UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`APPLE INC. AND MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`NEODRON LTD.,
`Patent Owner
`____________
`
`Case IPR2020-00778
`Patent No. 7,821,425
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`Table of Contents
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`I.
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`Introduction ............................................................................................................................. 2
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`II. Overview of ’425 Patent and Challenged Claims ................................................................... 3
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`III. Petitioner’s Asserted Grounds and References ....................................................................... 9
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`IV. Ground 1 Fails Because the Petition Does Not Show that the Asserted References Teach or
`Suggest the Claimed “Bias” .......................................................................................................... 10
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`A. Petitioner relies on Jahier alone as disclosing the claimed “bias” .................................... 10
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`B. Petitioners do not and cannot show that Jahier teaches or suggests the claimed “bias.” .. 11
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`C. This Board Already Made Findings About Jahier’s Shortcoming, Which Make Clear That
`Petitioners Here Do Not And Cannot Show that Jahier Teaches or Suggests the Claimed
`“Bias.” ....................................................................................................................................... 16
`
`V. Grounds 2, 3, 4, and 5 Fail Because Jahier Is Also the Primary Reference For These
`Grounds and the Additional References Do Not Remedy the Deficiencies in Jahier. ................. 18
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`VI. Institution Should Also Be Denied Under the Fintiv Factors ............................................... 19
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`A. Parallel Proceedings .......................................................................................................... 20
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`B. Factor 1 weighs against institution, as the ITC has not granted a stay and no evidence
`exists that a stay may be granted. .............................................................................................. 23
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`C. Factor 2 weighs strongly against institution, as the hearing is scheduled to begin eight
`months before the FWD. ........................................................................................................... 24
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`D. Factor 3 weighs against institution, as Markman rulings are expected to issue before the
`date the institution decision is due. ........................................................................................... 26
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`E. Factor 4 weighs against institution, as there is likely overlap between this IPR and the
`ITC proceeding ......................................................................................................................... 27
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`F. Factor 5 weighs against institution, as Petitioners are Respondents in the parallel ITC
`proceedings. .............................................................................................................................. 30
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`G. Factor 6 weighs against institution, as the Petition suffers from weaknesses that apply to
`all grounds and claims. ............................................................................................................. 30
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`H. Summary Regarding Fintiv Factors .................................................................................. 31
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`VII. Conclusion ............................................................................................................................ 31
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`i
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`
`Exhibits
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`Exhibit No.
`2001
`
`2002
`
`2003
`
`Description
`ITC Investigation No. 337-TA-1193, Order No. 6 (Procedural
`Schedule)
`Excerpts of Respondents' Invalidity Contentions, ITC
`Investigation No. 337-TA-1162, Ex. C-14
`Excerpts of Respondents' Invalidity Contentions, W.D. Tex.
`Case No. 1:19-cv-00874-ADA, Invalidity Contentions, Ex. C.14,
`Excerpts
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`1
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`
`I.
`
`Introduction
`The Petition challenges the claims of U.S. Patent No. 7,821,425 (Ex. 1001)
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`under five grounds of unpatentability, but all of the grounds rely on Jahier (Ex. 1007)
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`as the primary reference. Moreover, all of the grounds rely on Jahier to meet the
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`claimed “bias” in favor of (or as a function of) another key (e.g., previously selected
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`key), which are in all of the independent claims (claims 1, 7, 16, 25, 33). The Petition
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`fails because it fails to establish that Jahier (or any other asserted reference) discloses
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`the claimed “bias.” The Petition also fails to show that the claimed “bias” would be
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`obvious.
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`The Petition provides an illustration (Pet. at 20) that is entirely unsupported
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`in Jahier. The Petition argues that the “preselection” of the “second key” is allegedly
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`“biased” in favor of another key (e.g., previously selected key) which the Petition
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`alleges is “key I” (see Pet. at 19-21). But in reality, the “preselection” of the “second
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`key” has nothing to do with “key I.” Rather, the “second key” is preselected when
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`its value merely exceeds a “high threshold,” regardless of the value of key I.
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`Accordingly, there is no bias in favor of (or as a function of) another key (e.g.,
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`previously selected key). This limitation is not disclosed and would not be obvious.
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` Indeed, in another order, the PTAB has already made findings about Jahier
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`and its shortcomings. And those findings support Patent Owner’s argument and are
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`fatal to the Petition. At bottom. Petitioners efforts to recast Jahier’s “thresholds” as
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`a form of “biasing” fails.
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`Moreover, there are other reasons to deny review. Instituting review in this
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`IPR would cause the parties and the Board to incur significant inefficiencies and
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`wasted efforts of the type warned of in Fintiv and NHK Spring. On February 14,
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`2020, Patent Owner Neodron filed a complaint before the International Trade
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`Commission against eight sets of Respondents—including Petitioners Apple and
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`Microsoft—asserting infringement of the ‘425 patent. A five-day evidentiary
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`hearing, before ALJ Elliot is set on February 16–22, 2021, eight months before the
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`FWD deadline. Further, this hearing will involve the claim construction standard and
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`likely the same challenged claims, invalidity theories, and prior art as this IPR.
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`Additionally, ALJ Elliot also has before him an investigation involving a patent from
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`the same family as the ’425 patent in its advanced stages. Under the PTAB’s
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`precedential orders of Fintiv and NHK Spring, the Board should exercise its
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`discretion to deny institution under § 314(a).
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`In sum, the Petition fails both substantively, as well as under Fintiv and NHK
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`Spring. Accordingly, institution should be denied.
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`II. Overview of ’425 Patent and Challenged Claims
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`U.S. Patent No. 7,821,425 (“’425 patent,” Ex. 1001) issued on October 26,
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`2010, from an application filed on April 12, 2006, and is a continuation-in-part of
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`Patent No. 7,256,714 filed on July 14, 2005, which is a continuation of Patent No.
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`6,993,607 filed on July 11, 2003. The ‘425 patent claims priority to Provisional
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`Patent Application No. 60/597,851 filed on December 21, 2005, and Provisional
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`Patent Application No. 60/395,368 filed on July 12, 2002.
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`The ‘425 patent is entitled “capacitive keyboard with non-locking reduced
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`keying ambiguity” and discloses apparatus, system, and method for removing keying
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`ambiguity from a keyboard.
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`
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`As taught in one embodiment, the patent describes Figure 1A, depicted below,
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`as “‘an array of ‘N’ tightly spaced capacitive keys in a key panel 11 which would
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`benefit from the invention.”
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`‘425 patent, col 4:64-5:10. “A finger touching a principle desired key electrode 1
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`could easily create a ‘fingerprint’ outline 3, as shown in dashed lines, where the
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`fingerprint has a centroid location A. This fingerprint also encompasses keys other
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`than the intended key.” Id. And the “amount of intersecting surface area between the
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`dashed line and each key area is a reasonable representation of the amount of signal
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`level change each intersected key will receive due to the touch, although even non-
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`touched keys will also see an increase in signal due to mere finger proximity and to
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`fringe-field effects within the touch panel.” Id.
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`In this case, “the desire is to select the one and only one key which is intended
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`by the user while suppressing outputs from adjacent keys intersected by the
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`fingerprint.” ‘425 patent, col 5:11-24. In this “‘non-locking’ key suppression
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`invention, if the finger slides to a new key location 4, shown dotted with its centroid
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`at location B, where the movement is shown by the arrow from A to B, this
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`movement will not cause the first key 1 to remain solely active even though it has
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`sufficient signal to still retain its state, i.e., its signal still lies above its threshold level
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`despite being reduced by the movement to a new key.” Id. Instead, “the invention
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`provides that the newly intended key 2, having a larger signal level due to a higher
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`degree of fingerprint intersection than key 1, becomes the solely active key by
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`switching off the active state of key 1.” Id.
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`To illustrate an example of this, “FIGS. 1b and 1c further detail the change in
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`signals on the keys of FIG. 1 a by virtue of the relative electrode surface intersections
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`with the fingerprint first at location A (FIG. 1b) and then at location B (FIG. 1c).
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`The signal strengths are shown in the bar plots in the lower portions of the respective
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`figures:” Id. at 5:25-33.
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`
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`‘425 patent, col 5:25-50.
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`“It is desired that in order for a key to ‘win’ the status of user-selected key, its
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`signal change must exceed a threshold value, and its signal has to be the largest. In
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`FIG. 1 b, key 1 wins. In FIG. 1 c, key 2 wins.” Id. However, “[i]f the key selection
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`method operates solely by picking a maximum signal strength, the keyboard may be
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`subject to an undesirable rapid switching back and forth between two keys having
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`nearly-identical signal strengths (e.g., fingerprint areas). This sort of ‘chatter’ is
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`preferably prevented by biasing or skewing the key selection method to favor an
`
`already selected key.” Id. That is, “the switchover process is made slightly more
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`difficult than would occur with straight equivalence.” Id. And “[t]his bias may be
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`provided in many ways in subsequent key selection decisions. These ways may be
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`equivalent to adding an incremental value to the signal associated with the selected
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`key; multiplying the signal strength of the selected key by a value greater than one
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`in subsequent selections; subtracting a respective incremental value from the signal
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`strengths associated with each of the non-selected keys; or multiplying the signal
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`strength of each of the non-selected keys by a respective value less than one.” Id.
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`The Petition challenges claims all 40 claims (claims 1-40) of the ‘425 patent,
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`of which claims 1, 7, 16, 25, and 33 are independent claims, which recite as follows:
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`Claim 1. An apparatus for supplying a unique key output from an operating
`key board comprising a plurality of keys when a user is proximate two or
`more keys thereof, the apparatus comprising:
`a respective sensor uniquely associated with each of the two or more keys,
`each of the sensors connected to supply a respective output signal
`representative of the user's coupling thereto to a controller;
`the controller operable to iteratively compare all of the two or more output
`signals supplied thereto to respective threshold values and to each other,
`to initially select as the key for supplying the unique key output that one
`of the two or more keys having a maximum value of all the signal outputs
`that exceed their respective thresholds, and, on subsequent iterations, to
`bias the iterated comparison in favor of the previously selected key.
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`Claim 7. A method of providing a unique output representative of a key
`uniquely selected by a user from a plurality of keys in which each key is
`operable to provide a respective detected signal having a respective
`signal strength responsive to a presence of at least a portion of the user,
`the method comprising the sequentially executed steps of:
`(a) measuring the respective detected signal strength associated with each key
`in the plurality thereof;
`(b) comparing each of the measured signal strengths with a respective selected
`threshold value to form a subset of keys having associated signals greater
`than the respective threshold values;
`(c) determining that no key has been selected if the subset is empty, and
`otherwise determining that the key that is in the subset and that is
`associated with a maximum signal strength is the current uniquely
`selected key;
`(d) subsequent to determining a uniquely selected key, modifying step (c) to
`bias subsequent determinations in favor of the uniquely selected key
`and then repeating steps (a), (b) and the modified step (c).
`Claim 16. A method of providing a unique output representative of a key
`selected by a user from a plurality of keys operable to provide respective
`detected signals having respective signal strengths responsive to a
`presence of at least a portion of the user, the method comprising the steps
`of:
`(a) measuring, at a first instant, the respective detected signal strength
`associated with each key in the plurality thereof, and retaining for further
`consideration at the first instant respective retained values representative
`of only those signal strengths exceeding respective threshold values;
`(b) selecting, as the initial user-selected key, that key having the maximum of
`all the values retained at the first instant;
`(c) measuring, at a second instant, later than the first instant, the respective
`detected signal strength associated with each key in the plurality thereof,
`and retaining for further consideration at the second instant respective
`retained values representative only of those signal strengths exceeding
`respective threshold values;
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`(d) comparing, in a fashion biased in favor of the initial user-selected key,
`the values retained for further consideration at the second instant to select
`the user-selected key at the second instant.
`Claim 25. A device comprising:
`a controller operable to receive sensor values from a plurality of keys and bias
`a determination of a selected key as a function of a previously
`selected key.
`Claim 33. A device comprising:
`a plurality of keys for selection by a user;
`a sensor to provide sensor values responsive to selection of the keys; and
`a controller coupled to the sensor to receive the sensor values from the
`plurality of keys and bias a determination of an active key as a
`function of a current active key.
`III. Petitioner’s Asserted Grounds and References
`The Petition asserts the following five “grounds” of unpatentability:
`
`• “GROUND 1: JAHIER IN VIEW OF THE KNOWLEDGE OF A
`PHOSITA RENDERS OBVIOUS CLAIMS 1-2, 5-10, 14-19, 24-25,
`29-37, AND 39-40” (Pet. at 11);
`
`• “GROUND 2: JAHIER IN VIEW OF QT60161 RENDERS OBVIOUS
`CLAIMS 5, 14, 23, 26, 27-28, 30, 36” (Pet. at 42);
`
`• “GROUND 3: JAHIER IN VIEW OF HOUSTON RENDERS
`OBVIOUS CLAIMS 4, 12, 13 21, AND 22” (Pet. at 52);
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`• “GROUND 4: JAHIER IN VIEW OF SENK RENDERS OBVIOUS
`CLAIMS 4, 12, 13, 21, AND 22” (Pet. at 57);
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`• “GROUND 5: JAHIER IN VIEW OF WEST RENDERS OBVIOUS
`CLAIMS 3, 11, 20, AND 38” (Pet. at 63).
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`9
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`IV. Ground 1 Fails Because the Petition Does Not Show that the Asserted
`References Teach or Suggest the Claimed “Bias”
`Ground 1 challenges claims 1-2, 5-10, 14-19, 24-25, 29-37, and 39-40 as
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`being “obvious” over “Jahier in view of the knowledge of a PHSITA.” Pet. at 11. It
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`fails because the Petition fails to establish that Jahier meets the claimed “bias,”
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`which is in all of the independent claims (claims 1, 7, 16, 25, and 33):
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`• Claim 1: “bias the iterated comparison in favor of the previously
`selected key”
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`• Claim 7: “bias subsequent determinations in favor of the uniquely
`selected key”
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`• Claim 16: “biased in favor of the initial user-selected key”
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`• Claim 25: “bias a determination of a selected key as a function of a
`previously selected key”
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`• Claim 33: “bias a determination of an active key as a function of a
`current active key.”
`The Petition relies solely on Jahier in its argument that these claim elements
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`are met. See, e.g., Pet. at 19-21. Thus, the Petition must fail.
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`A.
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`Petitioner relies on Jahier alone as disclosing the claimed “bias”
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`The independent claims require “bias” in favor of, or as a function of, another
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`key (e.g., previously selected key / uniquely selected key / initial user-selected key /
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`current active key). Petitioner argues that Jahir expressly discloses this limitation.
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`Pet. at 19-21. And notably, Petitioner does not present any obviousness theory for
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`this claim requirement.
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`Patent No. 7,821,425
`Petitioner does not acknowledge that “bias” is not disclosed by Jahier or
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`explain the differences between Jahier and the claim requirement. See Graham v.
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`John Deere Co., 383 U.S. 1, 17 (1966) (requiring that the differences between the
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`prior art and the claims at issue be ascertained as part of an obviousness analysis).
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`Nor does Petitioner explain why and how a POSITA would be motivated to modify
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`Jahier or combine it with other references to arrive at the claim requirement. See
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`ActiveVideo Networks, Inc. v. Verizon Comms. Inc., 694 F. 3d 1312, 1327–28 (Fed.
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`Cir. 2012) (requiring showing of “why” and “how” for motivation to combine).
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`In sum, Petitioner does not present any obviousness theory, argument, or
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`evidence that the claimed “bias” is satisfied. But because Jahier does not disclose
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`this requirement, as shown below, Petitioner’s Ground 1 theory fails.
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`B.
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`Petitioners do not and cannot show that Jahier teaches or suggests
`the claimed “bias.”
`The Petition itself confirms the critical nature of the claimed “bias.”
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`Petitioners contend that this limitation must be a specified non-zero “bias amount”
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`that “exceeds the preselected key I [i.e., the alleged ‘previously selected key’].” Pet.
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`at 20 (emphasis added).
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`The ‘425 patent makes clear that having a threshold and selecting the highest
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`key based on threshold ranges alone is not sufficient to meet the “biased” limitation:
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`If the key selection method operates solely by picking a maximum
`signal strength, the keyboard may be subject to an undesirable rapid
`switching back and forth between two keys having nearly-identical
`
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`signal strengths (e.g., fingerprint areas). This sort of chatter is
`preferably prevented by biasing or skewing the key selection method
`to favor an already selected key. That is, the switchover process is
`made slightly more difficult than would occur with straight
`equivalence. This bias may be provided in many ways in subsequent
`key selection decisions. 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.
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`‘425 patent at 5:34-50 (emphases added).
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`Instead, as the specification and even parts of the file history make clear, you
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`need something more—something different: the claimed “bias” being in favor of
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`another key, which can be, depending on the claim, the previously selected key,
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`uniquely selected key, the initial user-selected key, or the current active key, Indeed,
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`the claims were allowed for this very reason:
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`‘425 File History at 2010-07-07 Notice of Allowance at 2.
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`
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`The claims themselves make clear that the “bias” They confirm that the
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`claimed “bias” is not the same thing as a “threshold.” Otherwise, the claims would
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`Patent No. 7,821,425
`not use both terms in different ways. Thus, under Federal Circuit law, “threshold”
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`and “bias” should be presumed to have different meanings, not the same meaning.
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`E.g., Pause Technology LLC v. TiVo, Inc., 419 F.3d 1326, 1334 (Fed. Cir. 2005) (“In
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`construing claims, however, we must give each claim term the respect that it is due.”)
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`The claims make clear that signal values can survive thresholds, but the claim
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`still requires that “biasing” occur in favor of or as a function of another key. Biasing
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`requires analysis of values or inputs that can lead to a winner between more than one
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`key “based on a previously selected key.” Mere thresholding that does not always
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`enable a winner to picked does not meet this element, because more than one key
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`can be higher than multiple “thresholds.”
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`This creates an insurmountable problem for Petitioners. Unable to find any
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`actual “bias” in the prior art, the Petition relies exclusively on Jahier and, more
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`specifically, Jahier’s “thresholds” to argue that claim element is met. Pet. at 19-21.
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`But, contrary to the Petition’s arguments, in Jahier, there is no bias in favor of or as
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`a function of another key (e.g., previously selected key / uniquely selected key /
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`initial user-selected key / current active key). Rather, in Jahier, “the second key” (as
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`described in the Petition) is always selected whenever it exceeds the high threshold,
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`regardless of the signal value of the alleged “key I,” as explained below.
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`As an initial matter, while the Petition provides an illustration on page 20 with
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`“bias amount” to describe Jahier, Jahier in fact does not mention any such concept.
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`Indeed, there is no concept of bias regarding two different keys. In other words,
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`Petition’s illustration on page 20 is entirely unsupported by Jahier.
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`Rather, Jahier discloses comparing a single key’s capacitance value
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`(“ECC(i)”) with a “low threshold” and/or a “high threshold.” See, e.g., Jahier (Ex.
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`1007) at 4:54-6:49. In other words, there are just three states for a particular key:
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`value (ECC) being less than low threshold (“LT”); ECC being less than high
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`threshold (“HT”); and ECC being between LT and HT.
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`
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`Jahier teaches the following transition, which encompasses every possible
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`scenarios for transition between one key (“key i”) and another key (“key I”):
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`#
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`Key I
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`Second Key
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`Transition from BEGIN
`SELECTION if Key I is
`preselected
`Return to NO SELECTION
`ECC < LT
`1 ECC < LT
`LT <= ECC < HT Return to NO SELECTION
`2 ECC < LT
`ECC >= HT
`Second Key preselected
`3 ECC < LT
`ECC < LT
`Key I remains preselected
`4 LT <= ECC < HT
`LT <= ECC < HT Key I remains preselected
`5 LT <= ECC < HT
`6 LT <= ECC < HT ECC >= HT
`Second Key preselected
`7 ECC >= HT
`ECC < LT
`Key I remain selected
`8 ECC >= HT
`LT <= ECC < HT Key I remain selected
`9 ECC >= HT
`ECC >= HT
`Unspecified. Can return to:
`NO SELECTION
`or
`key 1 selected
`See, e.g., Jahier (Ex. 1007) at 4:48-6:49 & Fig. 3.
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`
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`As can be seen in the above table, the Second Key becomes “preselected”
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`(Petition’s alleged “selected”) only when the Second Key’s value (ECC) exceeds
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`high threshold (HT), regardless of the value of Key I (Petition’s alleged “previously
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`selected key”). But the Petition makes the following unsupported argument:
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`“During subsequent iterative cycle measurements, a second key may displace
`preselected key I only if its capacitance difference value ECC(i) exceeds both
`preselected key I’s ECC(i) and the High Threshold. Id. at 6:13-28. The amount
`by which the High Threshold exceeds preselected key I’s ECC(i) is thus a
`bias. … As illustrated above, preselected key I has a ECC(i) signal above the
`Low Threshold (green) but below the High Threshold (red). Decl. (Ex. 1003),
`¶¶54-55. If a second key’s ECC(i) signal exceeds the preselected key I by
`what is labeled a ‘bias amount’ (blue) and the High Threshold, the second
`key then becomes the new preselected key.”
`Pet. at 31-32 (emphasis added).
`
`This argument is, objectively, a mischaracterization of Jahier—because it
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`suggests that the value of “key I” (Petition’s alleged “previously selected key”) has
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`anything to do with “the second key” being preselected. As shown above, that is
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`false: Key I plays no role in the Second Key being preselected. Indeed, the Second
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`Key is always preselected when its value exceeds high threshold. In other words,
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`there is no “bias” in favor of or as a function of another key (e.g., previously selected
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`key / uniquely selected key / initial user-selected key / current active key). The
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`Petition fails to show the claimed “bias” is met.
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`Indeed, portions of Jahier’s thresholds that Petitioners do not point to make
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`clear that they do not form a “bias.” Instead, they are like other garden-variety
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`thresholds that do not necessarily help pick a winner signal or key. For example, if
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`both keys have signals greater than the HT High Threshold, there is no telling who
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`wins—as seen in scenario #9 below:
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
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`#
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`Key I
`
`Second Key
`
`Transition from BEGIN
`SELECTION if Key I is
`preselected
`Return to NO SELECTION
`ECC < LT
`LT <= ECC < HT Return to NO SELECTION
`ECC >= HT
`Second Key preselected
`ECC < LT
`Key I remains preselected
`LT <= ECC < HT Key I remains preselected
`ECC >= HT
`Second Key preselected
`ECC < LT
`Key I remain selected
`LT <= ECC < HT Key I remain selected
`ECC >= HT
`Unspecified. Can return to:
`NO SELECTION
`or
`key 1 selected
`See, e.g., Jahier (Ex. 1007) at 4:48-6:49 & Fig. 3.
`
`1 ECC < LT
`2 ECC < LT
`3 ECC < LT
`4 LT <= ECC < HT
`5 LT <= ECC < HT
`6 LT <= ECC < HT
`7 ECC >= HT
`8 ECC >= HT
`9 ECC >= HT
`
`C. This Board Already Made Findings About Jahier’s Shortcoming,
`Which Make Clear That Petitioners Here Do Not And Cannot
`Show that Jahier Teaches or Suggests the Claimed “Bias.”
`Indeed, the PTAB already denied another IPR petition in a parent patent with
`
`the same patent specification because the very same Jahier reference failed to teach
`
`claims that requires a “bias[]” as well. In so doing the PTAB made some key
`
`determinations about what Jahier teaches and what it does not. Those findings
`
`support Patent Owner’s arguments here and are fatal to the Petition.
`
`Key to the question of institution here, this Board already correctly found that
`
`Jahier’s “threshold” values are nothing like the “bias” required by the claims. It
`
`found, for example, that Jahier merely “determines the differences between
`
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`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.” IPR2020-00259, Paper 8, Order Denying Institution (May 26, 2020)
`
`at 8.
`
`Based on its correct analysis of Jahier, this Board rejected the very same
`
`characterizations Petitioners make and rely on here in suggesting that Jahier’s
`
`“thresholds” are a “bias” as the claim requires. In fact, referring to a virtually
`
`identical demonstrative image that Petitioners present and rely upon again here, the
`
`Board did “not agree” that this was an accurate depiction of the teachings of Jahier:
`
`Id. at 11. And, rather conclusively, the Board added its punchline summary about
`
`
`
`Jahier’s shortcomings:
`
`
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`17
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`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`In fact, the difference between [Jahier’s] two signals may vary from
`
`cycle to cycle, [but have] no bearing in Jahier’s determination because:
`
`(1) Jahier 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.”
`
`Id. at 12. As Patent Owner already has shown, this directly contradicts false premises
`
`that Petitioners here rely on. Thus, it should resolve any debate about whether
`
`Petitioner’s arguments pass muster. They do not. The Petition must be denied.
`
`V. Grounds 2, 3, 4, and 5 Fail Because Jahier Is Also the Primary
`Reference For These Grounds and the Additional References Do Not
`Remedy the Deficiencies in Jahier.
`The Petition alleges the following for Grounds 2-5:
`
`• “GROUND 2: JAHIER IN VIEW OF QT60161 RENDERS OBVIOUS
`CLAIMS 5, 14, 23, 26, 27-28, 30, 36” (Pet. at 42);
`
`• “GROUND 3: JAHIER IN VIEW OF HOUSTON RENDERS
`OBVIOUS CLAIMS 4, 12, 13 21, AND 22” (Pet. at 52);
`
`• “GROUND 4: JAHIER IN VIEW OF SENK RENDERS OBVIOUS
`CLAIMS 4, 12, 13, 21, AND 22” (Pet. at 57);
`
`
`
`
`
`
`
`• “GROUND 5: JAHIER IN VIEW OF WEST RENDERS OBVIOUS
`CLAIMS 3, 11, 20, AND 38” (Pet. at 63.
`None of these “Grounds” addresses independent claims 1, 7, 16, 25, and 33.
`
`Accordingly, Grounds 2-5 do not remedy the deficiencies in Jahier that is set forth
`
`above with respect to Ground 1 for claims 1, 7, 16, 25, and 33.
`
`
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`18
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`

`VI.
`
`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`Institution Should Also Be Denied Under the Fintiv Factors
`35 U.S.C. § 314(a) gives the Board discretion to deny institution because of
`
`efficiency considerations stemming from parallel proceedings on the same patent.
`
`See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept.
`
`12, 2018) (precedential, designated May 7, 2019) (“NHK Spring”). The PTAB
`
`recently promulgated six factors for determining whether discretionary denial due to
`
`efficiency considerations relating to parallel proceedings is appropriate (the “Fintiv
`
`factors”):
`
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`
`2.
`
`proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`
`3.
`
`investment in the parallel proceeding by the court and the parties;
`
`4.
`
`overlap between issues raised in the petition and in the parallel
`proceeding;
`
`5. whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
`
`6.
`
`other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`
`Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential, designated May 5, 2020) (“Fintiv Order”) at 6; Apple Inc., v. Fintiv,
`
`Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (order denying institution)
`
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`19
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`

`Case IPR2020-00778 POPR
`Patent No. 7,821,425
`(informative, designated July 13, 2020) (“Fintiv ID”) at 7–8. Here, all six Fintiv
`
`factors weigh against institution.
`
`A.
`
`Parallel Proceedings
`
`Neodron filed a complaint in the ITC alleging infringement of the ‘425 patent
`
`by both Petitioners—Apple and Microsoft—on February 14, 2020. See Certain
`
`Capacitive Touch-Controlled Mobile Devices, Computers, and Components
`
`Thereof, Investigation No. 337-TA-1193 (before Administrative Law Judge
`
`Cameron Elliot). Six parallel district court cases, all asserting patents which include
`
`the ‘425 patent, were concurrently filed along with the ITC complaint. Neodron Ltd.
`
`v. Amazon.com, Inc., Case No. 6:20-cv-00115-ADA (W.D. Tex.); Neodron Ltd. v.
`
`Apple Inc., Case No. 6:20-cv-00116-ADA (W.D. Tex.); Neodron Ltd. v. ASUSTeK
`
`Computer Inc., Case No. 6:20-cv-00117-ADA (W.D. Tex.); Neodron Ltd. v. LG
`
`Electronics Inc., Case No. 6:20-cv-00118-ADA (W.D. Tex.); Neodron Ltd. v.
`
`Microsoft Corporation, Case No. 6:20-cv-00119-ADA (W.D. Tex.); Neodron Ltd.
`
`v. Samsung Electronics Co., Ltd., et al., Case No. 6:20-cv-00121-ADA (W.D. Tex.).
`
`This Petition for inter partes review was filed on April 16, 2020.
`
`The ITC instituted the investigation on March 16, 2020, as Investigation No.
`
`337-TA-1193 (the “1193 Investigation”). All six parallel district court cases were
`
`efficiently stayed pending the r