UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`STMICROELECTRONICS, INC.
`Petitioner
`v.
`NEODRON, LTD.
`Patent Owner
`
`
`
`Case Nos. IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`
`
`
`
`DECLARATION OF DR. TONY GIVARGIS
`
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 1 of 105
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`STMICROELECTRONICS, INC.
`Petitioner
`v.
`NEODRON, LTD.
`Patent Owner
`
`
`
`Case Nos. IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`
`
`
`
`DECLARATION OF DR. TONY GIVARGIS
`
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 1 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`
`I, Tony Givargis, hereby declare the following:
`
`I.
`
`INTRODUCTION
`I, Tony Givargis, have been retained by counsel for Petitioner as a
`1.
`
`technical expert in the above-captioned case. Specifically, I have been asked to
`
`render certain opinions in regard to the concurrently filed IPR petitions1 with respect
`
`to U.S. Patent No. 8,749,251 (the “’251 Patent”). I understand that the Challenged
`
`Claims are claims 1-20. My opinions are limited to those Challenged Claims.
`
`Previously, I provided a similar declaration relating to the ’251 patent in IPR2020-
`
`00998 and IPR2020-1000. Those IPRs were instituted.
`
`2. My compensation in this matter is not based on the substance of my
`
`opinions or the outcome of this matter. I have no financial interest in Petitioners. I
`
`am being compensated at an hourly rate of $500 for my analysis and testimony in
`
`this case.
`
`3.
`
`In reaching my opinions in this matter, I have reviewed the following
`
`materials:
`
`
`1 I understand that Petitioners have filed two separate IPR petitions challenging the
`
`validity of all claims of the ’251 Patent. For reference herein, the petition filed in
`
`IPR2021-01160 will be referred to as the “102(b) Petition” and the petition filed in
`
`IPR2021-01161 will be referred to as the “Priority Petition.”
`
`2
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 2 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`Exhibit 1001 - U.S. Patent No. 8,749,251 (“the ’251 Patent”)
`
`Exhibit 1002 - The ’251 Patent File History
`
`Exhibit 1004 - Stay Orders, W.D. Tex.
`
`Exhibit 1005 - Microsoft’s Computer Dictionary (“Microsoft
`Computer Dictionary 4th Ed.”)
`
`Exhibit 1006 - Barron’s Dictionary of Computer and Internet Terms
`(“Barron’s Computer Dictionary”)
`
`Exhibit 1007 - Touchscreens 101: Understanding touchscreen
`technology and design (“Touchscreens 101”)
`
`Exhibit 1008 - U.S. Patent No. 8,599,150 (the “’150 Patent”)
`
`Exhibit 1009 - U.S. Patent No. 9,632,628 (the “’628 Patent”)
`
`Exhibit 1010 - U.S. Patent No. 9,823,784 (the “’784 Patent”)
`
`Exhibit 1011 - U.S. Patent No. 9,024,790 (the “’790 Patent”)
`
`Exhibit 1012 - ITC Markman Order
`
`Exhibit 1013 - U.S. Patent No. 6,058,485 to Koziuk, et al. (“Koziuk”)
`
`Exhibit 1014 - U.S. Patent No. 5,283,559 to Kalendra, et al.
`(“Kalendra”)
`
`Exhibit 1015 - Quantum Research Group QT110 Data Sheet
`(“QT110”)
`
`Exhibit 1016 - U.S. Patent Pub. No. 2005/0121980 to Bruwer
`(“Bruwer”)
`
`Exhibit 1017 - Quantum Research Group QT60161 Data Sheet
`(“QT60161”)
`
`Exhibit 1018 - Affidavit from Chris Butler at the Internet Archive –
`QT110
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`3
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 3 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`Exhibit 1019 - Affidavit from Chris Butler at the Internet Archive –
`QT61061
`
`Exhibit 1020 - U.S. App. No. 12/179,769 (the “’769 Parent
`Application”)
`
`Exhibit 1021 - Provisional Application No. 60/952,053 (“Provisional
`Application”)
`
`Exhibit 1022 - ’366 Parent Patent File History
`
`Exhibit 1023 - U.S. Pat. Pub. 2007/0076897 (the “’897 Publication”)
`
`Exhibit 1024 - U.S. Patent Publication No. 2009/0027068 to Philipp,
`et al. (“the ’068 Publication”)
`
`Exhibit 1025 - U.S. Patent Publication No. 2007/0109276 to Kim et
`al. (“Kim”)
`
`Exhibit 1026 - U.S. Pat. No. 5,730,165 (the “’165 Patent”)
`
`Exhibit 1027 - U.S. Pat. No. 6,466,036 (the “’036 Patent”)
`
`Exhibit 1028 - U.S. Pat. No. 6,452,514 (the “’514 Patent”)
`
`Exhibit 1029 - Renesas’s pulse-width modulation regulator ISL6534
`(“ISL6534”)
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Exhibit 1030 - U.S. Patent No. 3,979,240 to Ghezzo (“Ghezzo”)
`•
`A. Background and Qualifications
`I am a Professor in the department of Computer Science at the
`4.
`
`University of California, Irvine (UCI) since July of 2001. I served as the Associate
`
`Dean in the School of Information and Computer Sciences at UCI from 2011 to
`
`2016. I am currently serving as the Vice Chair of the department of Computer
`
`Science at UCI. On July 1, 2021, I will begin serving as the Department Chair of
`
`4
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 4 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`UCI’s department of Computer Science. I graduated Cum Laude with a Bachelor of
`
`Science in Computer Science in 1997 and PhD in Computer Science in 2001 from
`
`the University of California, Riverside. My PhD thesis was entitled “System-Level
`
`Exploration for Pareto-Optimal Configurations in Parameterized System-on-a-
`
`Chip.” It received the School’s Best Thesis Award that year.
`
`5. My research interests are generally directed at various aspects of the
`
`design of Embedded Systems. Embedded Systems are computing devices that
`
`operate within a larger system and include things such as consumer electronics,
`
`handheld devices, office equipment, industrial equipment, medical devices,
`
`autonomous and self-driving vehicles, and many other types of systems. Embedded
`
`systems are characterized as having rich sensing capabilities (e.g., keypads and touch
`
`sensitive input devices, heat/pressure sensors, etc.), actuation capabilities (e.g.,
`
`displays, robotic arms, etc.) and heavy control logic (e.g., programmable embedded
`
`processors, dedicated processing elements and extensive software logic). More
`
`specifically, my research focuses on software for Embedded Systems, real-time
`
`systems, Internet of Things devices, mobile and handheld devices, ML/AI control
`
`algorithms for Cyber Physical Systems, compilers for embedded software and code
`
`transformations techniques for efficient software to hardware migration.
`
`6.
`
`In addition to research, I have taught embedded systems courses at UCI
`
`both at the undergraduate as well as the graduate levels. My upper division
`
`5
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 5 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`Embedded Systems courses (CS 145 and CS 145L) are immensely popular with
`
`yearly enrollments exceeding 350 students. In these courses, students build a
`
`number of Embedded Systems from ground up out of components, including
`
`keypads and touch sensitive input devices. Additionally, they program the compute
`
`elements of their systems with various algorithms and application logic in order to
`
`solve a problem. I also teach the graduate embedded software course (CS 245) that
`
`covers more advanced topics related to Embedded Systems design, including
`
`modeling, design and validation of complex devices.
`
`7.
`
`I have co-authored two textbooks on Embedded Systems design that
`
`are widely used in academia. In 2011, I received the prestigious ASEE’s Frederick
`
`Emmons Terman Award for having authored these textbooks and advanced higher
`
`education in the areas of Embedded Systems. I have published over 100
`
`peer-reviewed and archived conference and journal papers. I have 13 issued US
`
`Patents to my name. I have advised and graduated eight accomplished PhD students
`
`that are currently professors, research scientists, software engineers and technical
`
`leaders in their respective fields. Over the years, as a consultant, I have designed a
`
`number of embedded system products and served as technical expert and consultant
`
`for numerous corporations in the technology sector. I am currently serving on a
`
`number of Technical Program Committees of conferences related to Embedded
`
`Systems. I am an Associate Editor of the Computer Science & Engineering section
`
`6
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 6 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`of Electronics Journal. For additional relevant background, I direct your attention
`
`to my Curriculum Vitae attached as Appendix A.
`
`II. LEGAL FRAMEWORK
`I am a technical expert and do not offer any legal opinions. However,
`8.
`
`counsel has informed me as to certain legal principles regarding patentability and
`
`related matters under United States patent law, which I have applied in performing
`
`my analysis and arriving at my technical opinions in this matter.
`
`9.
`
`I have been informed that the Patent Trial and Appeal Board (“PTAB”)
`
`now applies the claim construction standard applied by Article III courts (i.e., the
`
`Phillips standard) regardless of whether a patent has expired. I have been informed
`
`that under the Phillips standard, claim terms are to be given the meaning they would
`
`have to a person having ordinary skill in the art at the time of the invention, taking
`
`into consideration the patent, its file history, and, secondarily, any applicable
`
`extrinsic evidence (e.g., dictionary definitions).
`
`10.
`
`I have also been informed that a person cannot obtain a patent on an
`
`invention if the differences between the invention and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art. I have been informed that a
`
`conclusion of obviousness may be founded upon more than a single item of prior art.
`
`I have been further informed that obviousness is determined by evaluating the
`
`7
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 7 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`following factors: (1) the scope and content of the prior art, (2) the differences
`
`between the prior art and the claim at issue, (3) the level of ordinary skill in the
`
`pertinent art, and (4) secondary considerations of non-obviousness. In addition, the
`
`obviousness inquiry should not be done in hindsight. Instead, the obviousness
`
`inquiry should be done through the eyes of a person of ordinary skill in the relevant
`
`art at the time the patent was filed.
`
`11.
`
`In considering whether certain prior art renders a particular patent claim
`
`obvious, counsel has informed me that I can consider the scope and content of the
`
`prior art, including the fact that one of skill in the art would regularly look to the
`
`disclosures in patents, trade publications, journal articles, industry standards,
`
`product literature and documentation, texts describing competitive technologies,
`
`requests for comment published by standard setting organizations, and materials
`
`from industry conferences, as examples. I have been informed that for a prior art
`
`reference to be proper for use in an obviousness analysis, the reference must be
`
`“analogous art” to the claimed invention. I have been informed that a reference is
`
`analogous art to the claimed invention if: (1) the reference is from the same field of
`
`endeavor as the claimed invention (even if it addresses a different problem); or
`
`(2) the reference is reasonably pertinent to the problem faced by the inventor (even
`
`if it is not in the same field of endeavor as the claimed invention). In order for a
`
`reference to be “reasonably pertinent” to the problem, it must logically have
`
`8
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 8 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`commended itself to an inventor’s attention in considering his problem. In
`
`determining whether a reference is reasonably pertinent, one should consider the
`
`problem faced by the inventor, as reflected either explicitly or implicitly, in the
`
`specification. I believe that all of the references that my opinions in this IPR are
`
`based upon are well within the range of references a person of ordinary skill in the
`
`art would consult to address the type of problems described in the Challenged
`
`Claims.
`
`12.
`
`I have been informed that, in order to establish that a claimed invention
`
`was obvious based on a combination of prior art elements, a clear articulation of the
`
`reason(s) why a claimed invention would have been obvious must be provided.
`
`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
`
`combination of multiple items of prior art renders a patent claim obvious when there
`
`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
`
`to combine the prior art, which can include, but is not limited to, any of the following
`
`rationales: (A) combining prior art methods according to known methods to yield
`
`predictable results; (B) substituting one known element for another to obtain
`
`predictable results; (C) using a known technique to improve a similar device in the
`
`same way; (D) applying a known technique to a known device ready for
`
`improvement to yield predictable results; (E) trying a finite number of identified,
`
`predictable potential solutions, with a reasonable expectation of success;
`
`9
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 9 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`(F) identifying that known work in one field of endeavor may prompt variations of
`
`it for use in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary skill in the art;
`
`or (G) identifying an explicit teaching, suggestion, or motivation in the prior art that
`
`would have led one of ordinary skill to modify the prior art reference or to combine
`
`the prior art references to arrive at the claimed invention.
`
`13.
`
`I am informed that the existence of an explicit teaching, suggestion, or
`
`motivation to combine known elements of the prior art is a sufficient, but not a
`
`necessary, condition to a finding of obviousness. This so-called “teaching
`
`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
`
`in an obviousness analysis. In determining whether the subject matter of a patent
`
`claim is obvious, neither the particular motivation nor the avowed purpose of the
`
`patentee controls. Instead, the important consideration is the objective reach of the
`
`claim. In other words, if the claim extends to what is obvious, then the claim is
`
`invalid. I am further informed that the obviousness analysis often necessitates
`
`consideration of the interrelated teachings of multiple patents, the effects of demands
`
`known to the technological community or present in the marketplace, and the
`
`background knowledge possessed by a person having ordinary skill in the art. All
`
`of these issues may be considered to determine whether there was an apparent reason
`
`to combine the known elements in the fashion claimed by the patent.
`
`10
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 10 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`I also am informed that in conducting an obviousness analysis, a precise
`
`14.
`
`teaching directed to the specific subject matter of the challenged claim need not be
`
`sought out because it is appropriate to take account of the inferences and creative
`
`steps that a person of ordinary skill in the art would employ. The prior art considered
`
`can be directed to any need or problem known in the field of endeavor at the time of
`
`invention and can provide a reason for combining the elements of the prior art in the
`
`manner claimed. In other words, the prior art need not be directed towards solving
`
`the same specific problem as the problem addressed by the patent. Further, the
`
`individual prior art references themselves need not all be directed towards solving
`
`the same problem. I am informed that, under the KSR obviousness standard,
`
`common sense is important and should be considered. Common sense teaches that
`
`familiar items may have obvious uses beyond their primary purposes.
`
`15.
`
`I also am informed that the fact that a particular combination of prior
`
`art elements was “obvious to try” may indicate that the combination was obvious
`
`even if no one attempted the combination. If the combination was obvious to try
`
`(regardless of whether it was actually tried) or leads to anticipated success, then it is
`
`likely the result of ordinary skill and common sense rather than innovation. I am
`
`further informed that in many fields it may be that there is little discussion of obvious
`
`techniques or combinations, and it often may be the case that market demand, rather
`
`than scientific literature or knowledge, will drive the design of an invention. I am
`
`11
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 11 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`informed that an invention that is a combination of prior art must do more than yield
`
`predictable results to be non-obvious.
`
`16.
`
`I am informed that for a patent claim to be obvious, the claim must be
`
`obvious to a person of ordinary skill in the art at the time of the invention. I am
`
`informed that the factors to consider in determining the level of ordinary skill in the
`
`art include (1) the educational level and experience of people working in the field at
`
`the time the invention was made, (2) the types of problems faced in the art and the
`
`solutions found to those problems, and (3) the sophistication of the technology in the
`
`field.
`
`17.
`
`I am informed that it is improper to combine references where the
`
`references teach away from their combination. I am informed that a reference may
`
`be said to teach away when a person of ordinary skill in the relevant art, upon reading
`
`the reference, would be discouraged from following the path set out in the reference,
`
`or would be led in a direction divergent from the path that was taken by the patent
`
`applicant. In general, a reference will teach away if it suggests that the line of
`
`development flowing from the reference’s disclosure is unlikely to be productive of
`
`the result sought by the patentee. I am informed that a reference teaches away, for
`
`example, if (1) the combination would produce a seemingly inoperative device, or
`
`(2) the references leave the impression that the product would not have the property
`
`sought by the patentee. I also am informed, however, that a reference does not teach
`
`12
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 12 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`away if it merely expresses a general preference for an alternative invention but does
`
`not criticize, discredit, or otherwise discourage investigation into the invention
`
`claimed.
`
`18.
`
`I am informed that even if a prima facie case of obviousness is
`
`established, the final determination of obviousness must also consider “secondary
`
`considerations” if presented. In most instances, the patentee raises these secondary
`
`considerations of non-obviousness. In that context, the patentee argues an invention
`
`would not have been obvious in view of these considerations, which include:
`
`(a) commercial success of a product due to the merits of the claimed invention; (b) a
`
`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
`
`solution provided by the claimed invention; (d) deliberate copying of the invention
`
`by others; (e) unexpected results achieved by the invention; (f) praise of the
`
`invention by others skilled in the art; (g) lack of independent simultaneous invention
`
`within a comparatively short space of time; (h) teaching away from the invention in
`
`the prior art.
`
`19.
`
`I am further informed that secondary considerations evidence is only
`
`relevant if the offering party establishes a connection, or nexus, between the
`
`evidence and the claimed invention. The nexus cannot be based on prior art features.
`
`The establishment of a nexus is a question of fact. While I understand that the Patent
`
`Owner here has not offered any secondary considerations at this time, I will
`
`13
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 13 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`supplement my opinions in the event that the Patent Owner raises secondary
`
`considerations during the course of this proceeding.
`
`III. OPINION
`A. Level of a Person of Ordinary Skill in the Art
`I was asked to provide my opinion as to the level of skill of a person
`20.
`
`having ordinary skill in the art (“PHOSITA”) of the ’251 Patent at the time of the
`
`claimed invention, which counsel has told me to assume is July 26, 2007 for the
`
`102(b) Petition and May 26, 2011 for the Priority Petition. In determining the
`
`characteristics of a hypothetical person of ordinary skill in the art of the ’251 Patent,
`
`I considered several factors, including the type of problems encountered in the art,
`
`the solutions to those problems, the rapidity with which innovations are made in the
`
`field, the sophistication of the technology, and the education level of active workers
`
`in the field. I also placed myself back in the aforementioned time frames of the
`
`claimed inventions and considered the colleagues with whom I had worked at that
`
`time.
`
`21.
`
`In my opinion, a PHOSITA at the time of the claimed invention of the
`
`’251 Patent under either priority date would have had at least a bachelor’s degree in
`
`electrical engineering, computer engineering, computer science, or a similar field
`
`with 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
`
`14
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 14 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`system software that govern said interfaces. A person with more direct industry
`
`experience could accommodate having less formal education, and more formal
`
`education in the field, such as a master’s degree with relevant specialization can
`
`accommodate less direct industry experience. Such a PHOSITA would have been
`
`capable of understanding the ’251 patent and the prior art references discussed
`
`herein.
`
`22. Based on my education, training, and professional experience in the
`
`field of the claimed invention, I am familiar with the level and abilities of a person
`
`of ordinary skill in the art at the time of the claimed invention. Additionally, I met
`
`at least these minimum qualifications to be a person having ordinary skill in the art
`
`as of the time of the claimed inventions of the ’251 Patent.
`
`B. Claimed Invention in the ’251 Patent
`to managing power consumption
`23. The ’251 Patent relates
`
`in
`
`touch-controlled devices. ’251 Patent at Abstract. More particularly, the ’251
`
`Patent describes means for controlling a touch-controlled device comprising
`
`measuring the capacitance of a sensing element (e.g., sense electrode) to determine
`
`whether an object (e.g., user’s finger or stylus) is in proximity with a sensor and
`
`providing an output signal to control the device, such as enabling a “switch-off
`
`function,” when a user has not touched the sensor for a predetermined time. Id. at
`
`2:55-63.
`
`15
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 15 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`In this regard, the capacitance of the sense electrode is affected by the
`
`24.
`
`user’s finger or stylus and is output to a control circuit configured to provide an
`
`output signal indicative of this measured change in capacitance. Id. at 4:24-39. The
`
`control circuit then determines whether a user is no longer in proximity with the
`
`sensor and based on a predetermined time duration, produces an output signal to
`
`prevent a capacitance measurement circuit from continually measuring changes in
`
`capacitance. Id. 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.” Id. at
`
`4:55-65 (referred to as an “auto-off” signal). For example, the ’251 Patent provides
`
`exemplary embodiments of well-known consumer devices implementing the
`
`claimed power-saving functionality. Id. at 5:11-20:
`
`The sensor of particular embodiments may be useful in various
`
`applications, for example in kitchen appliances, light switches,
`
`headsets, and other electronic consumer devices. For example, a coffee
`
`machine incorporating a sensor of particular embodiments may be
`
`programmed to power-down after a time period of, say, 30 minutes,
`
`where the coffee machine has been left on inadvertently.
`
`25. Moreover,
`
`the claimed
`
`invention
`
`is operable
`
`to perform a
`
`“recalibration” when the sensor is “powered up, when an object is determined to be
`
`16
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 16 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`in proximity with the sensor for more than a timer setting, and/or when an override
`
`is released.” Id. at 2:32-35. Figure 1 below depicts an exemplary arrangement of a
`
`sense electrode interconnected with a programmable controller to effectuate the
`
`above-listed functions:
`
`
`
`Id. at Fig. 1.
`
`C. Construction of the “touch screen” and “key touch on a/the touch
`screen” terms
`“touch screen”
`i.
`I understand that in an IPR proceeding, words in a claim are given their
`
`26.
`
`plain meaning, which is the meaning understood by a person of ordinary skill in the
`
`art in view of the patent and file history. The ’251 Patent, however, provides no
`
`guidance on the meaning of “touch screen” and does not use the phrase “touch
`
`17
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 17 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`screen” outside the claims and abstract. Despite this lack of guidance in the patent
`
`itself, “touch screen” is a well-known and widely used term with an accepted
`
`meaning in the industry. As set forth in the next few paragraphs, a PHOSITA would
`
`have understood that the term “touch screen,” according to this well-accepted
`
`meaning, refers to a transparent touch-sensitive panel that overlays a display, such
`
`as an LCD display.
`
`27. To inform the meaning of touch screen, a PHOSITA would have looked
`
`to literary support accepted within the field. Such exemplary accepted literature
`
`includes Microsoft’s Computer Dictionary, which defines a touch screen as a
`
`“computer screen designed or modified to recognize the location of a touch on its
`
`surface” and analogizing this phrase to a “touch-sensitive display.” Microsoft
`
`Computer Dictionary 4th Ed. at 3-4. Similarly, Barron’s Dictionary of Computer and
`
`Internet Terms defines a “touchscreen” as “a computer screen that is sensitive to
`
`touch, so that the user can point to things on it by touching the screen itself, without
`
`using a mouse.” Barron’s Computer Dictionary at 4. Further, a 2009 Planet Analog
`
`article, titled “Touchscreens 101: Understanding touchscreen technology and
`
`design” describes “six key elements” to every touchscreen, including a “touchscreen
`
`‘sensor’ [that] is a clear glass panel with a touch-responsive surface” and an LCD
`
`display mounted below the sensor panel. Touchscreens 101 at 2.
`
`18
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 18 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`28. Similarly, a PHOSITA would have looked to other patents and
`
`publications filed by Patent Owner to inform this understanding. Patent Owner’s
`
`own patent portfolio confirms the well-accepted meaning of “touch screen”
`
`discussed above. For example, U.S. Patent No. 8,599,150 (“the ’150 Patent”),
`
`which, like the ’251 Patent lists, Harald Philipp as an inventor, discloses that “[a]
`
`touchscreen includes touchscreen electrode elements distributed across an active
`
`area of a substrate, and the touchscreen overlays a display.” ’150 Patent at Abstract.
`
`The ’150 Patent explains the benefits realized by deploying a touch-sensitive device
`
`as a touchscreen:
`
`Touchscreens are often used as interfaces on small electronic devices,
`
`appliances, and other such electronic systems because the display
`
`behind the touchscreen can be easily adapted to provide instruction to
`
`the user and to receive various types of input, thereby providing an
`
`intuitive interface that requires very little user training to use
`
`effectively.
`
`Id. at 2:27-32. U.S. Patent No. 9,632,628 (“the ’628 Patent”), which also lists Harald
`
`Philipp as an inventor, further notes that “[t]ouchscreen displays are able to detect a
`
`touch such as by a finger or stylus” and that the “[u]se of a touchscreen as part of a
`
`display enables a user to interact with an electronic application by touching the
`
`touchscreen.” ’628 Patent at 1:6-9. Finally, U.S. Patent No. 9,823,784 (“the ’784
`
`19
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 19 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`Patent”), which also lists Harald Philipp as an inventor, unambiguously explains,
`
`“[i]t will be understood that the display panel in combination with the touch sensor
`
`make a touch screen.” ’784 Patent at 10:35-37. Accordingly, in light of both the
`
`accepted literary evidence and Patent Owner’s own interpretations, a PHOSITA
`
`would have understood that the term “touch screen” refers to a transparent
`
`touch-sensitive panel that overlays a display, such as an LCD display.
`
`“key touch on a/the touch screen”
`ii.
`29. Similar to the term “touch screen,” the ’251 Patent provides no
`
`guidance on what constitutes a “key touch on a/the touch screen.” A PHOSITA
`
`would have understood that there are two possible interpretations based on this
`
`terminology. First, a “key touch on a/the touch screen” could be interpreted as any
`
`user-initiated touch on a touch screen. Second, a “key touch on a/the touch screen”
`
`could be interpreted as a user-initiated touch in a specific region (a defined “key”)
`
`of a touchscreen that is subdivided into multiple such regions/keys.
`
`30. Although the ’251 Patent does not teach or suggest touch screens, it
`
`does provide support for a conclusion that a “key” could be the entire interface and
`
`need not be one of many specific defined “keys.” Namely, the ’251 Patent discloses
`
`that its power saving features “may be used in apparatus or devices with one touch
`
`key…[or] more than one key.” ’251 Patent at 17:13-17. The ’251 Patent does not
`
`teach or suggest keys/regions on a touch screen as those terms are understood in the
`
`20
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1003, IPR2021-01161
`Page 20 of 105
`
`
`
`IPR2021-01160; IPR2021-01161
`U.S. Patent No. 8,749,251
`art, but rather teaches only one or more basic on/off capacitive switches. Given the
`
`allowance for any number of “keys,” including one, a PHOSITA would have
`
`understood that a “key touch on a/the touch screen” is satisfied by any user-initiated
`
`“touch” on a touch screen, regardless where on the screen a touch was registered.
`
`This interpretation is supported by the prior art, including Patent Owner’s own
`
`patents. For example, U.S. Patent No. 9,024,790 (“the ’790 Patent”) unequivocally
`
`states that “[a] ‘key’ can also be a dimensional sensing surface such as an XY touch
`
`screen or a ‘trackpad’.” ’790 Patent at 4:51-52. The ’790 Patent further discloses
`
`an embodiment illustrated in Figure 2 including a “capacitive touch screen area 6
`
`with surrounding buttons 7” and explains that “the area 6 can be treated as a single
`
`key with a single signal strength for purposes of” practicing the alleged invention.
`
`Id. at 5:59-64. Moreover, I have been informed that consistent with these
`
`disclosures, in a prior ITC investigation involving the ’790 Patent, Patent Owner
`
`agreed that “key” can consist of a “dimensional sensing surface such as an XY touch
`
`screen or a ‘trackpad.’” ITC Markman Order at 21.
`
`31. The second possible construction is based on the fact that selecting
`
`specific keys on a touch screen comprising multiple such defined keys is
`
`well-understood in the art. For example, the ’628 Patent describes examples of these
`
`specific keys
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
