U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC., DELL INC., AND DELL PRODUCTS LP .,
`Petitioner
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,432,173
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................... 3
`III. FEE AUTHORIZATION ................................................................................ 6
`IV. GROUNDS FOR STANDING ........................................................................ 6
`V.
`PRECISE RELIEF REQUESTED .................................................................. 6
`VI. THE CHALLENGED PATENT ..................................................................... 7
`VII. PATENT PROSECUTION HISTORY ........................................................... 9
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`IX. PRIORITY DATE ......................................................................................... 10
`X.
`CLAIM CONSTRUCTION .......................................................................... 11
`A.
`“a sensing element that comprises a sensing path that comprises
`a length”............................................................................................... 11
`“object” ................................................................................................ 12
`“displacement” .................................................................................... 12
`“the range of parameter values being associated with the length
`of the sensing path” (Claims 1, 10, 19) ............................................... 13
`“the sensing path comprises a closed loop” (Claims 2, 11) ................ 13
`E.
`XI. BRIEF DESCRIPTION OF THE PRIOR ART ............................................ 13
`A.
`Trent .................................................................................................... 13
`B.
`Engholm .............................................................................................. 16
`C.
`Bryan ................................................................................................... 19
`XII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS .................................................................................................... 22
`A. Ground 1: Claims 1-2, 8-11, and 17-19 are rendered obvious
`by Trent in light of the knowledge of a POSITA ................................ 22
`1.
`Independent claims 1, 10, and 19 are unpatentable over
`Trent .......................................................................................... 22
`
`B.
`C.
`D.
`
`i
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`

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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`2.
`
`3.
`
`Claims 2, 11: “wherein the sensing path comprises a
`closed loop” ............................................................................... 39
`Claims 8, 17: “wherein the parameter is selected from
`the group consisting of temperature, volume, contrast,
`brightness, and frequency” ........................................................ 40
`Claims 9, 18: “wherein [the media and] the sensing
`element [is/are] part of an electronic appliance selected
`from the group consisting of a cooking oven, microwave
`oven, television, washing machine, MP3 player, mobile
`phone, and multimedia device”................................................. 41
`B. Ground 2: Claims 1-3, 5-12, and 14-19 are rendered obvious
`by Trent in view of Engholm, and further in light of the
`knowledge of a POSITA ..................................................................... 42
`1.
`One of skill in the art would be motivated to combine the
`teachings of Trent and Engholm, and would have a
`reasonable expectation of success in doing so .......................... 42
`Independent claims 1, 10, and 19 are unpatentable over
`Trent in view of Engholm ......................................................... 44
`Claims 2, 11: “wherein the sensing path comprises a
`closed loop” ............................................................................... 51
`Claims 3, 12: “[switching/operable to switch] from a
`first mode of operation to a second mode of operation in
`response to one or more of the second signals if the
`displacement corresponding to the second capacitive
`coupling indicated by the second signals exceeds a pre-
`determined threshold, the second mode of operation
`being for adjusting the parameter within the range of
`parameter values based on the displacement of the object
`along the sensing path, the first mode of operation being
`for setting the parameter to the initial value” ........................... 53
`Claims 5, 14: “wherein adjusting the parameter
`comprises effecting an incremental change in the
`parameter from the initial value based on an amount of
`the displacement exceeding a pre-determined
`displacement threshold” ............................................................ 56
`
`4.
`
`2.
`
`3.
`
`4.
`
`5.
`
`ii
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`6.
`
`8.
`
`9.
`
`7.
`
`Claims 6, 15: “wherein adjusting the parameter
`comprises changing the parameter from the initial value
`by a number of units based on a number of times an
`amount of the displacement exceeds a pre-determined
`displacement threshold” ............................................................ 58
`Claims 7, 16: “[mapping/operable to map] all or a
`portion of the range of parameter values onto the sensing
`path around the initial value” .................................................... 59
`Claims 8, 17: “wherein the parameter is selected from
`the group consisting of temperature, volume, contrast,
`brightness, and frequency” ........................................................ 62
`Claims 9, 18: “wherein [the media and] the sensing
`element [is/are] part of an electronic appliance selected
`from the group consisting of a cooking oven, microwave
`oven, television, washing machine, MP3 player, mobile
`phone, and multimedia device”................................................. 63
`C. Ground 3: Claims 1-3, 5-12, and 14-19 are rendered obvious
`by Bryan in view of Trent and Engholm, and further in light of
`the knowledge of a POSITA ............................................................... 63
`1.
`One of skill in the art would be motivated to combine the
`teachings of Bryan, Trent, and Engholm, and would have
`a reasonable expectation of success in doing so ....................... 63
`Independent claims 1, 10, and 19 are unpatentable over
`Bryan in view of Trent and Engholm ....................................... 65
`Claims 2, 11: “wherein the sensing path comprises a
`closed loop” ............................................................................... 81
`Claims 3, 12: “switch[ing/operable to switch] from a
`first mode of operation to a second mode of operation in
`response to one or more of the second signals if the
`displacement corresponding to the second capacitive
`coupling indicated by the second signals exceeds a pre-
`determined threshold, the second mode of operation
`being for adjusting the parameter within the range of
`parameter values based on the displacement of the object
`along the sensing path, the first mode of operation being
`for setting the parameter to the initial value” ........................... 82
`
`2.
`
`3.
`
`4.
`
`iii
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`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`6.
`
`7.
`
`8.
`
`5.
`
`Claims 5, 14: “wherein adjusting the parameter
`comprises effecting an incremental change in the
`parameter from the initial value based on an amount of
`the displacement exceeding a pre-determined
`displacement threshold” ............................................................ 82
`Claims 6, 15: “wherein adjusting the parameter
`comprises changing the parameter from the initial value
`by a number of units based on a number of times an
`amount of the displacement exceeds a pre-determined
`displacement threshold” ............................................................ 82
`Claims 7, 16: “[mapping/operable to map] all or a
`portion of the range of parameter values onto the sensing
`path around the initial value” .................................................... 83
`Claims 8, 17: “wherein the parameter is selected from
`the group consisting of temperature, volume, contrast,
`brightness, and frequency” ........................................................ 83
`Claims 9, 18: “wherein [the media and] the sensing
`element [is/are] part of an electronic appliance selected
`from the group consisting of a cooking oven, microwave
`oven, television, washing machine, MP3 player, mobile
`phone, and multimedia device”................................................. 83
`XIII. CONCLUSION .............................................................................................. 84
`
`9.
`
`iv
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS
`
`Ex-1001
`
`U.S. Patent No. 8,432,173
`
`Ex-1002
`
`Declaration of Dr. Ben Bederson
`
`Ex-1003
`
`Curriculum Vitae of Dr. Ben Bederson
`
`Ex-1004
`
`Prosecution History of U.S. Patent No. 8,432,173
`
`Ex-1005
`
`U.S. Patent Publication No. 2004/025109 A1 (“Trent”)
`
`Ex-1006
`
`U.S. Patent No. 6,229,456 (“Engholm”)
`
`Ex-1007
`
`US Patent No. 5,559,301 (“Bryan”)
`
`Ex-1008
`
`Certain Touch-Controlled Mobile Devices, Computers, And
`Components Thereof, Inv. No. 337-TA-1162, Order 15 (“Claim
`Construction Decision”)
`
`Ex-1009
`
`EP 1273851 A2
`
`Ex-1016
`
`Bederson 1994 - Pad++: A Zooming Graphical Interface for
`Exploring Alternate Interface Physics
`
`Ex-1017
`
`Rogers 1996 - Tossing Objects in a Desktop Environment
`
`Ex-1018
`
`Rogers 1996 Figure
`
`Ex-1019
`
`Bederson 2000 - Fisheye Menus
`
`Ex-1020
`
`Chipman 2004 - SlideBar: Analysis of a linear input device
`
`Ex-1021
`
`Browne 2000 - Designing a Collaborative Finger Painting
`Application for Children
`
`Ex-1022
`
`US3482241
`
`Ex-1023
`
`US4136291
`
`v
`
`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`Ex-1024
`
`US5463388
`
`Ex-1025
`
`Tarr 2000 - Workshop on Multi-Dimensional Separation of
`Concerns in Software Engineering
`
`Ex-1026
`
`Adobe 1990 - Adobe Photoshop User Guide
`
`Ex-1027
`
`PalmPilot 1997 - PalmPilot Handbook
`
`Ex-1030
`
`173 Patent Claims Grouping for IPR Petition
`
`Ex-1031 Microsoft - The Windows Interface Guidelines
`
`vi
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`

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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`HP Inc.; Lenovo (United States) Inc.; Motorola Mobility LLC; Dell Inc., and
`
`Dell Products LP(collectively, “Petitioner”) request inter partes review (“IPR”) of
`
`Claims 1-3, 5-12, and 14-19 of U.S. Patent No. 8,432,173 (“the ’173 Patent”) (Ex-
`
`1001), currently assigned to Neodron Ltd. (“Patent Owner”).
`
`The ’173 Patent does not disclose a new touch sensor, a new capacitive
`
`touch sensor, or any new touch sensor technology. To the contrary, the ’173 Patent
`
`admits that, at the time the original application was filed, capacitive touch sensors
`
`had “become increasingly common and accepted in human interfaces and for
`
`machine control.” Ex-1001, 1:27-29. In fact, the patent admits that, “[i]n the field
`
`of home appliances, it is now quite common to find capacitive touch controls
`
`operable through glass or plastic.” Id., 1:29-31 (emphasis added). What the ’173
`
`Patent purports to disclose is a particular use of such known capacitive touch
`
`sensors to set and adjust the value of a parameter, such as the temperature of an
`
`oven or the brightness of a light. Id., Abstract, 5:27-32. According to the claimed
`
`invention, the parameter is first set to an initial value based on an object, such as a
`
`finger, coming into proximity with (e.g., touching) the sensor. Id. 3:35-45. The
`
`parameter is then adjusted based on the displacement of the object along the
`
`sensor. Id. 4:40-44.
`
`1
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`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`The acknowledged prior art, discussed in the Background section of the
`
`patent, is admitted to disclose the use of a capacitive touch sensor to set and adjust
`
`a parameter, such as temperature. Id., 1:45-2:10. For example, the prior art is
`
`admitted to disclose mapping parameter values to a touch sensor strip such that
`
`touching the sensor would set an initial value. Id., 1:47-58. The prior art is further
`
`admitted to disclose additional modes, such as a zoom mode, which may provide
`
`finer adjustment of the parameter by mapping a more narrow range of parameter
`
`values to the sensor strip. The user may then move their finger along the sensor
`
`strip to adjust the parameter from the initial value that had been set. Id., 1:58-2:10.
`
`According to the ’173 Patent, however, this prior art had a disadvantage in that it
`
`required the user to wait a period of time (e.g., 5 or 10 seconds) before the sensor
`
`would switch over to the second (zoom) mode of operation. Id. Accordingly, the
`
`alleged difference between the claimed invention of the ’173 Patent and the
`
`admitted prior art is eliminating the requirement of a delay before switching to the
`
`second mode of operation that allows adjustment based on displacement along the
`
`sensor. But even this alleged distinction, to the extent there even is a difference, is
`
`not new.
`
`Prior art presented in this Petition discloses setting a parameter to an initial
`
`value based on a first touch and then adjusting the value of that parameter based on
`
`the displacement of the object along the sensor. This prior art teaches all of the
`
`2
`
`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`features claimed in the ’173 Patent, and, thus, for the reasons set forth in this
`
`Petition, Claims 1-3, 5-12, and 14-19 of the ’173 Patent are unpatentable. Indeed,
`
`this Petition presents non-cumulative grounds of unpatentability that were not
`
`considered during prosecution. These grounds are reasonably likely to prevail, and
`
`this Petition, accordingly, should be granted and the challenged claims should be
`
`cancelled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`
`Real Parties-in-Interest: Petitioner identifies the following real parties-in-
`
`interest: HP Inc.; Lenovo (United States) Inc.; Motorola Mobility LLC; and Dell
`
`Inc., and Dell Products LP Petitioners also identify Lenovo Group Ltd., Dell Inc.,
`
`Dell Products LP, and Microsoft Corp. as real parties-in-interest without admitting
`
`that those parties are in fact real parties-in-interest. No unnamed entity is funding,
`
`controlling, or otherwise has an opportunity to control or direct this Petition or
`
`Petitioner’s participation in any resulting IPR.
`
`Related Matters: The ’173 patent is the subject of Inter Partes Review No.
`
`2020-00267, Samsung Electronics Co. Ltd. et al. v. Neodron Ltd. Patent Owner
`
`has asserted the ’173 Patent against Petitioner and others before the International
`
`Trade Commission in Inv. No. 337-TA-1162, In the matter of Certain Touch-
`
`Controlled Mobile Devices, Computers, And Components Thereof (the “1162 ITC
`
`3
`
`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`Investigation”); and in the following cases in the U.S. District Court for the
`
`Western District of Texas:
`
`Neodron Ltd. v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00323
`
`ADA (W.D. Tex.); Neodron Ltd. v. Microsoft Corporation, Case No. 6:19-cv-
`
`00321 (W.D. Tex.); Neodron Ltd. v. Hewlett Packard Enterprise Company, Case
`
`No. 6:19-cv-00319 (W.D. Tex.); Neodron Ltd. v. Dell Technologies, Inc., Case No.
`
`6:19-cv-00318 (W.D. Tex.); Neodron Ltd. v. Lenovo Group Ltd, And Lenovo
`
`(United States) Inc., No. 6:19-cv-00320 (W.D. Tex.); Neodron Ltd. v. Motorola
`
`Mobility LLC, Case No. 6:19-cv-00322 (W.D. Tex.); and Neodron Ltd. v. Amazon
`
`Com, Inc., Case No. 6:19-cv-00317 (W.D. Tex.).
`
`Lead and Back-Up Counsel:
`
`Lead Counsel
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Dr., Suite 300
`Reston VA 20190
`Phone: 703.773.4148
`Fax: 703.773.5000
`jim.heintz@dlapiper.com
`
`Backup Counsel
`Robert Buergi, Reg. No. 58,125
`DLA Piper LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303-2214
`Phone: 650.833.2000
`Fax: 650.833.2001
`robert.buergi@dlapiper.com
`
`Aliza George Carrano, Reg. No. 70,637
`Philip J. Eklem, Reg. No. 76,490
`Finnegan, Henderson, Farabow, Garrett
`and Dunner, LLP
`901 New York Avenue NW
`Washington, DC 20001
`Phone: 202.408.4000
`Fax: 202.408.4400
`
`4
`
`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`aliza.carrano@finnegan.com
`Robert K. High, Reg. No. 75,786
`Finnegan, Henderson, Farabow, Garrett
`and Dunner, LLP
`271 17th Street, NW
`Suite 1400
`Atlanta, GA 30363
`Phone: 404.653.6400
`Fax: 404.653.6444
`Christopher TL Douglas, Reg. No.
`56,950
`Alston & Bird LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`Phone: 704.444.1000
`Fax: 704.444.1111
`Lauren Bolcar, Reg. No. 68,994
`Alston & Bird LLP
`950 F Street NW
`Washington, DC 20004
`Telephone: 202.239.3300
`Fax: 202.239.3333
`Email: lauren.bolcar@alston.com
`
`Service Information: Please address all correspondence to counsel at the
`
`address above. Petitioner consents to electronic service by email at:
`
`DLA_Neodron_WDTX_IPR@us.dlapiper.com, Dell-Neodron-ITC@alston.com,
`
`Finnegan_Lenovo_IPRs@finnegan.com, and the email addresses listed above in
`
`the preceding section.
`
`5
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`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`III. FEE AUTHORIZATION
`
`Pursuant to 37 C.F.R. §42.15(a), §42.103(a), the PTO is authorized to charge
`
`any and all fees to Deposit Account No. 50-3266.
`
`IV. GROUNDS FOR STANDING
`
`Under 37 C.F.R. §42.102(a)(2), §42.104(a), Petitioner certifies that: the ’173
`
`Patent is available for IPR, this Petition is timely filed, and Petitioner is not barred
`
`or estopped from requesting IPR review on the grounds presented.
`
`V.
`
`PRECISE RELIEF REQUESTED
`
`Petitioner respectfully requests review and cancellation of Claims 1-3, 5-12,
`
`and 14-19 of the ’173 Patent under 35 U.S.C. §§ 102 and/or 103 based on the
`
`following grounds:
`
`
`
`Ground 1: Claims 1-2, 8-11, and 17-19 are rendered obvious by US
`
`Patent Publication 2004/0252109 (“Trent”) in light of the knowledge of a POSITA.
`
`
`
`Ground 2: Claims 1-3, 5-12, and 14-19 are rendered obvious by
`
`Trent in view of US Patent No. 6,229,456 (“Engholm”), and further in light of the
`
`knowledge of a POSITA.
`
`
`
`Ground 3: Claims 1-3, 5-12, and 14-19 are rendered obvious by U.S.
`
`Patent No. 5,559,301 (“Bryan”) in view of Trent and Engholm, and further in light
`
`of the knowledge of a POSITA.
`
`6
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`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`VI. THE CHALLENGED PATENT
`
`The ’173 Patent describes an alleged improvement to electromechanical
`
`controls, such as the dial on an oven or TV. It utilizes known capacitive sensors
`
`and the known concept of measuring displacement from point A to point B on that
`
`sensor (e.g., angular rotation around a circle) to set and adjust a parameter, such as
`
`the temperature of a cooking oven or volume of an MP3 player. Ex-1001 at 5:27-
`
`37, 7:55-57, 7:45-49.
`
`The patent explains that capacitive touch sensors, including those that are
`
`linear, curved, or circular, “have been known for many years” and were used to
`
`adjust parameters, such as the temperature on “a cooking apparatus.” Id. at 2:11-
`
`12, 1:45-49. The patent also admits that such prior art sensors included multiple
`
`modes to allow fine adjustment of a parameter. Id. at 1:47-2:44. For example, the
`
`patent describes prior art patent application EP1273851, which discloses a sensor
`
`having parameter values “mapped onto the [sensor] strip” that covered the entire
`
`temperature range from the minimum value (i.e., “the off condition of the domestic
`
`appliance”) to the “maximum value.” Id. at 1:54-58. A user selects a temperature
`
`using a “finger touch on the capacitive touch sensor.” Id. at 1:50-54, 2:29-31. If
`
`the user touched the strip for ten seconds, the sensor would enter a “zoom mode.”
`
`Id. at 1:64-67. In the zoom mode, the parameter values would be remapped onto
`
`the sensor strip to include only 10% of the original parameter range. Id. at 1:67-
`
`7
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`

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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`2:8. Zoom mode allowed the user to make a “finer adjustment” of temperature
`
`because a smaller temperature range was mapped onto the strip. Id. at 2:2-10.
`
`However, prior art implementations of the zoom function allegedly had
`
`“limitations regarding the manner in which the transition [was] effected from the
`
`full range mode to the zoom mode,” such as the ten-second wait time to switch to
`
`the zoom mode in EP1273851. Id. at 2:51-56.
`
`The ’173 Patent purports to improve on the prior art with a two-mode
`
`circular capacitive touch sensor, as shown below in Figures 1 and 2A:
`
`Figure 1 shows “a first mode of operation in which a user’s finger is used to select
`
`a cooking temperature” of 175° C. Id. at 7:61-63. Figure 2A shows a “second
`
`mode of operation” that is “automatically enter[ed] ... after a temperature has been
`
`selected in the first mode of operation.” Id. at 8:9-12. In the second mode, a “user
`
`is able to increase or decrease the temperature selected in a first mode” by
`
`8
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`

`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`“displac[ing] their finger in proximity with the sensing element 100 in an anti-
`
`clockwise direction to decease the temperature....” Id. at 8:13-23. However, the
`
`temperature is changed only if the displacement along the sensing path exceeds a
`
`“threshold angle,” such as 20°. Id. at 8:15-20. When that threshold is exceeded,
`
`the temperature changes only by 1° C. Id. This adjustment method is allegedly
`
`“advantageous[]” because it provides a “finer” resolution that “allows a user to
`
`accurately select a desired temperature.” Id. at 8:30-36.
`
`VII. PATENT PROSECUTION HISTORY
`
`The ’173 Patent issued from Application 13/332,945, which is a
`
`continuation of two prior applications, 12/703,614, and 11/868,566, and which
`
`further claims priority to provisional application 60/862,385 filed on October 20,
`
`2006. Application 13/332,945 was filed on May 27, 2011. A first notice of
`
`allowance was issued on June 19, 2012 (with no intervening office actions having
`
`been issued). Ex-1004, at 184. After payment of the issue fee, the applicant
`
`withdrew the application from issue and submitted some additional prior art for
`
`consideration by the examiner on November 5, 2012. Id., at 23. The examiner
`
`issued a second notice of allowance on January 3, 2013 (again without any
`
`substantive intervening office action). Id., at 14. The issue fee was paid and the
`
`application issued as patent 8,432,173 on April 30, 2013. Id., at 1. None of the
`
`9
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`

`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`prior art references in this petition were considered by the examiner during
`
`prosecution of the 13/332,945 application or any related applications.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`
`In the co-pending 1162 ITC Investigation, the Administrative Law Judge
`
`(ALJ) found, with respect to the ’173 Patent and the other patents at issue in that
`
`investigation, that “one of ordinary skill in the art would have had a bachelor’s
`
`degree in electrical engineering, computer engineering, computer science, or a
`
`related field, and at least two years of experience in the research, design,
`
`development, and/or testing of touch sensors, human-machine interaction and
`
`interfaces, and/or graphical user interfaces, and related firmware and software, or
`
`the equivalent, with additional education substituting for experience and vice
`
`versa.” Ex-1008, p. 8; Ex-1002, ¶¶30-32. Petitioner does not dispute this finding
`
`and applies this level of skill to the present petition. Id.
`
`IX. PRIORITY DATE
`
`The earliest possible priority for the ‘173 patent is the provisional patent
`
`application filed October 20, 2006. Petitioner takes no position on the proper
`
`priority date for each claim of the ’173 patent. All prior art references asserted in
`
`this petition are U.S. patents or U.S. patent publications that were published more
`
`than one year before the earliest possible filing date that could be afforded the ’173
`
`patent.
`
`10
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`X.
`
`CLAIM CONSTRUCTION
`
`Petitioner interprets the claims of the ’173 Patent according to the Phillips
`
`claim construction standard. 83 Fed. Reg. 51340, 51340-44 (Oct. 11, 2018);
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The ’173 patent is at issue
`
`in the co-pending 1162 ITC Investigation discussed above. To resolve the
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`particular grounds presented in this Petition, Petitioner does not believe that any
`
`term requires explicit construction.1 Ex-1002, ¶54. Nonetheless, in view of the
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`claim construction positions taken by the parties in the parallel 1162 ITC
`
`Investigation concerning the ’173 Patent and the Claim Construction Decision (Ex-
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`1008) issued by the ALJ therein, Petitioner identifies the below constructions as
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`potentially relevant.
`
`A.
`
`“a sensing element that comprises a sensing path that comprises a
`length”
`
`The term “sensing element” appears in every independent claim and should
`
`be construed consistent with the specification’s express definition to mean
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`“physical electrical sensing element made of conductive substances.” See Ex-1001
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`1 Because no claim construction issues are believed to be dispositive as to grounds
`
`presented here, Petitioner reserves its rights to assert in litigation claim
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`constructions not asserted here and that certain terms are indefinite.
`
`11
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`at 6:65-67. Patent Owner does not dispute this part of the construction in the
`
`related 1162 ITC investigation. Ex-1008, p. 18.
`
`In the 1162 ITC Investigation, “sensing path” was construed as “a path for
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`sensing that is determined for each use,” and the full limitation “a sensing element
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`that comprises a sensing path that comprises a length” was construed as “a physical
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`electrical sensing element made of conductive substances that comprises a path for
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`sensing that is determined for each use that comprises a length.” Ex-1008, p. 19-
`
`22.
`
`B.
`
`“object”
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`The term “object” appears in every independent claim and should be
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`construed consistent with the specification’s express definition to mean “either an
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`inanimate object, such as a wiper, pointer, or stylus, or alternatively, a human
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`finger or other appendage any of whose presence adjacent the element will create a
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`localized capacitive coupling from a region of the element back to a circuit
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`reference via any circuitous path, whether galvanically or nongalvanically.” See
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`Ex-1001 at 6:65, 7:2-8. Patent Owner does not dispute this part of the construction
`
`in the related 1162 ITC investigation. Ex-1008, p. 18.
`
`C.
`
`“displacement”
`
`All claims require adjusting a parameter value based on a “displacement” of
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`an object along the sensing path of a sensing element. Consistent with the ordinary
`
`12
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`meaning of the term and its usage in the specification, Petitioner and Patent Owner
`
`agree in the related 1162 ITC investigation to construe this term as “distance and
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`direction of movement.” Ex-1008, p. 18.
`
`D.
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`“the range of parameter values being associated with the length of
`the sensing path” (Claims 1, 10, 19)
`
`All claims recite “the range of parameter values being associated with the
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`length of the sensing path.” In the related 1162 ITC Investigation, “the range of
`
`parameter values being associated with the length of the sensing path” was
`
`construed to have its plain and ordinary meaning, which the ALJ held to be: “the
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`range of parameter values being associated with the length of the sensing path.”
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`Ex-1008, p. 22-24.
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`E.
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`“the sensing path comprises a closed loop” (Claims 2, 11)
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`Dependent claims 2 and 11 recite “the sensing path comprises a closed
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`loop.” In the related 1162 ITC Investigation, “the sensing path comprises a closed
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`loop” was construed to have its plain and ordinary meaning, which the ALJ held to
`
`be: “the sensing path comprises a closed loop.” Ex-1008, p. 24-25.
`
`XI. BRIEF DESCRIPTION OF THE PRIOR ART
`
`A.
`
`Trent
`
`Trent was published on December 16, 2004, and qualifies as prior art under
`
`at least pre-AIA 35 U.S.C. §102(b).
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`13
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`Trent is titled “Closed-loop sensor on a solid-state object position detector.”
`
`Trent discloses several methods related to the construction and use of a closed loop
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`capacitive positioning sensor, including its use as a capacitive rotary dial for
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`software control of, for example, audio parameters such as volume, balance, treble,
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`and bass. Trent discloses both the physical sensor, such as in Figures 4 and 5, and
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`several different uses of the capacitive sensors for user interfaces, such as in Figure
`
`36.
`
`14
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`Trent discloses several different ways to use its sensors to control various
`
`parameters in a computing system. For example, Trent discloses using its closed
`
`loop sensors to measure an “absolute position” of a user’s touch on the sensor.
`
`Trent also discloses using “relative positions (or motions)” of a user’s touch. See,
`
`e.g., Ex-1005, [0074]. Each of these modes of operation can be used to control
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`parameters in several ways, such as “to indicate a starting value for a controlled
`
`parameter,” Ex-1005, [0092], or to indicate “correspondence between the motion
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`of the user’s input object and the corresponding variation in the controlled
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`parameter,” Ex-1005, [0139]. Trent explains that “[i]n general, any application
`
`parameter or control that needs to vary over a large range of possible values can
`
`benefit from the present invention.” Ex-1005, [0142].
`
`15
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`B.
`
`Engholm
`
`Engholm issued on May 8, 2001, and qualifies as prior art under at least pre-
`
`AIA 35 U.S.C. §102(b).
`
`Engholm is titled “Method and apparatus for facilitating user interaction
`
`with a measurement instrument using a display-based control knob.” Engholm
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`discloses “facilitating user interaction with a ... control knob glyph corresponding
`
`to a user-adjustable parameter.” Ex-1006, Abstract. The “control knob glyph” has
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`an indicator and a “circular drag area through which the indicator can be rotated.”
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`Id. Engholm explains that “the location of the indicator within the drag area”
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`responds to inputs of “rotational movement” and updates “the value of the
`
`parameter changed in response to such inputs.” Id. Engholm also discloses several
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`input mechanisms of the prior art, such as the sliders depicted in Figure 1a.
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`16
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`U.S. Patent No. 8,432,173
`Petition for Inter Partes Review
`
`Engholm states that: “one problem with sliders is the inability to make fine
`
`adjustments. Rather, the user is limited by how finely he or she can move slide
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`box 102 in a ‘click and drag’ manner, as well as how ‘sensitivity’ parameters for
`
`the slider are set up.” Ex-1006, 1:39-44. Another problem of the prior art devices
`
`discussed by Engholm is “that they lack the intuitive clockwise vs.
`
`counterclockwise mapping to increasing value vs. decreasing value found in
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`manual control knobs to which people are accustomed.” Ex-1006, 2:5-9.
`
`To address this and other problems, Engholm discloses that “a control knob
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`glyph corresponding to a user-adjustable parameter of the measurement instrument
`
`is displayed, the control knob glyph having an indicator and a partially circular
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`drag area through which the indicator can be rotated in both a clockwise and a
`
`counterclockwise manner. Inputs indicating amounts of rotational movement for
`
`the indicator can be received, and the location of the indicator within the drag area
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`and the value of the parameter is changed in response to such inputs.” Ex-1006,
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`2:21-29.
`
`Examples of Engholm’s “contro