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.
`
`IPR2020-01000
`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.
`
`IPR2020-01000
`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
`
`
`
`
`
`
`
`
`
`IPR2020-01000
`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. 44.
`Patent Owner identifies Neodron Ltd. as the real party in interest.
`Paper 6, 1 (Patent Owner’s Mandatory Notices).
`
`2
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`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. 44; 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., IPR2020-00998, Paper 1 (Petition). In a decision
`issued concurrently with this one, we institute inter partes review in that
`proceeding. Apple Inc. v. Neodron Ltd., IPR2020-00998, 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 application is a
`continuation of application 12/179,769 (“the parent ’769 application”) and
`claims the benefit of the filing date of provisional application 60/952,053
`(“the provisional ’053 application”). 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:
`
`3
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`into
`incorporated
`touch controls
`Many capacitive
`consumer electronic devices for appliances provide audio or
`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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`IPR2020-01000
`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. Each
`of challenged claims 2–9, 11–15, and 17–20 depends, directly or indirectly,
`from claim 1, 10, or 16.
`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 Ground
`F.
`Petitioner asserts that claims 1–20 would have been unpatentable on
`the following ground:
`Reference(s)/Basis
`35 U.S.C. §1
`Claim(s) Challenged
`Philipp,2 QT601613
`103(a)
`1–20
`Petitioner also relies on a Declaration of Dr. Tony Givargis, filed as
`Exhibit 1003 (“Givargis Decl.”).
`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
`
`
`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 2007/076897 A1, published Apr. 5, 2007 (Ex. 1023).
`3 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. 26.
`
`6
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`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.
`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
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`(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. 17 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this
`issue.
`
`For purposes of this Decision, we adopt the level of ordinary skill in
`the art that Petitioner proffers, except that we delete the 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.4
`
`
`4 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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`8
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`IPR2020-01000
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`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. 24; see also
`id. at 11–14 (arguments regarding proposed constructions).
`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’”
`(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.”).
`
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`Pursuant to the Consolidated Trial Practice Guide,5 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
`(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 potential dispute
`
`
`5 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.
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`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).
`Philipp and QT60161
`E.
`Petitioner argues that claims 1–20 would have been obvious over
`Philipp and QT60161. Pet. 25–43. 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 1–20.
`1. Philipp
`a) Summary of Philipp
`Philipp is the published version of the parent ’769 application. See
`Ex. 1024, code (21). Because the ’251 patent is a continuation of the parent
`’769 patent, they share the same written description. See Ex. 1001, code
`(63). Accordingly, Philipp has the same disclosure as discussed in Section
`D of the Introduction, supra.
`b) Whether Philipp is Prior Art
`Petitioner argues that the ’251 patent is not entitled to rely on the
`filing date of the parent ’769 application or the provisional ’053 application.
`See Pet. 4–17. Specifically, Petitioner argues that when filing the ’764
`application, the applicant added new matter—the terms “touch screen” and
`“key touch on a/the touch screen”—into the abstract and the claims. Id.
`at 10. Accordingly, Petitioner argues that the claims of the ’251 patent have
`an effective filing date of May 26, 2011, the date the ’294 application was
`filed. Id. at 9.
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`11
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`c) Principles of Law Regarding Relying on Earlier-Filed Patent
`Applications
`“It is elementary patent law that a patent application is entitled to the
`benefit of the filing date of an earlier filed application only if the disclosure
`of the earlier application provides support for the claims of the later
`application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297
`(Fed. Cir. 1995) (emphasis added). Section 112 requires the specification to
`include “a written description of the invention.” Ariad Pharms., Inc. v. Eli
`Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc) (quoting 35
`U.S.C. § 112).
`“[T]he hallmark of written description is disclosure,” and “the test [for
`satisfaction of the written description requirement] requires an objective
`inquiry into the four corners of the specification from the perspective of a
`person of ordinary skill in the art.” Ariad, 598 F.3d at 1351. The written
`description “must ‘clearly allow persons of ordinary skill in the art to
`recognize that [the inventor] invented what is claimed,’” and “reasonably”
`convey to those skilled in the art “that the inventor had possession of the
`claimed subject matter as of the filing date.” Id. (alteration in original,
`internal citations omitted). Stated another way, “one skilled in the art,
`reading the original disclosure, must immediately discern the limitation at
`issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320,
`1323 (Fed. Cir. 2000).
`In evaluating the effective filing date of the ’251 patent, we first
`address the parties’ respective burdens. In an inter partes review, Petitioner
`bears the ultimate burden of persuasion regarding unpatentability, which
`never shifts to patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Dynamic Drinkware also
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`establishes that Petitioner has the initial burden of production to show a
`reference is prior art. Dynamic Drinkware, 800 F.3d at 1379. However, the
`burden of production then shifts to Patent Owner to refute Petitioner’s
`argument by either showing the prior art does not actually render the claims
`unpatentable or does not qualify as prior art. Id. at 1380. The burden of
`production then shifts back to Petitioner to respond to Patent Owner’s
`argument. Id. The Board then evaluates all of the evidence and determines
`whether Petitioner has satisfied its burden of persuasion regarding
`unpatentability. Id. We apply the same framework when considering
`whether the parties have met their respective burdens at this stage of the
`proceeding.
`d) Application of Dynamic Drinkware
`Based on the current status of the proceedings, we are sufficiently
`persuaded that Petitioner satisfied its initial production burden under
`Dynamic Drinkware. Specifically, Petitioner identifies two claim terms—
`“touch screen” and “key touch on a/the touch screen”—that are recited in
`each of the independent claims and were added to the ’274 application. Pet.
`10 (citing Ex. 1002, 38–41); see also id. at 11–17. Additionally, as
`discussed below, Petitioner has also sufficiently shown that the combination
`of Philipp and QT60161 teaches each of the limitations of the claims of the
`’251 patent. See Dynamic Drinkware, 800 F.2d at 1379 (finding Petitioner
`satisfied its initial burden of production by arguing that the prior art rendered
`the claims unpatentable).
`Because Petitioner satisfied its initial burden of production, the burden
`of production now shifts to Patent Owner to argue or produce evidence that
`either (1) the prior art does not render the claims unpatentable or (2) that
`Philipp is not prior art because the asserted claims of the ’251 patent are
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`entitled to the benefit of a filing date (constructive or otherwise) prior to
`Philipp. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent
`Owner—as is its right—chose not to file a Patent Owner’s Preliminary
`Response, for purposes of institution only, Patent Owner did not meet its
`burden of production to show that the ’251 patent is entitled to a filing date
`earlier than Philipp.
`Accordingly, based on the current record, and for purposes of
`institution only, we treat Philipp as prior art to the ’251 patent.
`2. Summary of QT60161
`QT60161 is a Quantum Research Group datasheet entitled “16 Key
`QMatrix™ Keypanel Sensor IC.” Ex. 1017, 2.6
`“The QT60161 digital charge-transfer (“QT”) QMatrix™ IC is
`designed to detect human touch on up (sic) 16 keys when used in
`conjunction with a scanned, passive X-Y Matrix.” Ex. 1017, 2. “The part
`can scan matrix touch keys over LCD panels or other displays when used
`with clear ITO electrodes arranged in a matrix.” Id.
`QT60161 Figures 1-1 and 1-2 are reproduced below.
`
`
`6 All citations are to the pagination added by Petitioner, not the native
`pagination. See 37 C.F.R. § 42.64(d)(2)(i).
`
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`“Figure 1-1 shows how charge is transferred across an electrode set to
`permeate the overlying panel.” Ex. 1017, 5. Figure 1-2 shows the change in
`the field flows as “[t]he charge flows are absorbed by the touch of a human
`finger.” Id.7 The touch results “in a decrease in coupling from X to Y.” Id.
`3. Analysis of Claim 1
`Claim 1 recites “[a]n apparatus.” Ex. 1001, 17:44. Petitioner argues
`that to the extent the preamble is limiting, Philipp teaches “an apparatus
`comprising a capacitive touch sensor and a control circuit.” Pet. 33 (citing
`Ex. 1024, code 57, ¶¶ 6, 48, Figs. 1, 3, 17, 18).8
`Claim 1 further recites “a sensing element of a touch screen.”
`Ex. 1001, 17:45. Petitioner argues that QT60161 teaches this limitation.
`See Pet. 34. Specifically, Petitioner argues that QT60161 teaches “an array
`of X-Y matrix electrodes used to sense changes in capacitance on its
`capacitive touch screen.” Id. (citing Ex. 1017, 2, 5). According to
`Petitioner, “[t]his X-Y matrix format forms touch keys of interdigitated
`electrode material at the intersection of the X and Y lines—creating up to
`sixteen touch keys projected through a dielectric (e.g., glass) and formed
`over an LCD panel or other display.” Id. (citing Ex. 1017, 2, 5).
`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: determine an amount of time that has
`
`
`7 The text erroneously refers to Figure 1-1. See Ex. 1017, 5.
`8 On the current record, there is no dispute that Philipp 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)).
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`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, 17:46–54. Petitioner argues that the combination of Philipp and
`QT60161 teaches that limitation. See Pet. 35–37. Specifically, Petitioner
`argues that Philipp teaches “two distinct functions that are initiated when an
`amount of time since the last ‘touch’ exceeds a predetermined duration:”
`recalibration timeout and auto-off. Id. at 35 (footnote omitted) (citing
`Ex. 1024 ¶¶ 51, 76, 114–124). Petitioner further argues that a person having
`ordinary skill in the art “would have understood that the disclosed control
`circuit [in Philipp] executes logic in accordance with firmware or software
`stored on internal memory to effectuate the functions discussed.” Id. at 36–
`37 (citing Ex. 1003 ¶¶ 97–103).
`Petitioner also further argues that “it would have been obvious to
`implement these functions with a touch screen and to trigger the claimed
`time duration from detecting a ‘key touch on a/the touch screen’ pursuant to
`the touch screen teachings of QT60161.” Pet. 36.9 More specifically,
`Petitioner argues that it would have been obvious to apply the timed features
`of Philipp “to a ‘touch screen’ and to trigger the claimed time duration from
`detecting a ‘key touch on a/the touch screen.’” Id. at 29. According to
`Petitioner, a person having ordinary skill in the art would have made such a
`combination because
`(1) “the primary timer-based functions described and
`claimed in the ’251 Patent are not only compatible with the touch
`screen described in QT60161, but are expressly discussed in
`
`
`9 The Petition emphasizes the names of prior art references. The emphasis
`is omitted throughout this Decision.
`
`16
`
`
`
`IPR2020-01000
`US 8,749,251 B2
`QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61–
`7:2; Ex. 1017, 7)),
`(2) QT60161 and Philipp “are compatible with the same
`sensor technology” (id. at 31; see also id. at 31–32 (citing Ex.
`1017, 5, Figs. 1-1, 1-2; Ex. 1024 ¶ 48, 49; Ex. 1003 ¶ 52; Ex.
`1028, Figs. 1b, 7)),
`(3) both the ’251 patent and QT60161 are directed to
`saving power after the passage of time (id.at 32–33 (citing
`Ex. 1001, 4:55–65, 10:41–13:59; Ex. 1017, 11; Ex. 1003 ¶¶ 97–
`103)), and
`(4) implementing Philipp “with QT60161’s touch screen
`would have yielded predictable results” (id. at 33 (citing Ex.
`1003 ¶¶ 97–103)).
`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 the combination of Philipp and QT60161
`teaches each claim limitation recited in claim 1 and that a person having
`ordinary skill in the art would have combined the teachings of the references
`in the manner set forth in the Petition. Accordingly, Petitioner has
`demonstrated, on this record, a reasonable likelihood of prevailing on its
`assertion that claim 1 is unpatentable over Philipp and QT60161.
`4. Claims 2–20
`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”); CTPG, 5 (“In instituting a trial, the Board will
`
`17
`
`
`
`IPR2020-01000
`US 8,749,251 B2
`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
`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 references Petitioner argues the
`limitations of claims 2–20 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. 37–43. 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
`2–20 based on the combination of Philipp and QT60161.
`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
`
`18
`
`
`
`IPR2020-01000
`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.
`
`
`
`
`
`
`
`19
`
`
`
`IPR2020-01000
`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
`
`
`20
`
`
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