independently sufficient
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`grounds to uphold the patentability of all challenged claims under this ground.
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`A.
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`Petitioner and Dr. Bederson incorrectly rely on an unsupported
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`and unworkable modification of Bryan to satisfy the “set a
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`parameter to an initial value based on the first position”
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`limitation.
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`The Petition and Dr. Bederson concede that Bryan does not disclose “set[ting]
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`a parameter to an initial value based on the first position of the object along the
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`sensing path,” as required by each independent claim. Pet. at 71-72; Ex. 1002 ¶¶ 175-
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`176; Ex. 2003 at 84:8-11 (“I don’t think I explicitly argued [in my declaration] that
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`Bryan itself discloses setting a parameter to an initial value based on the first position
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`of the object along the sensing path.”). Instead, Bryan discloses setting a parameter
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`“equal to a slider.” Pet. at 71-72; Ex. 1002 ¶ 176 (quoting Ex. 1007 8:3-9). The
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`Petition relies on an obviousness theory, unsupported by any specific teaching in any
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`reference or background information, that a POSITA would modify Bryan’s
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`disclosed functionality by replacing it entirely with a process that would “set the
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`value based on the touched location, and then relocate the slider to that position.”
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`Pet. at 73; Ex. 1002 ¶ 177. In other words, the Petition and Dr. Bederson rely on a
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`POSITA to supply an entire limitation that is not found in Bryan; and yet they muster
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`little or no evidence that a POSITA would be motivated to do so.
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`As Mr. Flasck explains, a POSITA would not be motivated to modify Bryan
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`as required by Petitioner’s theory, in part because the modification would seriously
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`impair or even destroy the functionality and usability of Bryan’s described system.
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`Ex. 2001 ¶¶ 48-49. Bryan specifically discloses a “pop-up slider,” which is not
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`always visible or accessible on the screen. Id. ¶ 49. In particular, Bryan explains that
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`the slider is normally not visible; instead, the screen displays “a large number of
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`icons 55”. Ex. 1007 at 5:37, Fig. 3. The icons 55 in Figure 3 could easily be mistaken
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`as sliders in their own right, but Bryan teaches that the user cannot manipulate these
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`sliders directly. Ex. 1007 at 38-41 (“Thus, the value of these parameters could not
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`be readily adjusted using a finger as the touch device over a significant range, or
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`with significant accuracy.”); Ex. 2001 ¶ 49.
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`Instead, Bryan teaches that touching icon 55 causes a distinct slider to appear
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`on the screen, potentially covering icon 55 or covering other parts of the screen. Ex.
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`1007 at 5:44-54 and Fig. 4A; Ex. 2001 ¶ 50. When that happens, the user’s finger is
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`still located at the position of the icon, not the position of the pop-up slider or the
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`slider bar 63. Ex. 1007 at 5:55-62. This is shown in Figure 4B:
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`Ex. 1007 Fig. 4B. At that moment, the system sets a parameter equal to a slider. Ex.
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`1007 at 8:3-9 and Fig 8. The actual value of the parameter does not change until and
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`unless the user’s finger moves to select the slider bar 63. Ex. 1007 at 5:55-6:36 and
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`Figs. 4A-4E. This allows the user to make a controlled adjustment of the parameter.
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`Ex. 2001 ¶ 51. If the user then lifts the finger without selecting the slider bar 63, “the
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`pop-up slider disappears and uncovers the interface display without changing the
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`value.” Ex. 1007 at 6:26-28; Ex. 2001 ¶ 51. This is important to prevent spurious or
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`accidental changes in the value, which would be particularly problematic because
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`Bryan’s invention is for a musical instrument. Ex. 2001 ¶ 51.
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`But in Petitioner’s modification of Bryan, the system would instead set the
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`parameter to a value corresponding to the touched location at the moment when the
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`pop-up slider appears. Pet. at 73; Ex. 1002 ¶ 177. As Mr. Flasck explains, Figure 4B
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`in Bryan shows why this would tend to cause a sudden and extreme change in the
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`value of the parameter. Ex. 2001 ¶ 52. The slider was previously set to
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`approximately the middle position; as disclosed, Bryan is designed to preserve that
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`setting until and unless the user deliberately moves the finger over the slider bar 63
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`and moves it. Id. But in the supposedly obvious modification, the parameter would
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`immediately jump to an arbitrary value, in this case to the extreme low position. Id.
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`Because the position of the icon 55 is unrelated to the existing position of the pop-
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`up slider, the user will not be able to predict the effect of this jumping. Id. Again, as
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`Mr. Flasck explains a POSITA would find the resulting unpredictable and sudden
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`variation in the parameter to be unacceptable in the context of a live musical
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`performance. Id.
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`Furthermore, the user’s ability to make fine adjustments to the value would
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`be significantly impaired, because the previous setting would be removed from
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`display. Ex. 2001 ¶ 53. According to Bryan’s teaching, a user can see the current
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`setting, select it, drag it slightly up or down, and release the finger to effect a small
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`change. Id. But in the proposed modification, the user would need to note and
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`remember the current position, determine and remember the desired new position,
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`and move the slider bar to that position anew. Id. Again, a POSITA would not
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`understand this to be an improvement; to the contrary, Mr. Flasck opines that this
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`interface would be considerably less useful than what Bryan actually discloses. Id.
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`The Petition does not include any cognizable theory that limitations 1[c],
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`10[c], or 19[e] is disclosed by Trent or Engholm in the context of Ground 3 (i.e. in
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`the context of the theory where Bryan provides the other primary limitations of the
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`independent claims). Cf. Pet. at 74; Ex. 1002 ¶¶ 180-181. The boilerplate conclusory
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`recitation that Trent and Engholm render this limitation obvious provides no weight
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`and cannot substitute for actual testimony and evidence. In re Magnum Oil Tools
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`International, Ltd., 829 F.3d 1364, 1377-80 (Fed. Cir. 2016) (“To satisfy its burden
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`of proving obviousness, a petitioner cannot employ mere conclusory statements.”);
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`Organik Kimya AS v. Rohm and Haas Company, 873 F.3d 887, 893-95, (Fed. Cir.
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`2017) (rejecting “unsupported” expert testimony). Accordingly, Ground 3 depends
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`on the modification of Bryan in order to satisfy the limitations of the independent
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`claims. Because the Petition does not establish that Bryan renders obvious
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`limitations 1[c], 10[c], or 19[e], it has not established the obviousness of any claim
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`of the ’173 Patent on the basis of Ground 3.
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`B.
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`Petitioner does not show any cognizable motivation to combine
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`Bryan with Trent and Engholm.
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`Ground 3 rests on the combination of Bryan with both Trent and Engholm. It
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`suffers from the fatal motivation weaknesses of Ground 2 but suffers from further
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`shortcomings. For example, Bryan does not disclose capacitive touch sensing or the
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`capacitive couplings claimed in the ’173 Patent. See generally Ex. 1007; Ex. 2001
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`¶ 47. For example, Bryan does not use the term “capacitive” or “capacitance”
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`anywhere in its description. Id. Bryan’s disclosure includes touch-sensitive pads;
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`however, Bryan does not disclose an indication corresponding to the first capacitive
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`coupling of an object and the touch-sensitive pads. Ex. 2001 ¶ 47. For example, there
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`is no mention of capacitive touch sensors/touchscreens, capacitive signals,
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`capacitive technology, or otherwise any indication in Bryan that the disclosed device
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`has or uses “capacitive couplings of an object with a sensing element.” Dr. Bederson
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`admits this. Ex. 1002 ¶ 169. Instead, the Petition and Dr. Bederson do not explain
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`why a POSITA would look to Trent to supply the touch-sensitive pads that Bryan
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`requires. The Petition uses hindsight bias, informed by the claims of the ’173 patent,
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`to assume that a POSITA would seek out a capacitive touch sensing solution as
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`claimed and would find that solution in Trent. See Pet. at 68-69; Ex. 1002 ¶ 170.
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`Furthermore, Trent would not actually provide the functionality required for
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`Bryan’s touch sensor to operate correctly. Ex. 2001 ¶¶ 54-55. For example, Bryan
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`requires a functional touch screen to support its various user interface elements,
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`which include in relevant part both sliders and icons. Id. ¶ 54. But Trent does not
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`teach such a touch screen; instead, it teaches only a special-purpose closed-loop
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`sensor that cannot support the range of functionality Bryan requires. Id. For another
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`example, Bryan specifically requires the ability to detect touches away from the
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`sensing path, e.g. touches on an icon 55. As Mr. Flasck explains, Figure 6 of Bryan
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`confirms this because there are necessary branches of the flow diagram that require
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`the possibility that a touch is not on the claimed “pop-up slider.” Id. ¶ 55. Trent’s
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`closed-loop sensor cannot provide this functionality. Id.
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`Because the only obviousness theory for this required element of all
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`independent claims fails for lack of motivation, the Petition does not establish the
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`obviousness of any claim of the ’173 Patent under Ground 3.
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`Petitioner and Dr. Bederson do not identify any “first position
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`C.
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`along the sensing path” as claimed, because the first position in
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`their theory is a position on an icon, not a position along a sensing
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`path.
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`Each independent claim of the ’173 Patent requires receiving signals
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`indicating first capacitive couplings corresponding to a touch “at a first position
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`along the sensing path of the sensing element.” But the Petition and Dr. Bederson
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`fail to identify any such touch at a first position along the sensing path. Dr. Bederson
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`confirmed at his deposition that the only “sensing path” in his analysis of Bryan is
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`the pop-up slider. Ex. 2003 at 85:9-86:13 (“[T]he sensing path that I was referring
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`to… is the path of interaction along the pop-up slider.”). But in the Petition’s and
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`Dr. Bederson’s theory, the “first position” is the position of the finger at the
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`beginning of Bryan’s Figure 8. Pet. at 67-68, 69-70; Ex. 1002 ¶ 168, 172. This is
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`confirmed by the Petition’s and Dr. Bederson’s theory for element 1[c]/10[c]/19[e],
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`in which a POSITA would modify the first few steps of Figure 8 in order to set the
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`parameter immediately upon entering Fig. 8 rather than waiting until the finger
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`moves to the slider handle. Pet. at 73-74; Ex. 1002 ¶¶ 176-177. As the Petition and
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`Dr. Bederson explain, the Figure 8 procedure is “entered at block 131 of FIG. 6.”
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`Pet. at 67-68, 69-70; Ex. 1002 ¶¶ 168, 172.
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`But Dr. Bederson confirmed that block 131 of Figure 6—the block that
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`triggers the beginning of Figure 8—is associated, not with a touch along the pop-up
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`slider (sensing path) but rather a touch of the icon 55 that is present on Bryan’s
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`screen before the slider appears. Ex. 2003 at 81:18-82:1 (“[Q:] [Y]ou refer to call
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`out 131 at the bottom left of figure 6, process touch for slider. Is that the touch of a
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`slider icon or of an actual pop-up slider? A: I believe at this point, it is still the
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`icon.”). As Bryan itself confirms, it is this touch on icon 55 that causes the pop-up
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`slider (“variable adjustment display 61”) to appear. Ex. 1007 at 5:46-49 (“Processing
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`resources are responsive to a touch on the icon 55, to cause a variable adjustment
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`display, generally 61, to pop-up on the screen as shown in FIG. 4B.”). The icon 55
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`is not part of the pop-up slider and therefore not part of the “sensing path” in
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`Petitioner’s theory. This is further confirmed by the statement in Bryan that the pop-
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`up slider actually obscures icon 55: “This display overlies the interface display
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`shown in FIG. 3 and obscures the icon being adjusted, and possibly other regions of
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`the screen. The variable adjustment display 61 is significantly larger than the icon
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`55 as illustrated by the relative sizes of the finger 60 in the display.” Ex. 1007 at
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`5:49-54.
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`The Petition and Dr. Bederson fail to show the presence in Bryan of a “first
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`position along the sensing path” as required by each independent claim of the ’173
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`Patent. Therefore, the Petition has not established the obviousness of any challenged
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`claim under Ground 3.
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`VI. Conclusion
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`For the reaso