Trials@uspto.gov
`571-272-7822
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`Paper 6
`Date: December 13, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CYPRESS SEMICONDUCTOR CORP., and
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2021-01128
`Patent 8,432,173 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 6
`Date: December 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CYPRESS SEMICONDUCTOR CORP., and
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2021-01128
`Patent 8,432,173 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2021-01128
`Patent 8,432,173 B2
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`
`
`
`INTRODUCTION
`
`Cypress Semiconductor Corp. and STMicroelectronics, Inc.
`(collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) under 35 U.S.C.
`§§ 311–319 for inter partes review of claims 1–3, 5–12, and 14–19 of U.S.
`Patent No. 8,432,173 B2 (Ex. 1001, “the ’173 patent”). Neodron Ltd.
`(“Patent Owner”) did not file a preliminary response.
`At our discretion, we may institute an inter partes review when “the
`information presented in the petition . . . and any response . . . 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). Applying that standard, we institute an inter partes review of all
`asserted grounds and all challenged claims of the ’173 patent for the reasons
`explained below. This is a preliminary decision, and we will base our final
`written decision on the full trial record, including any timely response by
`Patent Owner.
`
`
`
`BACKGROUND
`
`A. REAL PARTIES IN INTEREST
`
`Patent Owner identifies itself as a real party-in-interest (RPI). See
`Paper 3, 1. Petitioner identifies the captioned entities and also, for purposes
`of this proceeding and to avoid an RPI dispute, identifies related companies.
`Pet. 74−75.
`
`B.
`
`RELATED PROCEEDINGS
`
`The parties identify the following as related matters: Neodron Ltd. v.
`STMicroelectronics, Inc., 6:20-cv-00560 (W.D. Tex.); Neodron Ltd. v.
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`Renesas Electronics Corp., No., 6:20-cv-00529 (W.D. Tex.); Neodron Ltd. v.
`Texas Instruments Inc., 2:20-cv-00190 (E.D. Tex.); Neodron Ltd. v. Cypress
`Semiconductor Corp., 6:20-cv-00523 (W.D. Tex.); and In re Certain Touch-
`Sensing Systems, Capacitive Touch Sensing Controllers, Microcontrollers
`with Capacitive Touch Sensing Functionality, and Components Thereof, Inv.
`No. 337-TA-1162 (“related ITC proceeding”). Pet. 3; Paper 3, 2.
`
`C.
`
`THE ’173 PATENT (EX. 1001)
`
`The ’173 patent relates to “capacitive position sensors for detecting
`the position of an object around a curved path.” Ex. 1001, 1:21–22. The
`sensor can operate in two modes. The first mode is shown in Figure 1,
`reproduced below:
`
`
`Figure 1 shows “part of a control panel 50, having a capacitive sensor 60 and
`a digital readout display 70.” Ex. 1001, 7:38–39. As shown in the sensor’s
`first operating mode, “a user’s finger is used to select a cooking
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`temperature.” Id. at 7:61–63. Finger 80 is near a portion of sensing element
`100 corresponding to a temperature of 175 °C, which also appears on
`readout display 70. Id. at 7:63–66.
`Because the sensor resolution is limited, the initial temperature
`selected in the first operating mode may only be an approximation of the
`intended temperature. See Ex. 1001, 7:66–8:8. Therefore, the sensor
`automatically enters a second mode of operation to allow the user to fine-
`tune the selected temperature, as shown below in Figure 2A, reproduced
`below.
`
`
`Ex. 1001, 8:9–10. Figure 2A depicts capacitive sensor 60 in a second
`operating mode. Id. at 8:10–12. In this mode, “a user is able to increase or
`decrease the temperature selected in the first mode by a pre-determined
`increment” by displacing finger 80 “by a pre-determined threshold angle.”
`Id. at 8:13–17. In this example, the user has rotated finger 80
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`counterclockwise, as represented by arrow C, to decrease the temperature
`from 175 °C to 173 °C, with the updated temperature shown on display 70.
`See id. at 8:21–27.
`
`D. CHALLENGED CLAIMS AND ASSERTED GROUNDS
`
`
`
`
`
`Independent claim 1, which exemplifies the other challenged claims,
`is as follows:
`
`1. A method comprising:
`
`receiving one or more first signals indicating one or more first
`capacitive couplings of an object with a sensing element
`that comprises a sensing path that comprises a length, the
`first capacitive couplings corresponding to the object
`coming into proximity with the sensing element at a first
`position along the sensing path of the sensing element
`determining based on one or more of the first signals the first
`position of the object along the sensing path;
`setting a parameter to an initial value based on the first
`position of the object along the sensing path, the initial
`value comprising a particular parameter value and being
`associated with a range of parameter values, the range of
`parameter values being associated with the length of the
`sensing path;
`receiving one or more second signals indicating one or more
`second capacitive couplings of the object with the sensing
`element, the second capacitive couplings corresponding to
`a displacement of the object along the sensing path from
`the first position; and
`determining based on one or more of the second signals the
`displacement of the object along the sensing path; and
`adjusting the parameter within the range of parameter values
`based on the displacement of the object along the sensing
`path.
`Ex. 1001, 9:37–62. Claims 10 (a computer-readable medium claim) and 19
`(an apparatus claim) are also independent and recite substantively similar
`
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`limitations to those recited in claim 1. Claims 2, 3, and 5–9 depend from
`claim 1; and claims 11, 12, and 14–19 depend from claim 10. See id. at
`9:63–12:29.
`Petitioner asserts three grounds for inter partes review, as summarized
`in the following table:
`References
`35 U.S.C. §
`Claims Challenged
`Trent1
`103
`1, 2, 8–11, 17–19
`Trent, Engholm2
`103
`1–3, 5–12, 14–19
`Bryan,3 Trent, Engholm
`103
`1–3, 5–12, 14–19
`Pet. 2. The Petition further relies on a declaration of Dr. Benjamin B.
`Bederson. Ex. 1002 (“Bederson Decl.”). Patent Owner has not submitted a
`preliminary response, and, therefore, Patent Owner has not, at this
`preliminary stage, contested Dr. Bederson’s testimony, or submitted rebuttal
`evidence.
`
` ANALYSIS
`
`For the reasons discussed below, we determine there is a reasonable
`likelihood that Petitioner would prevail in showing that at least one of claims
`1–3, 5–12, or 14–19 is unpatentable under the grounds of the Petition. As a
`foundation for addressing those grounds in detail, we first address the level
`of ordinary skill in the art, and whether we need to construe claim terms for
`our analysis.
`
`
`1 Trent Jr., et al., US 2004/0252109 A1, published Dec. 16, 2004 (Ex. 1005,
`“Trent”).
`2 Engholm et al., US 6,229,456 B1, issued May 8, 2001 (Ex. 1006,
`“Engholm”).
`3 Bryan, Jr., et al., US 5,559,301, issued Sept. 24, 1996 (Ex. 1007, “Bryan”).
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`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the pertinent art at the time of the
`invention is one of the factual considerations relevant to obviousness. See
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). It is also relevant to
`how we construe the patent claims. See Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc). To assess the level of ordinary
`skill, we construct a hypothetical “person of ordinary skill in the art,” from
`whose vantage point we assess obviousness and claim interpretation. See In
`re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). This legal construct
`“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)).
`Petitioner proposes the same articulation of the level of ordinary skill
`in the art that the Administrative Law Judge adopted in the related ITC
`proceeding, which is as follows:
`one of ordinary skill in the art would have had a bachelor’s
`degree in electrical engineering, computer engineering,
`computer science, or a related field, and at least two years of
`experience in the research, design, development, and/or testing
`of touch sensors, human-machine interaction and interfaces,
`and/or graphical user interfaces, and related firmware and
`software, or the equivalent, with additional education
`substituting for experience and vice versa.
`Pet. 6; Ex. 1008, 8. Dr. Bederson agrees with it. See Pet. 6, Bederson Decl.
`¶ 30.
`
`This articulation of the level of ordinary skill is consistent with the
`problems and solutions in the ’173 patent and the prior art of record.
`
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`Therefore, we adopt the proposed articulation of the level of ordinary skill in
`the art for purposes of this decision.
`
`B.
`
`CLAIM CONSTRUCTION
`
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). This
`includes “construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. We also
`consider “[a]ny prior claim construction determination concerning a term of
`the claim in a civil action, or a proceeding before the International Trade
`Commission, that is timely made of record” in this proceeding. Id. The
`ordinary and customary meaning of a claim term “is its meaning to the
`ordinary artisan after reading the entire patent,” and “as of the effective
`filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
`1313, 1321 (Fed. Cir. 2005) (en banc).
`Although a number of ’173 patent claim terms have been construed in
`the related ITC proceeding, Petitioner contends that we do not need to
`explicitly construe any claim terms. Pet. 6–7. In particular, the
`constructions for the selected terms in the related ITC proceeding are as
`follows, according to Petitioner.
`Term
`a sensing element that com-
`prises a sensing path that com-
`prises a length
`
`Construction
`a physical electrical sensing element
`made of conductive substances that
`comprises a path for sensing that is
`determined for each use that com-
`prises a length
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`object
`
`either an inanimate object, such as a
`wiper, pointer, or stylus, or alterna-
`tively, a human finger or other ap-
`pendage any of whose presence ad-
`jacent the element will create a lo-
`calized capacitive coupling from a
`region of the element back to a cir-
`cuit reference via any circuitous
`path, whether galvanically or
`nongalvanically
`distance and direction of movement
`
`displacement
`
`Pet. 6−7. Petitioner does not dispute these constructions (id.), which
`we find reasonable at this juncture. Therefore, we preliminarily adopt these
`constructions for purposes of institution.
`
`C. GROUND 1: OBVIOUSNESS OVER TRENT
`
`For Ground 1, Petitioner alleges that claims 1, 2, 8–11, and 17–19 of
`the ’173 patent are unpatentable under 35 U.S.C. § 103 as obvious over
`Trent. Pet. 15−32. Having reviewed the Petition, we determine that
`Petitioner is reasonably likely to prevail in showing that at least one of
`claims 1, 2, 8–11, and 17–19 is unpatentable as obvious over Trent, for the
`reasons given below.
`
`1.
`
`Overview of Trent
`
`Trent discloses a “closed-loop sensor” as part of a user interface,
`which senses touch motions along a closed loop, to generate a signal that
`causes an action on a host device. See Ex. 1005 ¶ 73. An example of such a
`sensor is shown in Figure 36, below:
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`Figure 36 shows “an object position detector 130 having four closed-loop
`sensors to vary the settings of audio controls.” Ex. 1005 ¶ 121. One of
`these is sensor 132, which controls the volume. Id. “[T]he motions
`(illustrated by arrow 134) of an input object on the volume control . . . 132
`will cause the volume of the audio system to either increase or decrease.”
`Id.
`
`2.
`
`Independent claims 1, 10, and 19
`
`Independent claim 1, reproduced above, is a method claim. See supra
`part II.D. Independent claims 10 and 19 are substantially similar to
`independent claim 1, except that claim 10 is directed to a “computer-
`readable non-transitory storage media embodying logic that is operable
`when executed” to perform substantially the method of claim 1. Ex. 1001,
`10:33–58. Claim 19 is directed to an apparatus for performing, substantially,
`the method of claim 1. Id. at 12:1–29. Petitioner’s arguments regarding the
`respective limitations of claims 1, 10, and 19 are substantially the same. See
`
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`Pet. 20–37. For ease of analysis, when we cite or refer specifically to claim
`1’s limitations below, the discussion is also applicable to independent claims
`10 and 19.
`
`(a)
`
`First Signal Limitation: “receiving one or more
`first signals indicating one or more first capacitive
`couplings of an object with a sensing element . . .
`the object coming into proximity with the sensing
`element at a first position along the sensing path of
`the sensing element”; and
`
`The claims require receiving a first signal set indicating the capacitive
`couplings of an object (such as a finger) along a sensing path comprising a
`length, and using the first signal set to determine the object’s first position
`along the sensing path. See Ex. 9:38–46; 10:35–42, 12:2–13. According to
`Petitioner, Trent discloses a touch sensor that has a circular sensor path, and
`the recited “length” is the circumference of this circular path. See Pet. 17–
`18 (citing Ex. 1005 ¶¶ 23, 73, 76, 79–81, Figs. 4, 5; Bederson Decl. ¶¶ 81,
`83, 85).
`We find Petitioner’s arguments sufficiently persuasive, at this
`preliminary stage, to establish by a reasonable likelihood that Trent discloses
`the First Signals Limitation.
`
`
`(b)
`
`First Object Position Limitation: “determining
`based on one or more of the first signals the first
`position of the object along the sensing path”
`
`Petitioner argues that Trent discloses a method of determining the
`position of the object along the sensor path using interpolation. Pet. 20
`(citing Ex. 1005 ¶¶ 74, 80, 124–129, Fig. 40; Bederson Decl. ¶¶ 88–90).
`
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`According to Trent, the absolute position of the object can be reported as a
`single coordinate, and the relative positions (or motions) of the object can be
`reported in the same units (such as angular coordinates). Ex. 1005 ¶ 74.
`We find Petitioner’s arguments sufficiently persuasive, at this
`preliminary stage, to establish by a reasonable likelihood that Trent discloses
`the First Object Position Limitation.
`
`(c) The Setting Parameter Limitation
`
`The claims require setting a parameter to an initial value based on the
`first position of the object along the sensing path. Ex. 1001, 9:47–48,
`accord id. at 10:43–44, 12:14–15. This initial value must comprise “a
`particular parameter value” and must be “associated with a range of
`parameter values, the range of parameter values being associated with the
`length of the sensing path.” Id. at 9:48–52; accord id. at 10:44–48, 12:15–
`19. We refer to this limitation as the “Setting Parameter Limitation.”
`Petitioner contends that Trent discloses setting a parameter to an
`initial value. Pet. 21. According to Petitioner, “Trent discloses using
`‘absolute’ positioning, corresponding to the precise location that a user
`touches the closed-loop sensor, to set an ‘initial value’ for a parameter in
`some modes.” Id. (citing Ex. 1005 ¶ 92 (“[I]t may occasionally be useful to
`use this absolute position (i.e., an exact starting point), for example, to
`indicate a starting value for a controlled parameter . . . .”)). In this mode of
`operation, according to Petitioner, Trent describes that a user may touch the
`sensor halfway, indicating that the starting value for volume would be 50%.
`Id. at 21−22. Thus, Petitioner argues, Trent’s range of parameter values is
`necessarily associated with the length of the sensing path. Id. at 22.
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`Further, to the extent the range of parameter values is not expressly or
`inherently taught by Trent, Petitioner argues that it would have been obvious
`to set a parameter to an initial value within a range that is associated with the
`length of the sensing path. Id. Relying on testimony of Dr. Bederson,
`Petitioner argues that a person of ordinary skill in the art would have had
`reason to combine the volume control knob of Trent’s Figure 36 (reproduced
`above in our overview of Trent) with functionality that sets the volume to an
`initial value as disclosed in Trent’s paragraph 92. Pet. 22 (citing Ex. 1005
`¶¶ 3, 4−11; Bederson Decl. ¶¶ 91–93). Petitioner also argues that Trent
`identifies, as part of the prior art “solutions” to the problem of the invention,
`a two-dimensional sensor in which users can slide their fingers to generate
`scrolling actions. Id. (citing Ex. 1005 ¶ 11). According to Dr. Bederson, a
`person of ordinary skill in the art would have understood that such a sensor
`would set a parameter to an initial value as recited in the claims. See
`Bederson Decl. ¶ 93.
`We find Petitioner’s arguments, and Dr. Bederson’s supporting
`testimony on the above points, sufficiently persuasive at this preliminary
`stage to show by a reasonable likelihood that Trent discloses or teaches the
`Setting Parameter Limitation.
`
`(d) The Second Signals Limitation
`
`Claim 1 recites receiving “second signals indicating one or more
`capacitive couplings of the object with the sensing element.” Ex. 1001,
`9:53–55, accord id. at 10:49–51, 12:20–22. These second capacitive
`couplings must “correspond[] to a displacement of the object along the
`sensing path from the first position.” Id. at 9:55–57; accord id. at 10:51–53,
`12:22–24. We refer to this limitation as the “Second Signals Limitation.”
`
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`Petitioner argues that Trent teaches detecting the movement of the
`object with additional electrodes (second and third electrodes 32 and 33),
`which constitute the second capacitive couplings recited in the claims.
`Pet. 23 (citing Ex. 1005 ¶ 80, Fig. 4; Bederson Decl. ¶ 96). According to
`Petitioner, Trent teaches “the relative positions (or motions) can be reported
`in the same (such as angular) units as well.” Id. at 23 (quoting Ex. 1005
`¶ 74). Dr. Bederson opines that this angular relative position includes both a
`direction and a relative distance along the curved loop from the absolute
`position. Bederson Decl. ¶ 97 (stating that the ’173 patent also teaches
`measuring distance in angular units (citing Ex. 1005 ¶ 73)); Ex. 1001 4:21–
`58, 5:44–45 (disclosing examples in which the displacement is measured as
`an angle).
`We find Petitioner’s arguments, and Dr. Bederson’s supporting
`testimony, sufficiently persuasive at this preliminary stage to show by a
`reasonable likelihood that Trent discloses or teaches the Second Signals
`Limitation.
`
`(e) The Displacement Determination Limitation
`
`Claim 1 recites “determining based on one or more of the second
`signals the displacement of the object along a sensing path.” Ex. 1001, Id. at
`9:58–59; accord id. at 10:54–55, 12:25–26 (the “Displacement
`Determination Limitation”). Petitioner contends that “Trent discloses an
`algorithm for determining the distance and direction of motion (i.e. the
`claimed “displacement”) between two reported positions along the sensing
`path.” Pet. 25 (citing Ex. 1005 ¶ 134). Petitioner points to examples in
`Trent, including two flowcharts, that show how to determine relative angular
`movement, in positive or negative degrees (to indicate the direction of
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`movement), between an old position and a new position. Id. at 25–28 (citing
`Ex. 1005, ¶¶ 134, 139, Figs. 44, 45; Ex. Bederson Decl. ¶¶ 100–102).
`We find Petitioner’s arguments, and Dr. Bederson’s supporting
`testimony, sufficiently persuasive at this preliminary stage to show by a
`reasonable likelihood that Trent discloses or teaches the Displacement
`Determination Limitation.
`
`(f)
`
`The Adjusting Limitation
`
`Claim 1 recites “adjusting the parameter within the range of parameter
`values based on the displacement of the object along the sensing path.”
`Ex. 1001, 9:60–55, accord id. at 10:49–51, 12:20–22 (the “Adjusting
`Limitation”). Petitioner argues that Trent discloses this limitation, in that,
`“in response to movement in clockwise or counter-clockwise directions, ‘the
`value of a setting’ can be correspondingly adjusted.” Pet. 28. Petitioner
`points to an example in Trent where movement in the clockwise direction
`generates a signal “that can cause the data, menu option, three dimensional
`model, or value of a setting to traverse in a particular direction,” and
`likewise, the value traverses in the opposite direction for counter-clockwise
`movement. Id. (quoting Ex. 1005 ¶ 73).
`Petitioner also points to another example in Trent of measuring the
`angular difference between two points during traversal of the closed-loop
`path, and “the sign of this result is used to indicate the direction of motion,
`while the absolute distance is used to indicate the amount of motion.”
`Pet. 28−29 (quoting Ex. 1005 ¶ 139). Petitioner points out that, according to
`Trent, this example “results in a more natural feeling correspondence
`between the motion of the user’s input object and the corresponding
`variation in the controlled parameter (e.g., scrolling distance, menu
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`traversal, or setting value).” Id. (quoting Ex. 1005 ¶ 139). Thus, Petitioner
`contends that “Trent adjusts the parameter within the range of parameter
`values based on the displacement of the object.” Id. at 29 (citing Bederson
`Decl. ¶ 103).
`We find Petitioner’s arguments sufficiently persuasive at this
`preliminary stage to show by a reasonable likelihood that Trent discloses or
`teaches the Adjusting Limitation. Thus, the preliminary evidence shows by
`a reasonable likelihood that Trent teaches each limitation of claims 1, 10,
`and 19. Petitioner has also shown, sufficiently for this preliminary stage,
`that a person of ordinary skill in the art would have had reason to combine
`the various embodiments in Trent to achieve the claimed inventions.
`
`3.
`
`Dependent claims 2, 8, 9, 11, 17, and 18
`
`The Petition analyzes each of dependent claims 2, 8, 9, 11, 17, and 18,
`and presents reasons why Trent discloses or teaches each limitation in these
`claims. See Pet. 30−32. At this preliminary stage, we find Petitioner’s
`contentions for each of these claims to be sufficiently persuasive to show by
`a reasonable likelihood that the claims are unpatentable as obvious over
`Trent as alleged.
`
`4.
`
`Preliminary conclusion regarding Ground 1
`
`For the above reasons, we determine that Petitioner is reasonably
`likely to prevail in showing that claims 1, 2, 8–11, and 17–19 of the ’173
`patent are unpatentable under § 103 as obvious over Trent.
`
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`D. GROUND 2: OBVIOUSNESS OVER TRENT IN VIEW OF ENGHOLM
`
`For Ground 2, Petitioner alleges that claims 1–3, 5–12, and 14–19 of
`the ’173 patent are unpatentable under 35 U.S.C. § 103 as obvious over
`Trent in view of Engholm. Pet. 32−49. For the reasons given below, we
`determine that Petitioner is reasonably likely to prevail in showing that at
`least one of claims 1–3, 5–12, and 14–19 is unpatentable over Trent in view
`of Engholm.
`
`1.
`
`Overview of Engholm
`
`Engholm discloses a method “for facilitating user interaction with a
`measurement instrument,” that involves “display[ing] a control knob glyph
`corresponding to a user-adjustable parameter of the measurement
`instrument, the control knob glyph having an indicator and a partially
`circular drag area through with the indicator can be rotated.” Ex. 1006, code
`(57). An example of such a glyph is shown in Figure 4b, below:
`
`
`Figure 4b shows control knob glyph 412, which is “separated into two
`portions, a first including drag area 414 and indicator 416, and a second
`including an increment button 418 and decrement button 420. Id. at 6:37–
`40. A user can interactively rotate indicator 416 through drag area 414. Id.
`
`
`
`
`17
`
`
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`IPR2021-01128
`Patent 8,432,173 B2
`
`at 6:40. “Moving indicator 416 in a counterclockwise manner decreases the
`current value being set by control knob glyph 412, while moving indicator
`416 in a clockwise manner increases the current value.” Id. at 6:32–35.
`
`2. Motivation to combine Trent and Engholm
`
`Petitioner argues that Engholm provides additional teachings with
`respect to a closed-loop sensor, and that a person of ordinary skill in the art
`would have had reason to incorporate these teachings into Trent’s method
`and apparatus. Pet. 33−35 (citing Ex. Bederson Decl. ¶¶ 113–116). In
`particular, Petitioner argues, with supporting testimony from Dr. Bederson,
`that “one of skill in the art would have had a reasonable expectation of
`success” in combining the teachings of Trent and Engholm, because the
`solutions each contributes involve routine software functionality that is
`reasonably predictable to implement and amenable to simple substitution by
`those of skill in the art. Pet. 34−35 (citing Bederson Decl. ¶ 116).
`On the record before us, we find Petitioner’s arguments, and Dr.
`Bederson’s supporting testimony, to be sufficiently persuasive at this
`preliminary stage.
`
`3.
`
`Independent claims 1, 10, and 19
`
`For Ground 2, Petitioner’s arguments with respect to the independent
`claims rely on substantially the same arguments as Ground 1, except for
`additional arguments regarding the Setting Parameter Limitation and the
`Adjusting Limitation. See Pet. 37−38.
`Regarding the Setting Parameter Limitation, Petitioner argues that
`Engholm, like Trent, discloses “the range of parameter values being
`associated with the length of the sensing path.” Id. at 37−38. With
`
`18
`
`
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`IPR2021-01128
`Patent 8,432,173 B2
`
`supporting testimony from Dr. Bederson, Petitioner contends that “one of
`skill in the art would have been motivated to combine, for example, the
`volume dial of Trent’s Figure 36 with the parameter mapping in Engholm,
`because it would allow a user to more easily determine the exact volume
`they initially selected when they touched the volume dial.” Pet. 38−39
`(citing Ex. Bederson Decl. ¶ 128).
`As to the Adjusting Limitation, Petitioner contends that, like Trent,
`“Engholm discloses ‘the control subsystem provides a control knob glyph on
`the display device corresponding to a user-adjustable parameter.’” Pet. 40
`(citing Ex. 1006, 2:42–47).
`We find Petitioner’s arguments sufficiently persuasive at this
`preliminary stage to show that Engholm teaches the Setting Parameter and
`Adjusting Limitations, and that a person of ordinary skill in the art would
`have had reason to combine these teachings with Trent’s method and sensor
`apparatus. Thus, the preliminary evidence is sufficient at this stage to show
`that Petitioner is reasonably likely to prevail in showing that claims 1, 10,
`and 19 are unpatentable as obvious over Trent in view of Engholm.
`
`4.
`
`Dependent claims 2, 3, 5–9, 11, 12, and 14–18
`
`The Petition analyzes each of dependent claims 2, 3, 5–9, 11, 12, and
`14–18, and presents reasons why a combination of Trent and Engholm
`teaches each limitation in these claims. See Pet.40−49. At this preliminary
`stage, we find Petitioner’s contentions to be sufficiently persuasive to show
`by a reasonable likelihood that the dependent claims are unpatentable as
`alleged.
`
`
`
`
`19
`
`
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`IPR2021-01128
`Patent 8,432,173 B2
`
`
`5.
`
`Preliminary conclusion regarding Ground 2
`
`For the above reasons, we determine that Petitioner is reasonably
`likely to prevail in showing that claims 1–3, 5–12, and 14–19 of the ’173
`patent are unpatentable under § 103 as obvious over Trent in view of
`Engholm.
`
`E. GROUND 3: OBVIOUSNESS OVER BRYAN IN VIEW OF TRENT AND
`ENGHOLM
`
`For Ground 3, Petitioner alleges that claims 1–3, 5–12, and 14–19 are
`unpatentable under § 103 as obvious over Bryan in view of Trent and
`Engholm. Pet. 49−67.
`Because Petitioner has shown a reasonable likelihood of prevailing
`with respect to at least one claim of the ’173 patent, we will institute on all
`grounds and all claims raised in the Petition. See SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348, 1359–60 (2018); AC Techs. S.A. v. Amazon.com, Inc., 912
`F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board institutes an IPR, it must
`. . . address all grounds of unpatentability raised by the petitioner.”).
`Ground 3 asserts unpatentability of the same claims asserted
`collectively in Grounds 1 and 2. Therefore, at this stage of the proceeding, it
`is not necessary for us to provide an assessment of Ground 3. Nevertheless,
`we note that Petitioner provides a detailed explanation as to this ground,
`supported by Dr. Bederson’s testimony and specific citations to Bryan,
`Trent, and Engholm indicating where the references teach the limitations of
`claims 1–3, 5–12, and 14–19. See Pet. 49−67.
`
`
`
`
`20
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`IPR2021-01128
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`
`
`F.
`
`CONCLUSION
`
`Based on the evidence available on the preliminary record, Petitioner
`has demonstrated a reasonable likelihood of success in showing that at least
`one of the challenged claims of the ’173 patent are unpatentable on the
`grounds raised in the Petition.
`
` ORDER
`
`In consideration of the foregoing, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–3, 5–12, and 14–19 of the ’173 patent is instituted with
`respect to the grounds set forth in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, inter partes review of the ’173 patent commences on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial.
`
`
`
`
`21
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`IPR2021-01128
`Patent 8,432,173 B2
`
`For PETITIONER:
`David M. Hoffman (Lead Counsel)
`IPR13276-0075IP1@fr.com
`hoffman@fr.com
`
`Tyler R. Bowen
`tbowen@perkinscoie.com
`
`
`
`For PATENT OWNER:
`
`Reza Mirzaeie (Lead Counsel)
`Kristopher Davis
`C. Jay Chung
`rmirzaie@raklaw.com
`rak_neodron@raklaw.com
`kdavis@raklaw.com
`
`
`
`
`
`
`
`22
`
`
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