Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: December 15, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2021-01161
`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 7
`Entered: December 15, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2021-01161
`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
`
`
`
`
`
`
`
`
`
`IPR2021-01161
`US 8,749,251 B2
`
`A.
`
`Background and Summary
`
`INTRODUCTION
`
`STMicroelectronics, Inc. (“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). “When
`
`instituting inter partes review, the Board will authorize the review to
`
`proceed on all of the challenged claims and on all grounds of unpatentability
`
`asserted for each claim.” PTAB Rules of Practice for Instituting on All
`
`Challenged Patent Claims and All Grounds and Eliminating the Presumption
`
`at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg.
`
`79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).
`
`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.
`
`2
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`
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`IPR2021-01161
`US 8,749,251 B2
`
`B.
`
`Real Parties in Interest
`
`Petitioner identifies itself as the real party in interest. Pet. 44.
`
`Petitioner also states that “[a]lthough STMicroelectronics N.V.,
`
`STMicroelectronics, Inc.’s parent company, and STMicroelectronics (North
`
`America) Holdings, Inc., which is under common ownership with
`
`STMicroelectronics, Inc., are not real parties-in-interest under the governing
`
`legal standard for making that determination, STMicroelectronics, Inc.
`
`identifies them as real parties-in-interest for purposes of this Petition.” Id.
`
`Patent Owner identifies itself as the real party in interest. Paper 4, 1
`
`(Patent Owner’s Mandatory Notices).
`
`C.
`
`Related Matters
`
`Petitioner and Patent Owner each identify Neodron Ltd. v.
`
`STMicroelectronics, Inc., No. 6-20-cv-00560 (W.D. Tex.) and Certain
`
`Capacitive Touch Sensing Systems, Capacitive Touch Sensing Controllers,
`
`Microcontrollers with Capacitive Touch Sensing Functionality, and
`
`Components Thereof, No. 337-TA-1268 as proceedings involving the ’251
`
`patent. Pet. 44; Paper 4, 2.
`
`Petitioner also identifies (1) a number of terminated inter partes
`
`review proceedings and (2) other district court and ITC proceedings
`
`involving the the’251 patent. Pet. 44–45.
`
`Petitioner also identifies STMicroelectronics, Inc. v. Neodron Ltd.,
`
`IPR2021-01161. Paper 3, 1. In a decision issued concurrently with this one,
`
`we institute inter partes review in that proceeding. STMicroelectronics, Inc.
`
`v. Neodron Ltd., IPR2021-01160, Paper 7 (Institution Decision).
`
`D.
`
`The ’251 Patent
`
`The ’251 patent, which is entitled “Proximity Sensor,” issued from
`
`Application 13/116,764 (“the ’764 application”), which was filed on May
`
`3
`
`
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`IPR2021-01161
`US 8,749,251 B2
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`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:
`
`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.
`
`4
`
`
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`IPR2021-01161
`US 8,749,251 B2
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`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).
`
`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.
`
`5
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`
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`IPR2021-01161
`US 8,749,251 B2
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`E.
`
`Illustrative Claims
`
`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.
`
`F.
`
`Prior Art and Asserted Ground
`
`Petitioner asserts that claims 1–20 are unpatentable on the following
`
`ground:
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`6
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`
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`IPR2021-01161
`US 8,749,251 B2
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`Claim(s) Challenged
`1–20
`
`35 U.S.C. §1
`103(a)
`
`Reference(s)/Basis
`Philipp,2 QT601613
`
`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 the Federal Circuit has repeatedly
`
`emphasized that “it is error to reach a conclusion of obviousness until all
`
`those factors are considered,” WBIP, LLC v. Kohler, 829 F.3d 1317, 1328
`
`(Fed. Cir. 2016).
`
`
`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 2007/0076897 A1, published Apr. 5, 2007 (Ex. 1023).
`
`3 Quantum Research Group 1999-2004 “QT60161 16 Key QMatrix™
`Keypanel Sensor IC Datasheet” (Ex. 1017). Petitioner asserts QT60161 was
`publicly available no later than February 12, 2002. Pet. 26.
`
`7
`
`
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`US 8,749,251 B2
`
`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.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`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
`
`(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
`
`8
`
`
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`IPR2021-01161
`US 8,749,251 B2
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`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
`
`C.
`
`Claim Construction
`
`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
`
`
`4 If Patent Owner proposes a different level of ordinary skill in the art in its
`Response, the parties shall address whether there are any material
`differences between the two proposals and what impact, if any, the different
`level has on the obviousness analysis.
`
`9
`
`
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`IPR2021-01161
`US 8,749,251 B2
`
`“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 11–17 (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.”).
`
`Pursuant to the Consolidated Trial Practice Guide,5 Petitioner filed a
`
`Petitioner’s Reasons For and Ranking of Parallel Petitions. Paper 3.
`
`
`5 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019) (“CTPG”), 59–60, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`10
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`
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`IPR2021-01161
`US 8,749,251 B2
`
`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 2.
`
`Patent Owner did not submit a response to Petitioner’s Reasons For
`
`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
`
`about the effective filing date of the ’251 patent, which may require
`
`arguments to be made under multiple prior art references. See Paper 3, 2–3.
`
`Moreover, Patent Owner has not requested that we exercise our discretion to
`
`11
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`IPR2021-01161
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`only consider, at most, one petition. Accordingly, we do not exercise our
`
`discretion to deny this Petition under § 314(a).
`
`E.
`
`Philipp and QT60161
`
`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.
`
`(1) 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
`
`12
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`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
`
`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
`
`13
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`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.
`
`(2) Application of Dynamic Drinkware
`
`Based on the current status of the proceedings, we are sufficiently
`
`persuaded that Petitioner satisfied its initial burden of production 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
`
`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
`
`14
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`IPR2021-01161
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`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.
`
`“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
`
`
`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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`15
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`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 elapsed since the sensing element last detected a change of
`capacitance indicative of a key touch on the touch screen; and if
`
`
`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)).
`
`16
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`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
`QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61–
`7:2; Ex. 1017, 7)),
`
`
`9 The Petition emphasizes the names of prior art references. The emphasis
`is omitted throughout this Decision.
`
`17
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`(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”); 37 C.F.R. § 42.108(a). Therefore, at this stage of
`
`the proceeding, it is not necessary for us to provide an assessment of every
`
`18
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`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
`
`claims for which inter partes review is instituted. Our final decision will be
`
`based on the record as fully developed during trial.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
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`19
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`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.
`
`
`
`
`
`
`
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`PETITIONER:
`
`Tyler R. Bowen
`PERKINS COIE LLP
`bowen-ptab@perkinscoie.com
`
`
`PATENT OWNER:
`
`Reza Mirzaie
`Kristopher Davis
`C. Jay Chung
`RUSS AUGUST & KABAT
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`jchung@raklaw.com
`
`21
`
`
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