Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: May 26, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`____________
`
`Case IPR2020-00259
`Patent 8,102,286 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
`
`Page 1 of 14
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: May 26, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`____________
`
`Case IPR2020-00259
`Patent 8,102,286 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
`
`Page 1 of 14
`
`
`
`IPR2020-00259
`Patent 8,102,286 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.,
`“Petitioner,” filed a Petition requesting inter partes review of claims 1−24 of
`U.S. Patent No. 8,102,286 B2 (Ex. 1001, “the ’286 patent”). Paper 3
`(“Pet.”). Neodron Ltd. (“Patent Owner”) timely filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we deny the Petition
`and do not institute inter partes review.
`
`A. Related Matters
`The parties indicate that the ’286 patent has been asserted in Neodron
`Ltd. v. Samsung Elecs. Co., Ltd., et al., No. 6:19-cv-00903-ADA (W.D.
`Tex.). Pet. 2; Paper 6, 2. Patent Owner also indicates that the following
`district court matters may be affected by a decision in this proceeding: Nos.
`1:19-cv-00819-ADA (W.D. Tex.); 1:19-cv-00873-ADA (W.D. Tex.); 1:19-
`cv-008740-ADA (W.D. Tex.); 1:19-cv-00903-ADA (W.D. Tex.); and 5:19-
`cv-05644-SI (N.D. Ca.). Paper 7.
`
`B. The ’286 Patent
`The ’286 patent relates to keypads having capacitive keys. Ex. 1001,
`Abstr. The ’286 patent discloses that keypads may suffer from keying
`ambiguity problems caused, for example, when a user’s finger touches a key
`and adjacent ones. Id.; 1:35−39. To select one key among several keys that
`exhibit activity, the ’286 patent determines which key has the maximum
`
`2
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 2 of 14
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`IPR2020-00259
`Patent 8,102,286 B2
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`signal strength, and maintains that selection until either the first-determined
`key drops below some threshold level, or a second key’s signal strength
`exceeds the first key’s signal strength. Id. at 2:8−16. The method deselects
`all other keys and enhances the selected key’s signal strength value. Id. at
`2:16−18. In particular, the ’286 patent explains that the “winning” key is
`given a slight advantage in subsequent repetitions of the decision process, in
`order to avoid indecisiveness and eliminate oscillation between two or more
`keys having more or less the same signal strength. Id. at 2:62−66. For
`instance, the first key to win remains selected even when the maximal
`strength has shifted to a new key, if the first key has enough signal strength
`in excess of its associated threshold value. Id. at 3:8−13. That threshold
`value is further described as the “biasing or skewing” of the key selection
`method in favor of an already selected key. Id. at 5:41−47. According to
`the ’286 patent, the “bias” may be provided in many ways in subsequent key
`selection decisions, such as:
`These ways may be equivalent to adding an incremental value to
`the signal associated with the selected key; multiplying the signal
`strength of the selected key by a value greater than one in
`subsequent selections; subtracting a respective incremental value
`from the signal strengths associated with each of the non-selected
`keys; or multiplying the signal strength of each of the non-
`selected keys by a respective value less than one.
`Id. at 5:49−57. The biasing is further explained in connection with Figure
`5A, reproduced below.
`
`3
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
`
`Page 3 of 14
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`IPR2020-00259
`Patent 8,102,286 B2
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`Figure 5A shows a flow chart of a method carried out when a Key 1
`goes from inactive to active. Id. at 4:20−22. For example, when the signal
`acquired from Key 1 exceeds a certain threshold value at step 26, the
`acquired signal is compared against other acquired signals. Id. at 7:53−59.
`In determining whether Key 1 “wins” over other active key(s), the method
`4
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`IPR2020-00515
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`Patent 8,102,286 B2
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`introduces a non-dithering bias value “k,” which is added to the active key at
`step 30. Id. at 7:59−62; 8:8−11. If the signal value of Key 1 exceeds the
`signal value of the active key by at least the bias “k” value, Key 1 will
`become the active key when a counter is reached, and all other keys become
`inactive. Id. at 8:18−21.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 9, 10, and 21 are independent.
`Each of challenged claims 2−8, 11−20, 22, 23, and 24 depends directly from
`claim 1, 9, 10, or 21.
`Claims 10 and 21 are illustrative, highlighting in italics limitations
`addressed in our analysis below:
`10. A method comprising:
`detecting, by a control logic of a key panel comprising a
`plurality of keys, a sensor value of an inactive key of the key
`panel surpassing a sensor value of an active key by a select
`amount and;
`assigning the inactive key as the active key, wherein key
`assignment is biased in favor of the currently active key by
`increasing sensor values of the currently active key.
`21. A method comprising:
`detecting, by a control logic of a key panel comprising a
`plurality of keys, a sensor value of an inactive key of the key
`panel surpassing a sensor value of an inactive key by a select
`amount and;
`assigning the inactive key as the active key, wherein key
`assignment is biased in favor of the currently active key by
`decreasing sensor values of inactive keys.
`
`5
`
`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 5 of 14
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`IPR2020-00259
`Patent 8,102,286 B2
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`Ex. 1001, 9:27−33; 10:22−29.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`This proceeding relies on the following prior art references:
`
`a) Jahier: US 5,525,980, issued June 11, 1996, filed as Exhibit 1005;
`
`b) Senk: US 5,760,715, issued June 2, 1998, filed as Exhibit 1006;
`
`c) QT60161: Quantum Technologies Research Group QT60161,
`datasheet, (2002), filed as Exhibit 1007; and
`
`d) West: US 5,831,597, issued Nov. 3, 1998, filed as Exhibit 1008.
`
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Claims Challenged
`1−5, 7−17, 19−24
`1−5, 7−9, 12−17, 19,
`20, 23, 24
`6, 18
`
`Statutory
`Basis
`§ 103(a)
`
`Reference(s)
`Jahier, Senk
`
`§ 103(a)
`
`Jahier, Senk, QT60161
`
`§ 103(a)
`
`Jahier, Senk, QT60161, West
`
`Petitioner also relies on a Declaration of Dr. Benjamin B. Bederson,
`Ph.D., filed as Exhibit 1002 (“Bederson Declaration”).
`
`II. DISCUSSION
`A. Claim Construction
`There are no claim terms in dispute or that need construction for
`purposes of this Decision.
`
`6
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 6 of 14
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`Patent 8,102,286 B2
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`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1996). “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
`“person of ordinary skill in the art” is a hypothetical construct, from whose
`vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357
`(Fed. Cir. 1998). “This legal construct is akin to the ‘reasonable person’
`used as a reference in negligence determinations” and “also presumes that all
`prior art references in the field of the invention are available to this
`hypothetical skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038
`(Fed. Cir. 1993)). Here, Petitioner asserts a certain education and work
`experience of a person commensurate with the level or ordinary skill in the
`art. Pet. 10−11 (stating that the proffered level or ordinary skill in the art
`comes from a finding in a related, co-pending ITC investigation). Patent
`Owner does not address this issue. For purposes of this Decision, we adopt
`the level of ordinary skill in the art that Petitioner proffers, except that we
`delete the qualifier “at least” and to eliminate vagueness as to the amount of
`practical experience. The qualifier expands the range indefinitely without an
`upper bound, and thus precludes a meaningful indication of the level of
`ordinary skill in the art.
`
`7
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 7 of 14
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`
`C. Analysis of Grounds
`All the challenged independent claims require that the value of the
`inactive key surpasses a sensor value of an active key by a select amount
`(“the select amount limitation”.) Petitioner addresses this limitation by
`relying on Jahier. See, e.g., Pet. 26−31. Before turning to the merits of
`Petitioner’s contention regarding this limitation, we provide a short
`overview of Jahier.
`
`1. Overview of Jahier (1005)
`Jahier is entitled “Method and Apparatus for Operating a Capacitive
`Tactile Keyboard.” Ex. 1005, code [54]. Jahier describes a process by
`which the position of an operator’s finger on the keyboard and the pressure
`exerted are determined cyclically by measuring capacitance and pressure.
`Id. at 1:10−13. Jahier determines the differences between measured
`capacitance values and a reference capacitance. Id. at 2:39−41. This
`difference capacitance value is compared to a low threshold and a high
`threshold. Id. at 2:44−46. Based on the comparison, Jahier determines the
`state of the keyboard. Id. at 2:41−43. The keyboard states and the
`transitions between states are depicted in Figure 3, reproduced below.
`
`8
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 8 of 14
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`Figure 3 illustrates how the selection controller of Jahier operates to
`determine the state and transition between states. Id. at 3:61−64; 4:49−50.
`The states are: NO SELECTION, BEGIN SELECTION, SELECTION
`CONFIRMED, and END SELECTION. Id. at 5:5−8; Fig. 3. Jahier explains
`that a key i becomes a preselected key I—that is a transition from NO
`SELECTION to BEGIN SELECTION state occurs—when the capacitive
`difference (“ECC”) for key i is higher than a given threshold and above the
`ECC for any other key. Id. at 5:11−20. Once in the BEGIN SELECTION
`9
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`state, there are three options. Id. at 5:39−6:22. First, key I may be
`“confirmed” as the selected key (confirming that the user’s finger is on key
`I), shown in Figure 3 as transition “c.” Id. at 5:63−6:4. Second, key I may
`no longer be a preselected key if its ECC falls below a low threshold, a
`transition that is shown in Figure 3 as transition “b.” Id. at 39−58. Such a
`transition may occur, for example, if the key was inadvertently touched. Id.
`Third, and most notably for purposes of this Decision, is transition “2,” in
`which another key altogether may become the preselected key. Id. at
`6:5−23. Jahier explains that if the ECC for key I is between a low and a high
`threshold, key I remains the preselected key. Id. at 6:5−12. But if the ECC
`of another key (read here a new key i) is equal to or higher than the high
`threshold, and the ECC of preselected key I stays below the high threshold,
`the new key i will become the preselected key. Id. at 6:13−27 (stating also
`that the controller remains in the BEGIN SELECTION with the new key i as
`the preselected key).
`
`2. Determination of Reasonable Likelihood
`Petitioner contends that Jahier’s preselected key I corresponds to the
`recited “active key.” Pet. 29. Petitioner also contends that Jahier’s
`transition “2” shows that if an inactive key grows to exceed that of the
`preselected key by at least an amount Δ, the inactive key then becomes the
`preselected, or active key. Id. at 30. Petitioner illustrates its contention with
`a graph provided in the Petition, reproduced below.
`
`10
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 10 of 14
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`The figure above, provided by Petitioner, illustrates Jahier’s preselected key
`as the active key, in blue, having a signal above the Low Threshold but
`below the High Threshold by an amount Δ. Id. We do not agree with
`Petitioner’s contentions and characterization of Jahier with regard to the
`limitations of the challenged claims of the ’286 patent.
`The selected amount limitation requires that the sensor value of the
`inactive key must surpass the sensor value of an active key by a select
`amount. As stated above in Jahier’s summary, for Jahier’s “inactive key”
`(read here new key i during transition “2”), shown in green, to become the
`new preselected key, Jahier discloses that the ECC of the new key i must
`meet or exceed the High Threshold and the ECC of key I must only be below
`the High Threshold. Ex. 1005, 6:13−23. There is no teaching or suggestion
`in Jahier, as Patent Owner points out, of a delta in sensor values between the
`preselected key I and the new key i. Prelim. Resp. 13. Indeed, Jahier only
`discloses a comparison of each signal against the high threshold. The new
`key i will “win” and become the preselected key regardless of the difference
`
`11
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`Exhibit 2004
`IPR2020-00515
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`Page 11 of 14
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`between the ECCs of the two signals, so long as the stated High Threshold
`comparisons are met. Therefore, there is no amount that the new key’s
`signal must surpass and Petitioner’s explanations to the contrary are
`conclusory and unsupported by Jahier. In fact, the difference between the
`two signals may vary from cycle to cycle, having no bearing in Jahir’s
`determination because (1) Jahir does not make any comparison between key
`signal values or between a signal’s value and an amount, and (2) Jahir only
`looks at whether each individual signal meets a certain threshold. We
`appreciate that Jahir may be viewed as preferring the status of the
`preselected key I over the status of the new key i, because the new key must
`exceed the High Threshold, not just merely exceed the value of key I. That
`teaching of Jahir, however, does not transform a threshold comparison of
`two independent signals into a sensor detecting that one signal is larger than
`another by a select amount. And the Bederman Declaration, which offers no
`more explanation than what is presented in the Petition, does not persuade us
`otherwise. Bederman Decl. ¶¶ 78−86.
`Based on the above we conclude that Petitioner has not shown by a
`preponderance of the evidence that Jahir teaches or suggests the select
`amount limitation required by all independent claims of the ’286 patent.
`Petitioner’s reliance on Senk does not cure the deficiency noted above, as
`the Petition relies on Senk because Jahir does not disclose “decreasing
`sensor values of the inactive keys.” See Pet. 31−32 (arguing claim 21 and
`Senk’s alleged teaching of decreasing sensor values of the inactive keys);
`33−34 (arguing that claim 10 follows the same analysis of Jahir for the select
`amount limitation and relying on Senk to argue “increasing” sensor values of
`12
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 12 of 14
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`the currently active keys); 35, 38 (arguing that claims 1 and 9 follow the
`same analysis of Jahir for the select amount limitation and relying on Senk
`for sensor value comparisons). Consequently, we determine that Petitioner
`has failed to demonstrate a reasonable likelihood of prevailing on all
`grounds presented concerning claims 1−24, because they all rely on the
`same arguments discussed above concerning Jahir.
`
`III. CONCLUSION
`We have determined that Petitioner has not demonstrated a reasonable
`likelihood of prevailing on its assertion that independent claims 1−24 would
`have been obvious under any asserted ground.
`
`
`IV. ORDER
`Accordingly, it is hereby:
`ORDERED that the Petition is denied.
`
`
`
`
`
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`13
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 13 of 14
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`IPR2020-00259
`Patent 8,102,286 B2
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`PETITIONER:
`Marc Pensabene
`Nicholas J. Whilt
`O’MELVENY & MYERS LLP
`mpensabene@omm.com
`nwhilt@omm.com
`
`For PATENT OWNER:
`
`Kent Shum
`Neil A. Rubin
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`
`
`
`14
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`Neodron Ltd.
`Exhibit 2004
`IPR2020-00515
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`Page 14 of 14
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