Trials@uspto.gov
`571-272-7822
`
`
`Paper 8
`Entered: December 15, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. & MICROSOFT CORPORATION,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00998
`Patent 8,749,251 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 8
`Entered: December 15, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. & MICROSOFT CORPORATION,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00998
`Patent 8,749,251 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00998
`US 8,749,251 B2
`
`A.
`
`INTRODUCTION
`Background and Summary
`Apple Inc. and Microsoft Corporation (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–20 of U.S. Patent No. 8,749,251
`B2 (Ex. 1001, “the ’251 patent”). Paper 1 (“Petition,” “Pet.”). Neodron Ltd.
`(“Patent Owner”) did not file a Patent Owner Preliminary Response.
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“the information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a) (2018). A decision to
`institute under 35 U.S.C. § 314 may not institute on fewer than all claims
`challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018).
`For the reasons set forth below, upon considering the Petition and the
`evidence of record, we determine that the information presented in the
`Petition establishes a reasonable likelihood that Petitioner will prevail with
`respect to at least one of the challenged claims. Accordingly, we institute
`inter partes review on all of the challenged claims based on all of the
`grounds identified in the Petition.
`Real Parties in Interest
`B.
`Petitioner identifies Apple Inc. and Microsoft Corporation as the real
`parties in interest. Pet. 69.
`Patent Owner identifies Neodron Ltd. as the real party in interest.
`Paper 6, 1 (Patent Owner’s Mandatory Notices).
`
`2
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`IPR2020-00998
`US 8,749,251 B2
`Related Matters
`C.
`Petitioner and Patent Owner each identify a number of district court
`proceedings and an International Trade Commission proceeding in which
`Patent Owner asserts the ’251 patent. Pet. 69; Paper 6, 2.
`We take official notice of a second petition filed by Petitioner
`requesting inter partes review of claims 1–20 of the ’251 patent. See Apple
`Inc. v. Neodron Ltd., IPR2020-01000, Paper 1 (Petition). In a decision
`issued concurrently with this one, we institute inter partes review in that
`proceeding. Apple Inc. v. Neodron Ltd., IPR2020-01000, Paper 8
`(Institution Decision).
`The ’251 Patent
`D.
`The ’251 patent, which is entitled “Proximity Sensor,” issued from
`Application 13/116,764 (“the ’764 application”), which was filed on May
`26, 2011. Ex. 1001, codes (21), (22), (54). The ’764 patent is a continuation
`of application 12/179,769 and claims the benefit of the filing date of
`provisional application 60/952,053. Id. at 1:5–9, codes (60), (63).
`The ’251 patent states that “[c]apacitive position sensors have recently
`become increasingly common and accepted in human interfaces and for
`machine control.” Ex. 1001, 17–19. According to the ’251 patent, “in the
`fields of portable media players it is now quite common to find capacitive
`touch controls operable through glass or plastic panels. Some mobile
`telephones are also starting to implement these kinds of interfaces.” Id. at
`1:19–24.
`The ’251 patent further describes how capacitive touch sensors may
`be used:
`
`into
`incorporated
`touch controls
`Many capacitive
`consumer electronic devices for appliances provide audio or
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`visual feedback to a user indicating whether a finger or other
`pointing object is present or approaches such touch controls. A
`capacitive sensing microprocessor may typically be comprised in
`touch-controlled devices which are arranged to provide an “on”
`output signal when a finger is adjacent to a sensor and an “off”
`output signal when a finger is not adjacent to a sensor. The
`signals are sent to a device controller to implement a required
`function dependent on whether a user’s finger is in proximity
`with or touching an associated touch control.
`Id. at 1:25–36. According to the ’251 patent, a problem with those devices
`is that some “remain ‘on’ or ‘active’ despite the user having moved away
`from the device or a particular function no longer being required. This
`results in the device consuming a large amount of power, which is not
`efficient.” Id. at 1:37–41.
`The ’251 patent addresses that problem by using a control circuit to
`“determine whether an object or a user’s finger is no longer in proximity
`with the sensor.” Ex. 1001, 4:47–54. “[B]ased on a predetermined time
`duration, the control circuit can produce an output signal automatically to
`prevent the capacitance measurement circuit from continually measuring
`changes in capacitance due to, for example, the perceived presence of an
`object in proximity with the sensor.” Id. According to the ’251 patent, this
`allows the control circuit “to deactivate, turn-off, or power down the
`capacitance measurement circuit where an apparatus has inadvertently been
`left on or with the erroneous perception that a user is still present. This may,
`for example, be referred to as an ‘auto-off’ feature.” Id. at 4:55–59; see also
`id. at 10:41–13:57 (providing details of the auto-off feature).
`
`4
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`IPR2020-00998
`US 8,749,251 B2
`Figure 1 of the ’251 patent is reproduced below.
`
`
`Figure 1 “schematically shows sense electrode connections for an example
`chip for implementing an auto-off function.” Ex. 1001, 3:13–15.
`Illustrative Claims
`E.
`Of the challenged claims, claims 1, 10, and 16 are independent.
`Claim 1 is illustrative and reads as follows:
`1. An apparatus comprising:
`a sensing element of a touch screen; and
`one or more computer-readable non-transitory storage
`media coupled to the sensing element and embodying logic that
`is operable when executed to:
`determine an amount of time that has elapsed since
`the sensing element last detected a change of capacitance
`indicative of a key touch on the touch screen; and
`if the amount of time that has elapsed exceeds a
`predetermined time duration, then initiate a particular
`function of the apparatus.
`Ex. 1001, 17:44–54.
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`5
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`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–20 would have been unpatentable on
`the following grounds:
`Claim(s) Challenged
`1, 7, 10, 16
`3, 12, 18
`4, 5, 13, 14, 19, 20
`2, 6, 11, 15, 17
`1, 3–5, 7–10, 12–14,
`16, 18–20
`Petitioner also relies on a Declaration of Dr. Tony Givargis, filed as
`Exhibit 1003 (“Givargis Decl.”).
`
`Reference(s)/Basis
`Koziuk2
`Koziuk, Kalendra3
`Koziuk, QT1104
`Koziuk, Bruwer5
`QT601616
`
`35 U.S.C. §1
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because
`the ’251 patent issued from an application filed before March 16, 2013, we
`apply the pre-AIA versions of the statutory bases for unpatentability. See
`Ex. 1001, code (22) (application filed May 26, 2011).
`2 US 6,058,485, issued May 2, 2000 (Ex. 1013).
`3 US 5,283,559, issued Feb. 1, 1994 (Ex. 1014).
`4 Quantum Research Group “QT110 QTouch™ Sensor IC Datasheet”
`(Ex. 1015). Petitioner asserts QT110 was publicly available no later than
`February 12, 2002 and was last modified April 29, 2005. Pet. 39. Because
`QT110 would be considered prior art based on either date and Patent Owner
`does not—at the present time—challenge the prior art status of QT110, we
`treat it as prior art.
`5 US 2005/0121980 A1, published June 9, 2005 (Ex. 1016).
`6 Quantum Research Group “QT60161 16 Key QMatrix™ Keypanel Sensor
`IC Datasheet” (Ex. 1017). Petitioner asserts QT60161 was publicly
`available no later than February 12, 2002. Pet. 52–53.
`
`6
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`
`ANALYSIS
`
`A.
`
`Legal Standards
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`Supreme Court set out a framework for assessing obviousness under
`35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) if in evidence, “secondary considerations” of non-obviousness such as
`“commercial success, long-felt but unsolved needs, failure of others, etc.”
`Id. at 17–18. “While the sequence of these questions might be reordered in
`any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407
`(2007), the U.S. Court of Appeals for Federal Circuit has “repeatedly
`emphasized that an obviousness inquiry requires examination of all four
`Graham factors and that an obviousness determination can be made only
`after consideration of each factor,” Nike, Inc. v. Adidas AG, 812 F.3d 1326,
`1335 (Fed. Cir. 2016), overruled on other grounds by Aqua Prods., Inc. v.
`Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).
`We note that, with respect to the fourth Graham factor, no party has
`presented argument or evidence directed to secondary considerations of
`nonobviousness. See generally Pet. The analysis below addresses the first
`three Graham factors.
`Level of Ordinary Skill in the Art
`B.
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`7
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`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`skill in the art” is a hypothetical construct, from whose vantage point
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1993)).
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case.” Id.
`Petitioner argues that a person having ordinary skill in the art at the
`time of the invention
`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 human-machine
`interfaces such as touch sensors and the firmware or system
`software that govern said interfaces, or the equivalent, with
`additional education substituting for experience and vice versa.
`Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue.
`
`8
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`For purposes of this Decision, we adopt the level of ordinary skill in
`the art that Petitioner proffers, except that we delete the qualifiers “at least”
`to eliminate vagueness as to the amount of education and practical
`experience. The qualifiers expand the range indefinitely without an upper
`bound, and thus precludes a meaningful indication of the level of ordinary
`skill in the art.7
`Claim Construction
`C.
`We apply the same claim construction standard used in the federal
`courts, in other words, the claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b), which is
`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc). 37 C.F.R. § 42.100(b) (2020). Under the Phillips standard, the
`“words of a claim are generally given their ordinary and customary
`meaning,” which is “the meaning that the term would have to a person of
`ordinary skill in the art in question at the time of the invention, i.e., as of the
`effective filing date of the patent application.” Phillips, 415 F.3d at
`1312–13.
`Petitioner proposes constructions for two terms. See Pet. 11–16.
`Because no express construction is needed to resolve any dispute in
`this proceeding, we do not construe any of the claim limitations. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”
`
`
`7 If Patent Owner proposes a different level of ordinary skill in the art in its
`Response, the parties are encouraged to address whether there are any
`material differences between the two proposals and what impact, if any, the
`different level has on the obviousness analysis.
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`D. Discretionary Denial under 35 U.S.C. § 314(a)
`Institution of an inter partes review is discretionary, not mandatory.
`See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to
`institute an IPR proceeding.”).
`Pursuant to the Consolidated Trial Practice Guide,8 Petitioner filed a
`Petitioner’s Reasons and Ranking of Parallel Petitions. Paper 4. Petitioner
`argues that the ’251 patent added “new matter in 2011 that severed the
`priority chain back to its July 26, 2007 provisional or to its July 25, 2008
`utility application”. Id. at 2–3. According to Petitioner, the different
`petitions “rely on completely distinct prior art combinations asserted to
`address different effective filing dates for the Challenged Claims.” Id. at 3.
`Patent Owner did not submit a response to Petitioner’s Reasons and
`Rankings.
`In deciding whether to institute inter partes review, we consider the
`guidance in the Consolidated Trial Practice Guide, which sets forth the
`following:
`
`Parallel Petitions Challenging the Same Patent. Based on
`the Board’s experience, one petition should be sufficient to
`challenge the claims of a patent in most situations. Two or more
`petitions filed against the same patent at or about the same time
`
`8 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019) (“Consolidated Trial Practice Guide,” “CPTG”), 59–60, available at
`http://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`10
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`(e.g., before the first preliminary response by the patent owner)
`may place a substantial and unnecessary burden on the Board and
`the patent owner and could raise fairness, timing, and efficiency
`concerns. See 35 U.S.C. § 316(b).
`CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes
`that “more than one petition may be necessary, including for example, . . .
`when there is a dispute about priority date requiring arguments under
`multiple prior art references.” Id.
`The present circumstance is consistent with the exception referenced
`in the Consolidated Trial Practice Guide because there is a dispute about the
`effective filing date of the ’251 patent, which may require arguments to be
`made under multiple prior art references. See Paper 4, 2–3. Moreover,
`Patent Owner has not requested that we exercise our discretion to only
`consider, at most, one petition. Accordingly, we do not exercise our
`discretion to deny this Petition under § 314(a).
`Koziuk
`E.
`Petitioner argues that claims 1, 7, 10, and 16 would have been obvious
`over Koziuk. Pet. 16–33. Based on the current record and for the reasons
`that follow, we are persuaded that Petitioner has established a reasonable
`likelihood of prevailing with respect to claims 1, 7, 10, and 16.
`1. Summary of Koziuk
`Koziuk is entitled “Method and Apparatus for Managing Power
`Consumption of a Digitizing Panel” and is directed to “managing power
`consumption of a digitizing panel.” Ex. 1013, 1:6–8, code (54).
`According to Koziuk, “reducing power consumption in portable
`computers has gained a great deal of attention in the technical community as
`a result of a set of conflicting user requirements and technological
`constraints.” Ex. 1013, 1:60–63. “These power consumption issues are of
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`particular concern to digitizing panels since digitizing panels are a viable
`input alternative for the mouse and keyboard of portable computers.” Id. at
`2:4–7. Koziuk states that “[w]hat is needed therefore is a method and an
`apparatus for managing power consumption of a digitizing panel.” Id. at
`2:7–8.
`Koziuk Figure 6 is reproduced below.
`
`
`Koziuk Figure 6 “is a state diagram depicting a method for controlling a
`digitizing panel that utilizes power management features.” Ex. 1013, 3:6–8.
`Koziuk Figure 6 and the accompanying text describe how various timers are
`used to guide the controller to transition between different states. Id. at
`Fig. 6, 6:29–8:13.
`2. Analysis of Claims 1, 7, 10, and 16
`Claim 1 recites “[a]n apparatus comprising.” Ex. 1001, 17:44.
`Petitioner argues that to the extent the preamble is limiting, Koziuk teaches
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`“an apparatus comprising a digitizing panel and a controller.” Pet. 20 (citing
`Ex. 1013, 2:11–25).9
`Claim 1 further recites “a sensing element of a touch screen.”
`Ex. 1001, 17:45. Petitioner argues Koziuk teaches this limitation. See
`Pet. 20–22. Specifically Petitioner argues Koziuk describes an active sensor
`material that uses indium-tin-oxide. Id. (citing Ex. 1013, 3:59–64).
`According to Petitioner, “Koziuk detects an approaching object, such as a
`finger or a compatible stylus, which ‘acts as a capacitive load that is coupled
`to [a] resistive layer.’” Id. at 20–21 (quoting Ex. 1013, 4:28–30).10
`Petitioner argues that
`[t]his change of capacitance that results from an approaching
`finger or stylus produces a “current flow through each of the
`corners of the resistive layer 28, and through the corner wires
`20a-20d” such that the digitizing panel and controller of Koziuk
`is able to determine the coordinate position of the finger or stylus.
`Id. at 21 (quoting Ex. 1013, 4:30–34).
`Claim 1 further recites “one or more computer-readable non-transitory
`storage media coupled to the sensing element and embodying logic that is
`operable when executed to.” Ex. 1001, 17:46–48. Petitioner argues that
`Koziuk teaches this limitation. See Pet. 22–24. Specifically, Petitioner
`argues Koziuk teaches computer-readable non-transitory storage media
`coupled to Koziuk’s sensing element through central processing unit 18. Id.
`
`
`9 On the current record, there is no dispute that Koziuk teaches an
`apparatus. Accordingly, for purposes of institution, we need not decide
`whether the preamble is limiting. See Nidec, 868 F.3d at 1017 (noting that
`“we need only construe terms ‘that are in controversy’” (quoting Vivid, 200
`F.3d at 803)).
`10 The Petition emphasizes the names of prior art references. The emphasis
`is omitted throughout this Decision.
`
`13
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`at 22–23 (citing Ex. 1013, Fig. 1, 3:37–40). Petitioner further argues that a
`person having ordinary skill in the art would have realized that the “claimed
`functions attributed to the claimed ‘computer-readable non-transitory storage
`media’ . . . are governed by software stored on computer-readable non-
`transitory storage media, e.g. memory 19, and that controller 16 executes
`logic in accordance with this software.” Id. at 23 (citing Ex. 1003 ¶¶ 45–
`48); see also id. at 23–24 (“Koziuk expressly teaches that its operations,
`including the durations of its timers, ‘are programmable’ and can be
`‘adjusted by a user, the computer 10, or other components of controller 16.’”
`(quoting Ex. 1013, 8:19–23)). Petitioner also argues that a person having
`ordinary skill in the art “would have recognized that such software would
`have been stored within the expressly disclosed memory 19.” Id. at 23
`(citing Ex. 1003 ¶¶ 45–48).
`Claim 1 further recites that the logic is executed to “determine an
`amount of time that has elapsed since the sensing element last detected a
`change of capacitance indicative of a key touch on the touch screen.”
`Ex. 1001, 17:49–51. Petitioner argues Koziuk teaches that limitation. See
`Pet. 24–29.
`Specifically, Petitioner directs our attention to timers that are set when
`a pen or finger touch are no longer detected and which “effectively define
`the amount of time that must expire after a touch (finger or pen) is no longer
`detected before the system transitions back into the search modes.” Pet. 26–
`29 (citing Ex. 1013 Fig. 6, 6:36–67, 7:12–25; Ex. 1003 ¶ 49–53). Petitioner
`refers to those as the No Touch Timers. Id. at 29.
`Petitioner also directs our attention to “a timer that ‘tracks how long
`the controller 16 remains switching between the pen search state 71 and the
`touch search state 54,’ i.e., how long the system has searched for a touch
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`without detecting a touch.” Pet. 28–29 (quoting Ex. 1001, 7:42-44).
`According to Petitioner, “[w]hen this timer expires, ‘controller 16 transitions
`into the [touch] power management state 72.’” Id. at 29 (quoting 7:44–47).
`Petitioner refers to this timer as the Search Timer.
`According to Petitioner,
`Through the No Touch Timer and Search Timer
`(specifically, the combination of the two time durations), Koziuk
`teaches “an amount of time that has elapsed since the sensing
`element last detected a change of capacitance indicative of a key
`touch on the touch screen” before its system transitions into the
`power management modes.
`Pet. 29.
`Claim 1 further recites logic operable such that “if the amount of time
`that has elapsed exceeds a predetermined time duration, then initiate a
`particular function of the apparatus.” Ex. 1001, 17:52–54. Petitioner argues
`that Koziuk teaches this limitation. See Pet. 29–32. According to Petitioner,
`Koziuk’s No Touch Timers and Search Timer dictates how long after the
`last touch (finger or pen) the system will continue to search before
`transitioning into a touch power management state.” Id. at 29; see also id. at
`29–30 (discussing how “[t]he time duration (combination of the No Touch
`Timer and Search Timer) dictates how long after a last touch (finger or pen)
`the system will wait before transitioning into these power management
`modes” (citing Ex. 1013, 7:48–52, 7:65–8:1)).
`Petitioner also argues that “when the system of Koziuk determines
`that this set amount of time has been exceeded with no ‘touches’ (equal to
`the No Touch Timer and Search Timer expiring), it initiates the particular
`function of transitioning into power management modes.” Pet. 30.
`Petitioner further argues that Koziuk’s power management mode saves
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`power by “placing the coordinate generator 36, biasing circuit 37, channel
`pre-processors 34a-34d in a low power or sleep mode.” Id. (citing Ex. 1013,
`7:54–64). According to Petitioner, a person having ordinary skill in the art
`“would have understood that all the disclosed timers would have been
`‘predetermined’ in the sense that their respective time durations are specified
`through programming or some other configuration.” Id. at 31 (citing Ex.
`1003 ¶¶ 54–55).
`After reviewing Petitioner’s arguments and information, including the
`Givargis Declaration (Ex. 1003), which Patent Owner does not address at
`this stage, we are persuaded that Petitioner sufficiently demonstrates, for
`purposes of this Decision, that Koziuk, in light of the knowledge of a person
`having ordinary skill in the art, teaches each claim limitation recited in
`claim 1. Accordingly, Petitioner has demonstrated, on this record, a
`reasonable likelihood of prevailing on its assertion that claim 1—along with
`claims 7, 10 and 16 which rely on substantially the same evidence and
`arguments (see Pet. 31–33)—is unpatentable over Koziuk
`F. Other Grounds
`Because Petitioner has demonstrated a reasonable likelihood of
`success in proving that at least one claim of the ’251 patent is unpatentable,
`we institute on all grounds and all claims raised in the Petition. See PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating
`that a decision whether to institute an inter partes review “requires a simple
`yes-or-no institution choice respecting a petition, embracing all challenges
`included in the petition”); CPTG, 5 (“In instituting a trial, the Board will
`either (1) institute as to all claims challenged in the petition and on all
`grounds in the petition, or (2) institute on no claims and deny institution.
`The Board will not institute on fewer than all claims or all challenges in a
`
`16
`
`
`
`IPR2020-00998
`US 8,749,251 B2
`petition.” (citations omitted)). Therefore, at this stage of the proceeding, it is
`not necessary for us to provide an assessment of every challenge raised by
`Petitioner, especially as Patent Owner has not presented any responsive
`argument.
`Nevertheless, we note that Petitioner provides detailed explanations
`supported by the testimony of Dr. Givargis, and specific citations to the
`relevant references indicating where in the reference Petitioner argues the
`limitations of claims 1–20 are taught, and why a person of ordinary skill in
`the art would have combined or modified the teachings of the relevant
`references. See Pet. 33–68. Accordingly, at this stage of the proceeding, we
`are persuaded the information presented in the Petition establishes there is a
`reasonable likelihood that Petitioner would prevail with respect to claims 1–
`20 based on the other grounds set forth in the Petition: (1) Koziuk and
`Kalendra, (2) Koziuk and QT110, (3) Koziuk and Bruwer, and (4) and
`QT60161 in view of the knowledge of a person having ordinary skill in the
`art.
`
`CONCLUSION
`Following 35 U.S.C. § 314, we have determined whether the totality
`of the information presented at this stage shows there is a reasonable
`likelihood that Petitioner would prevail with respect to at least one of the
`claims challenged in the Petition. Because Petitioner has demonstrated a
`reasonable likelihood of success in proving that at least one claim of the
`’251 patent is unpatentable, we institute on all grounds and all claims raised
`in the Petition.
`Our factual findings, conclusions of law, and determinations at this
`stage of the proceeding are preliminary, and based on the evidentiary record
`developed thus far. This is not a final decision as to the patentability of
`
`17
`
`
`
`IPR2020-00998
`US 8,749,251 B2
`claims for which inter partes review is instituted. Our final decision will be
`based on the record as fully developed during trial.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, an inter partes review of all challenged claims of the
`’251 patent is instituted with respect to all grounds set forth in the Petition;
`and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’251 patent is hereby instituted commencing on the
`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
`
`
`
`
`
`
`
`
`
`
`18
`
`
`
`IPR2020-00998
`US 8,749,251 B2
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`
`
`
`
`PATENT OWNER:
`
`Kent Shum
`Neil. A. Rubin
`Reza Mirzaie
`C. Jay Chung
`Philip X. Wang
`RUSS AUGUST & KABAT
`kshum @taklaw.com
`nrubin@raklaw.com
`rmitzaie@raklaw.com
`jchung@raklaw.com
`pwang@raklaw.com
`rak_neodron@raklaw.com
`
`19
`
`
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