`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. & MICROSOFT CORPORATION
`Petitioners
`
`v.
`
`Neodron, Ltd.
`Patent Owner
`____________
`
`
`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,749,251
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. SUMMARY OF THE ’251 PATENT ........................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’251 PATENT ..................... 1
`B. PROSECUTION HISTORY OF THE ’251 PATENT .................................................. 2
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ................ 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ............................................................................................................ 3
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................. 3
`B. DISCRETIONARY CONSIDERATIONS ................................................................. 3
`C. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 10
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .............................. 11
`IV. CLAIMS 1-20 OF THE ’251 PATENT ARE UNPATENTABLE ........... 16
`A. GROUND 1: KOZIUK IN VIEW OF THE KNOWLEDGE OF A PHOSITA RENDERS
`OBVIOUS CLAIMS 1, 7, 10, AND 16 ................................................................. 16
`B. GROUND 2: KOZIUK IN VIEW OF KALENDRA RENDERS OBVIOUS CLAIMS 3, 12,
`AND 18 .......................................................................................................... 33
`C. GROUND 3: KOZIUK IN VIEW OF QT110 RENDERS OBVIOUS CLAIMS 4, 5, 13, 14,
`19, AND 20 .................................................................................................... 39
`D. GROUND 4: KOZIUK IN VIEW OF BRUWER RENDERS OBVIOUS CLAIMS 2, 6, 11,
`15, AND 17 .................................................................................................... 48
`E. GROUND 5: QT60161 IN VIEW OF THE KNOWLEDGE OF A PHOSITA RENDERS
`OBVIOUS CLAIMS 1, 3-5 7-10, 12-14, 16, AND 18-20 ...................................... 52
`V. CONCLUSION ............................................................................................. 68
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 69
`A. REAL PARTY-IN-INTEREST ............................................................................ 69
`B. RELATED MATTERS ....................................................................................... 69
`C. LEAD AND BACK-UP COUNSEL ..................................................................... 69
`
`
`
`i
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`

`

`I.
`
`INTRODUCTION
`Petitioners Apple Inc. and Microsoft Corporation (“Petitioners”) request an
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`Inter Partes Review (“IPR”) of claims 1-20 (the “Challenged Claims”) of U.S.
`
`Patent No. 8,749,251 (“the ’251 Patent”).
`
`II.
`
`SUMMARY OF THE ’251 PATENT
`A. Description of the alleged invention of the ’251 Patent
`The ’251 Patent generally relates to managing power consumption related to
`
`sensors that detect a user’s touch or close proximity based on changes in capacitance
`
`generated by a finger or other objects (e.g., a stylus). ’251 Patent (Ex. 1001), 1:37-
`
`41, 4:7-8, 4:24-34. The control circuit can implement an “auto-off” functionality or
`
`other power saving procedures “where an apparatus has inadvertently been left on
`
`or with the erroneous perception that a user is still present.” Id. at 4:55-58. Figure 1
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`illustrates an exemplary “sense electrode” connected to a programmable controller:
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`1
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`

`

`B.
`Prosecution history of the ’251 Patent
`The Application that resulted in the ’251 Patent was filed on May 26, 2011 as
`
`IPR2020-00998
`U.S. Patent No. 8,749,251
`
`U.S. App. No. 13/116,764 (“the ’764 Application”). The ’764 Application claims
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`priority to U.S. App. No. 12/179,769 filed on July 25, 2008 (now U.S. Pat. No.
`
`7,952,366), which claims priority to a provisional application filed on July 26, 2007.
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`’251 Patent (Ex. 1001).
`
`The Challenged Claims were not subject to any prior art-based rejections. A
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`Notice of Allowability issued on January 31, 2014 and noted that no prior art of
`
`record taught the limitations directed to initiating a function (e.g., a power save
`
`function) after a determined amount of time has elapsed since the sensing element
`
`last detected a change of capacitance indicative of a key touch on the touch screen.
`
`’251 Patent File History (Ex. 1002), 244-251.
`
`C.
`Level of skill of a person having ordinary skill in the art
`A person having ordinary skill in the art (PHOSITA) at the time of the ’251
`
`Patent would have been a person having at least 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
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`human-machine interfaces such as touch sensors and the firmware or system
`
`software that govern said interfaces, or the equivalent, with additional education
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`substituting for experience and vice versa. Givargis Decl. (Ex. 1003), ¶¶20-22.
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`2
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioners certify that the ’251 Patent is available for IPR and that the
`
`Petitioners are not barred or estopped from requesting IPR challenging the claims of
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`the ’251 Patent. Specifically, (1) Petitioners are not the owners of the ’251 Patent,
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`(2) Petitioners have not filed a civil action challenging the validity of any claim of
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`the ’251 Patent, and (3) this Petition is filed less than one year after Petitioners were
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`served with complaints alleging infringement of the ’251 Patent.
`
`B. Discretionary Considerations
`a. The petition presents non-cumulative grounds of prior art—35
`U.S.C. § 325(d)
`The Board applies a two-part framework to assess discretionary denials under
`
`35 U.S.C. § 325(d): “(1) whether the same or substantially the same art previously
`
`was presented to the Office or whether the same or substantially the same arguments
`
`previously were presented to the Office; and (2) if either condition of [the] first part
`
`of the framework is satisfied, whether the petitioner has demonstrated that the Office
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`erred in a manner material to the patentability of challenged claims.” Advanced
`
`Bionics, LLC v. MED-EL Elektromedizinische Gerate GmbH, IPR2019-01469,
`
`Paper 6 at 8-9 (PTAB Feb. 13, 2020) (applying the Becton factors) (precedential).
`
`As discussed in Sec. II.B. above, the Challenged Claims were not subject to
`
`any prior art-based rejections. Instead, the Examiner issued a first action Notice of
`
`
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`3
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`Allowance, indicating that no prior art of record taught initiating a function (e.g., a
`
`power save function) after a determined amount of time has elapsed since the sensing
`
`element last detected a change of capacitance indicative of a key touch on the touch
`
`screen. ’251 Patent File History (Ex. 1002), 244-251. While one reference (QT110)
`
`was cited on the face of the ’251 Patent, it is relied upon as a secondary reference
`
`for its programmable timer teachings and not for the broader concept identified in
`
`the Notice of Allowance. Further, it was not discussed by the Examiner.
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`Accordingly, the art and arguments herein are not the same as, or substantially
`
`similar to, those previously presented. The Board should decline to exercise its
`
`discretion under § 325(d).
`
`b. The Fintiv factors favor institution—35 U.S.C. § 314(a)
`Under recent precedent, the Board may consider parallel litigation, including
`
`an early trial date, as part of its discretionary power to institute under 35 U.S.C. §
`
`314(a). NHK Spring Co., Ltd., v. Intri-Plex Technologies, Inc., IPR2018-00752,
`
`Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential); see also Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 2-3, 6 (PTAB March 20, 2020) (enumerating six
`
`factors that “relate to whether efficiency, fairness, and the merits support the exercise
`
`of authority to deny institution in view of an earlier trial date in [a] parallel
`
`
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`4
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`proceeding”) (precedential)1. Although a parallel ITC investigation is underway, the
`
`facts here weigh against a discretionary denial.
`
` Whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted.
`Litigation in the Western District of Texas has been stayed pending finality of
`
`any determination in the ongoing ITC investigation. Ex1004. While it is unlikely the
`
`ITC investigation will be stayed, as explained below, the efficiency and integrity of
`
`the system are best served by instituting review.
`
`
`1 Petitioners note that Fintiv’s and NHK’s focus on the trial date is misplaced as a
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`basis for the Board’s exercise of its discretion under 314(a). Exalting a trial date as
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`the benchmark over the statutory filing window undermines Congressional intent to
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`allot petitioner’s a one-year window to file a petition from service of a complaint;
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`undermines the AIA’s and USPTO’s objectives of improving patent quality; ignores
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`the abolition of unjust infringement verdicts rendered on invalid patents; ignores the
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`practical realities of shifting litigation dockets; ignores the vast resources saved from
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`unnecessary post-trial activity; and permits district courts and patent owners to
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`manipulate the availability of IPRs.
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`5
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`U.S. Patent No. 8,749,251
`Proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision.
`The ITC panel is currently scheduled to issue an initial determination on June
`
`
`
`18, 2021 and a Final Determination on October 20, 2021. However, the stay in the
`
`parallel district court proceedings is not set to be lifted until the ITC determination
`
`becomes final. An ITC determination is appealable only after expiration of the
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`presidential review period—60 days after the Final Determination. 19 U.S.C. §
`
`1137(c); id. at (j)(4). Thus, any ITC determination becomes appealable no later than
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`December 20, 2021. Comparatively, the Board’s projected statutory deadline for its
`
`final written decision would fall at the end of November 2021, approximately a
`
`month before any ITC determination could be deemed appealable.
`
`Even if the Board’s Final Written Decision were to issue after an ITC
`
`determination is final, the ITC investigation would not “render [the IPR] proceeding
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`duplicative or amount to a waste of the Board’s resources” because “the ITC does
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`not have the authority to invalidate a patent in a way that is applicable to other
`
`forums” and the district court will still need to address patentability once stays are
`
`lifted. Nichia Corp. v. Lighting Science Group Corp., IPR2019-01259, Paper 21,
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`*27-28 (PTAB Jan. 15, 2020). In Nichia Corp., the Board declined to deny
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`institution even though the ITC proceeding might conclude before a final written
`
`decision, explaining that the stayed, ongoing district court proceedings would benefit
`
`
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`6
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`from a patentability determination from the PTAB when its stays are lifted. Id. These
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`same concerns are at issue here.
`
`This factor weighs in favor of institution.
`
`
`
`Investment in the parallel proceeding by the court and the parties.
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`The parallel district court proceedings were stayed only a month and half after
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`service of the complaint with absolutely no substantive efforts invested by the court.
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`Similarly, the ITC panel has yet to hold any Markman hearing (currently scheduled
`
`on September 14-15, 2020). Fact discovery has just opened, set to conclude on
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`October 23, 2020, and expert reports will not be exchanged for over six months.
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`Given the early stage of the ITC investigation, Petitioners have gained no tactical
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`advantage.
`
`This factor weighs in favor of institution.
`
`
`
`Overlap between issues raised in the petition and in the parallel
`proceeding.
`The ITC Investigation will not address the validity of Challenged Claims 10-
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`15. Thus, unless the Board considers the merits of claims 10-15, the district court
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`will have to independently, and without guidance, consider challenges to the validity
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`of these claims. Should the Board institute and reach a final written decision, on the
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`other hand, it would simplify, if not resolve entirely, the invalidity issues the district
`
`court must address. See, e.g., Renesas Elecs. Corp. v. Broadcom Corp., IPR2019-
`
`01040, Paper 9, *8 (PTAB Nov. 13, 2019) (noting that although the ITC proceeding
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`7
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`may resolve the issues between the parties at the ITC, even if the ITC finds the
`
`asserted claims invalid, the patent owner may continue to assert the claims at issue
`
`in the district court once the ITC action concludes); Comcast Cable Comm’ns, LLC
`
`v. Rovi Guides, Inc., IPR2019-00231, Paper 14, *11‒12 (PTAB May 20, 2019)
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`(instituting where at least one challenged claim not asserted in the parallel ITC
`
`investigation, but asserted in the parallel district court litigation).
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`Further, for claims that are at issue in both the ITC and IPR, the ITC will apply
`
`a more stringent standard than the PTAB. Linear Tech. Corp. v. Int’l Trade Comm’n,
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`566 F.3d 1049, 1066 (Fed. Cir. 2009) (invalidity in the ITC must be proven by clear
`
`and convincing evidence); 35 U.S.C. § 316(e) (IPR proceedings apply
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`preponderance of the evidence standard).
`
`Finally, Petitioners’ plan to rely predominately on system prior art (including
`
`Petitioners’ own systems and on Patent Owner’s commercial embodiments) in the
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`ITC—prior art that may not be presented in an IPR petition. Given the early stages
`
`of the ITC investigation, final decisions on invalidity grounds have not yet been
`
`made, in part, because final theories of infringement have not yet been advanced by
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`Patent Owner. But Petitioners’ do not anticipate relying on the IPR grounds as ITC
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`investigation invalidity defenses.
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`
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`8
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`Although these IPRs must be included in discovery responses in the ITC
`
`investigation that seek information relevant to invalidity, such a disclosure does not
`
`mean the ITC will be asked to rule on the issues presented herein.
`
`This factor weighs in favor of institution.
`
` Whether the petitioner and the defendant in the parallel proceeding
`are the same party.
`The parties are the same.
`
`
`
`Other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`As detailed in Sec. IV below, the strength of Petitioners’ unpatentability
`
`arguments weighs strongly in favor of institution.
`
`Moreover, the Board has repeatedly held that ITC investigations do “not
`
`render [an IPR] proceeding duplicative or amount to a waste of the Board’s
`
`resources.” Samsung Elecs. Co., Ltd. v. BitMicro, LLC, IPR2018-01410, Paper 14,
`
`at *18 (PTAB Jan. 23, 2019); Wirtgen Am., Inc. v. Caterpillar Paving Prods., Inc.,
`
`IPR2018-01202, Paper 10, at *7–10 (PTAB Jan. 8, 2019). In this regard, the clear
`
`dissimilarities between an ITC investigation and this proceeding countenance
`
`against denial. 3Shape A/S and 3Shape Inc., v. Align Technology, Inc., IPR2020-
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`00223, Paper 12 at *33-34 (PTAB May 26, 2020) (refusing, under Fintiv, to deny
`
`institution based on a co-pending ITC investigation set to conclude before a final
`
`written decision and noting that ITC does not have the power to cancel a patent
`
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`9
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`claim, applies a different burden of proof, and will not resolve all claims at issue
`
`before the Board).
`
`This factor strongly weighs in favor of institution.
`
`C.
`
`Identification of challenge under 37 C.F.R. § 42.104(b) and relief
`requested
`In view of the prior art and evidence presented, claims 1-20 of the ’251 Patent
`
`are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1). Further, based
`
`on the prior art references identified below, IPR of claims 1-20 should be granted.
`
`37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: U.S. Patent No. 6,058,485 to Koziuk, et al. (“Koziuk”)
`in view of the knowledge of a PHOSITA renders obvious claims 1,
`7, 10, and 16.
`Ground 2: Koziuk in view of U.S. Patent No. 5,283,559 to
`Kalendra, et al. (“Kalendra”) renders obvious claims 3, 12, and 18.
`Ground 3: Koziuk in view of Quantum Research Group QT110
`Data Sheet (“QT110”) renders obvious claims 4, 5, 13, 14, 19, and
`20.
`Ground 4: Koziuk in view of U.S. Patent Pub. No. 2005/0121980
`to Bruwer (“Bruwer”) renders obvious claims 2, 6, 11, 15, and 17.
`Ground 5: Quantum Research Group QT60161 Data Sheet
`(“QT60161”) in view of the knowledge of a PHOSITA renders
`obvious claims 1, 3-5 7-10, 12-14, 16, and 18-20
`
`Exhibits
`
`Ex. 1013,
`
`Ex. 1013,
`Ex. 1014
`
`Ex. 1013,
`Ex. 1015
`
`Ex. 1013,
`Ex. 1016
`
`Ex. 1017
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`
`
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`10
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`Section IV identifies where each element of the Challenged Claims is found in the
`
`prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting evidence
`
`relied upon to support the challenges are provided above and the relevance of the
`
`evidence to the challenges raised are provided in Section IV. 37 C.F.R.
`
`§ 42.104(b)(5). Ex. 1001–Ex. 1030 are also attached.
`
`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`In this proceeding, claims are interpreted under the same standard applied by
`
`Article III courts (i.e., the Phillips standard). See 37 C.F.R. § 42.100(b); see also 83
`
`Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`
`Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
`
`meaning, which is the meaning understood by a person of ordinary skill in the art in
`
`view of the patent and file history. Phillips, 415 F.3d 1303, 1312-13. Dictionaries or
`
`other extrinsic sources may assist in determining the plain and ordinary meaning but
`
`cannot override a meaning that is unambiguous from the intrinsic evidence. Id.
`
`Other than the below discussion of “touch screen” and “key touch on a touch
`
`screen,” Petitioners propose no claim language requires express construction to
`
`resolve the grounds herein.
`
` “Touch screen”
`Each Challenged Claim recites a “touch screen.” The ’251 Patent’s
`
`specification, however, does not teach or suggest “touch screens,” and does not use
`
`
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`the phrase “touch screen” outside the claims and abstract.2 While there is no
`
`guidance in the intrinsic record, “touch screen” has a well-accepted meaning in the
`
`art. Givargis Decl. (Ex. 1003), ¶¶26-28. Namely, touch screens are transparent
`
`touch-sensitive panels that overlay a display (e.g., an LCD display). Id. This
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`meaning is confirmed by a wealth of extrinsic evidence, as discussed below.
`
`For example, Microsoft’s Computer Dictionary defines a touch screen as a
`
`“computer screen designed or modified to recognize the location of a touch on its
`
`surface” and analogizing this phrase to a “touch-sensitive display.” Microsoft
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`Computer Dictionary 4th Ed. (Ex. 1005), 3-4. Similarly, Barron’s Dictionary of
`
`Computer and Internet Terms defines a “touchscreen” as “a computer screen that is
`
`sensitive to touch, so that the user can point to things on it by touching the screen
`
`itself, without using a mouse.” Barron’s Computer Dictionary (Ex. 1006), 4. A more
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`detailed discussion is provided in a 2009 Planet Analog article, titled “Touchscreens
`
`
`2 This “touch screen” language was introduced in the May 26, 2011 continuation
`
`application, which ultimately issued as the ’251 Patent. Petitioners have concurrently
`
`filed a separate petition for IPR that establishes the Challenged Claims are not
`
`entitled to claim priority to the pre-2011 provisional or parent utility application.
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`IPR2020-01000. Paper 4, submitted concurrently, justifies Petitioners’ multiple
`
`concurrent petitions.
`
`
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`12
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`101: Understanding touchscreen technology and design.” Touchscreens 101 (Ex.
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`1007). The article describes “six key elements” to every touchscreen, including a
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`“touchscreen ‘sensor’ [that] is a clear glass panel with a touch-responsive surface”
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`and an LCD display mounted below the sensor panel. Id. at 2.
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`Patent Owner’s own patent portfolio similarly confirms this well-accepted
`
`meaning of “touch screen.” For example, U.S. Patent No. 8,599,150 (“the ’150
`
`Patent”), which, like the ’251 Patent lists Harald Philipp as an inventor, teaches that
`
`“[a] touchscreen includes touchscreen electrode elements distributed across an
`
`active area of a substrate, and the touchscreen overlays a display.” ’150 Patent (Ex.
`
`1008), Abstract. The ’150 Patent explains the benefits realized by deploying a touch-
`
`sensitive device as a touchscreen:
`
`[T]he display behind the touchscreen can be easily adapted to provide
`instruction to the user and to receive various types of input, thereby
`providing an intuitive interface[.]
`Id. at 2:27-32. U.S. Patent No. 9,632,628 (“the ’628 Patent”), which also lists Harald
`
`Philipp as an inventor, similarly notes that “[t]ouchscreen displays are able to detect
`
`a touch such as by a finger or stylus” and that the “[u]se of a touchscreen as part of
`
`a display enables a user to interact with an electronic application by touching the
`
`touchscreen.” ’628 Patent (Ex. 1009), 1:6-9. Finally, U.S. Patent No. 9,823,784
`
`(“the ’784 Patent”), which also lists Harald Philipp as an inventor, unambiguously
`
`
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`explains, “[i]t will be understood that the display panel in combination with the touch
`
`sensor make a touch screen.” ’784 Patent (Ex. 1010), 10:35-37.
`
`
`
`Based on the well-accepted meaning in the art, Petitioners propose a “touch
`
`screen” is a transparent touch-sensitive panel that overlays a display, such as an LCD
`
`display.
`
` “Key touch on a/the touch screen”
`Because the intrinsic record provides no teaching or suggestion of a “touch
`
`screen,” it is similarly silent as to the meaning of “key touch on a/the touch screen.”
`
`There are two possible meanings, however, and Petitioners advance prior art below
`
`that captures each of these possible meanings. A first possibility proposes a “key
`
`touch on a/the touch screen” should be interpreted as any user-initiated touch on a
`
`touch screen. This construction includes touch screens that lack distinct, multiple
`
`keys. Grounds 1-4 cite Koziuk for this concept. The alternative construction requires
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`a user-initiated touch in a specific region (a defined “key”) of a touchscreen that is
`
`subdivided into multiple such regions/keys. Grounds 5-6 cite QT60161 for this
`
`concept.3
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`
`
`
`3 If the Board disagrees that the proposed narrow alternative construction should
`
`apply, QT60161 also satisfies the claim language under a broader construction based
`
`on the same disclosures cited herein.
`
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`IPR2020-00998
`U.S. Patent No. 8,749,251
`Primary construction: “Key touch on a/the touch screen” satisfied by any touch
`
`
`The ’251 Patent does not describe or differentiate between a “key touch” and
`
`any other touch input and does not use the phrase “key touch on a/the touch screen”
`
`outside the claims and abstract. The ’251 Patent does, however, disclose that its
`
`power saving features “may be used in apparatus or devices with one touch key . . .
`
`[or] more than one key.” ’251 Patent (Ex. 1001), 17:13-17. Given the allowance for
`
`any number of “keys,” including one, Petitioners have assumed for purposes of this
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`primary construction that a “key touch on a/the touch screen” is satisfied by any
`
`user-initiated “touch” on a touch screen.
`
`Based on Patent Owner’s own patents, a PHOSITA would have understood
`
`that the entire touch screen can be considered a “key.” Givargis Decl. (Ex. 1003),
`
`¶¶29-30 (discussing U.S. Patent No. 9,024,790 (“the ’790 Patent”) (Ex. 1011) at
`
`4:51-52, which notes “[a] ‘key’ can also be a dimensional sensing surface such as
`
`an XY touch screen or a ‘trackpad’”). Indeed, in a prior ITC investigation involving
`
`the ’790 Patent, Patent Owner agreed that “key” can consist of an entire
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`“dimensional sensing surface such as an XY touch screen or ‘trackpad.’” ITC
`
`Markman Order (Ex. 1012), 21. Accordingly, Petitioners propose a primary
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`construction that a “key touch on the touch screen” is satisfied by any user-initiated
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`“touch” on a touch screen.
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`U.S. Patent No. 8,749,251
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`Secondary construction: “Key touch on a/the touch screen” construed to require
`a specific region on the touch screen
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`A PHOSITA would have understood that a “key touch on a/the touch screen”
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`could also describe a specific region (that defines a “key”) on the touchscreen and
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`available to select by touching that region. Givargis Decl. (Ex. 1003), ¶31. Indeed,
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`the ’628 Patent describes examples of these specific keys for selection on a
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`touchscreen. ’628 Patent (Ex. 1009), 8:62-9:13 (describing multi-key touch screen
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`interfaces, including keyboards and numeric keypads); see also Givargis Decl. (Ex.
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`1003), ¶31 (discussing the same and concluding that users selecting specific keys on
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`a touchscreen was well-understood in the art). Accordingly, Petitioners propose a
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`secondary narrower construction that a “key touch on the touch screen” requires
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`touching a specific region on a touch screen.
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`IV. CLAIMS 1-20 OF THE ’251 PATENT ARE UNPATENTABLE
`A. Ground 1: Koziuk in view of the knowledge of a PHOSITA renders
`obvious claims 1, 7, 10, and 16
`Overview of Koziuk
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`Koziuk issued on May 2, 2000 and is prior art to the ’251 Patent under at least
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`35 U.S.C. § 102(b) (pre-AIA). Koziuk was not cited or considered during prosecution
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`of the ’251 Patent.
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`U.S. Patent No. 8,749,251
`Koziuk is directed to managing the power consumption of a “digitizing panel”
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`that users can interact with either using a finger or a hand-held stylus/pen. Koziuk
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`(Ex. 1013), Abstract, 1:6-47. Koziuk conserves power by transitioning to a “sleep
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`state” (or “power management state”) when an input has not been detected within a
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`defined period of time. Id. at 5:20-35, 7:26-8:3 (describing a touch power
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`management state and a pen power management state). Because the pen described
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`in Koziuk has its own power supply, the digitizing panel uses less power to detect a
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`pen touch than a finger touch and a pen is quicker and easier to detect than a finger.
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`Id. at 1:41-51, 2:15-42, 8:52-56. Given the higher power consumption required to
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`detect a finger touch, Koziuk’s power management state seeks to minimize the
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`amount of time during which a finger touch can be detected. Id. at 9:5-13. Current
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`consumed in “search” modes and in power management modes is shown below:
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`Id. at Fig. 7 (current consumed in “search” states), Fig. 8 (current consumed in
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`“power management” states), 8:59-9:17 (noting the time during which the much
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`higher ITOUCH current is consumed is significantly reduced in the power management
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`states). Koziuk further explains that power savings are realized in “pen power
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`management mode [by] plac[ing] all components of the controller 16 that are not
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`required to detect pen proximity in a low power or sleep mode.” Id. a 7:56-59.
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`Timers are used to determine whether and when to transition the device from
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`one state to another. For example, Koziuk teaches a timer that “tracks how long the
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`controller 16 remains switching between the pen search state 71 and the touch search
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`state 54,” i.e., how long the system has searched for a touch without detecting a
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`touch. Id. at 7:42-44. When this timer expires, “controller 16 transitions into the
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`[touch] power management state 72.” Id. at 7:44-47. “Upon entering into the touch
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`power management state 72, the controller 16 is placed into a touch power
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`management mode and a timer is set. If the timer expires prior to a touch detection,
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`then the controller 16 transitions into the pen power management state 74.” Id. at
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`7:48-52. Finally, when in “pen power management state 74, the controller 16 sets a
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`timer,” and “[i]f the timer expires prior to a pen proximity detection, then the
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`controller 16 transitions [back] into the touch power management state 72.” Id. at
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`7:65-8:1. In other words, a first timer dictates how long after the last touch (finger
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`or pen) the system will continue to search before transitioning into power
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`management modes. Once in power management modes, the system uses additional
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`timers to switch between the two types of power save modes. Koziuk also teaches
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`that these timers “are programmable.” Id. at 8:19-23.
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`Because Koziuk, like the ’251 Patent, discloses controllers for touch-sensitive
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`inputs that detect a change in capacitance, resulting from the proximity of a user’s
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`finger or other object, Koziuk is in the same field of endeavor as the ’251 Patent.
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`Compare Id. at 4:28-29 with ’251 Patent (Ex. 1001), 4:29-30. Koziuk is further
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`directed to solving the same problem as the ‘251 Patent—saving power by
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`implementing a reduced power mode after an amount of time has elapsed since the
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`last touch. Compare Koziuk (Ex. 1013), 2:11-17) with ’251 Patent (Ex. 1001), 2:44-
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`61. Koziuk is therefore analogous art to the ’251 Patent. Givargis Decl. (Ex. 1003),
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`¶¶23-25; 38-44.
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`i. Claim 1
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`1[P] 1. An apparatus comprising:
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`To the extent the preamble is limiting, Koziuk discloses an apparatus
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`comprising a digitizing panel and a controller. Id. at 2:11-25.
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` [1(a)] a sensing element of a touch screen; and
`The ’251 Patent does not define the term “sensing element,” but it does state
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`that a “sensor element may be referred to as a sense electrode” and explains that
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`“[t]he capacitance of the sense electrode is affected by the presence of nearby
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`objects, such as a pointing finger.” ’251 Patent (Ex. 1001), 4:28-30; see also id. at
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`16:58-59 (describing exemplary “electrode materials,” including “Indium Tin
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`Oxide”). As set forth above in Section III.C.1, the claimed “touch screen” is satisfied
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`by a transparent touch-sensitive panel that overlays a display, such as an LCD
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`display.
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`Koziuk discloses a “sensing element of a touch screen” under this
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`interpretation. Namely, Koziuk describes an “active sensor material” that uses the
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`same “indium-tin-oxide” material expressly disclosed in the ’251 Patent above an
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`LCD display. Koziuk (Ex. 1013), 3:59-64. With this active sensor material, Koziuk
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`detects an approaching object, such as a finger or a compatible stylus, which “acts
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`as a capacitive load that is coupled to [a] resistive layer.” Id. at 4:28-30. This change
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`of capacitance that results from an approaching finger or stylus produces a “current
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`flow through each of the corners of the resistive layer 28, and through the corner
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`wires 20a-20d” such that the digitizing panel and controller of Koziuk is able to
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`determine the coordinate position of the finger or stylus. Id. at 4:30-34. Figure 1
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`illustrates a touch screen registering a touch from a stylus and a controller
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`interpreting this touch event (“sensing element” boxed in red):
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`Id. at Fig. 1 (annotated), 3:26-64. Figure 3 provides a cross section of the touch
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`screen 14 comprising glass layer 24, ITO sensor layer 28, shield/capacitive bias layer
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`31, and LCD screen 26.:
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`Id. at Fig. 3; 3:65-4:11.
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`[1(b)] one or more computer-readable non-transitory storage media coupled to the
`sensing element and embodying logic that is operable when executed to:
`Fig. 1 of Koziuk illustrates memory 19, e.g., computer-readable non-transitory
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`storage media (boxed in blue) coupled to Koziuk’s sensing element (boxed in red)
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`thro