Trials@uspto.gov
`571-272-7822
`
` Paper 13
`
` Date: January 13, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
` SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`____________
`
`IPR2021-01254
`Patent 8,526,767 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JOHN A. HUDALLA, and JULIA HEANEY,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571-272-7822
`
` Paper 13
`
` Date: January 13, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
` SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`____________
`
`IPR2021-01254
`Patent 8,526,767 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JOHN A. HUDALLA, and JULIA HEANEY,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2021-01254
`Patent 8,526,767 B2
`
`
`I. INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively “Petitioner”) filed a Petition for inter partes review of
`claims 1–14 of U.S. Patent No. 8,526,767 B2 (Ex. 1001, “the ’767 patent”).
`Paper 3 (“Pet.”). Solas OLED, Ltd. (“Patent Owner”) filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). Subsequently, we authorized the
`parties to file replies limited to the issue of discretionary denial under
`35 U.S.C. § 314(a). Paper 9. Petitioner filed a Reply to the Preliminary
`Response (Paper 10; “Pet. Reply”) and Patent Owner filed a Sur-reply
`(Paper 12; “PO Sur-reply”).
`Institution of an inter partes review is authorized by statute 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).
`Upon consideration of the Petition, the Preliminary Response, the Reply, the
`Sur-reply, and the evidence of record, we decline to institute review of the
`challenged claims of the ’767 patent.
`
`A. Related Matters
`The parties indicate that related district court litigations are: Solas
`OLED Ltd. v. Samsung Electronics Co., Ltd. et al., No. 2:21-cv-00105-JRG
`(E.D. Tex.) and Samsung Electronics Co. Ltd. et al. v. Solas OLED Ltd. et
`al., No. 1:21-cv-05205 (S.D.N.Y.). Pet. 2; Papers 5, 6.
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`B. The ’767 Patent1
`The ’767 patent describes how touch sensors are used to recognize
`gestures, such as those by a human finger or a stylus, on sensing surfaces.
`Ex. 1001, 1:13–22. The ’767 patent addresses the difficulty in reliably and
`efficiently distinguishing between a significant number of gestures,
`including complex gesture combinations that arise in multi-touch input. Id.
`at 2:66–3:2, 13:64–14:5. The ’767 patent purports to solve this problem “by
`adopting a state machine approach,” in which a touch sensor device
`comprises an at least one-dimensional sensor to output a sense signal and a
`gesture processing unit comprising a plurality of linked state modules
`operable to analyze the time series data to distinguish gesture inputs. Id. at
`3:11–23.
`In one embodiment, a touch sensor device has two one-touch state
`machines for generating two-touch events. Id. at 6:60–62, Fig. 6.
`Figure 6 of the ’767 patent is illustrative and is reproduced below.
`
`
`1 Petitioner contends that “the earliest priority date to which Claims 1–14 are
`entitled is October 20, 2008.” Pet. 8–9. At this juncture of the proceeding,
`Patent Owner does not contest Petitioner’s assertion regarding the “priority
`date.” See generally Prelim. Resp.
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`Figure 6 shows a simple scalable architecture that includes state
`machines. Id. at 14:34–37. Each one-touch finite state machine (FSM)
`represents a single-touch state machine that generates a single-touch gesture,
`and a two-touch FSM represents a two-touch state machine that generates
`two-touch gestures. Id. at 14:20–24. Touch 1 and Touch 2 are processed by
`the two-touch FSM, “which tracks the separation and angle between the
`touches, and generates stretch, pinch, and rotate events as the distance and/or
`angle between the touches changes.” Id. at 14:38–42. An FSM can also
`generate complex gestures. Id. at 14:43–44. For instance, if a one-touch
`FSM is in a “Pressed” state, and another one-touch FSM has just generated a
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`“Tap” event, then the two-touch FSM can generate a “Press and Tap” event.
`Id. at 14:45–49.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–14 of the ’767 patent. Claims 1
`and 12–14 are independent claims, and claims 2–11 depend from claim 1.
`Claim 1 is reproduced below.
`1. A touch sensor device comprising:
`a sensor having a sensitive area extending in at least one
`dimension and arranged to output sense signals responsive to
`proximity of an object to the sensitive area;
`a processor operable to execute position-processing logic stored
`in one or more tangible media, the position-processing logic,
`when executed by the processor, configured to:
`calculate positions of interactions with the sensitive area from
`an analysis of the sense signals; and
`output a times series of data indicative of the interaction
`positions on
`the sensor,
`the
`interaction positions
`corresponding to touches; and
`a processor operable to execute gesture-processing logic stored
`in one or more tangible media, the gesture-processing logic,
`when executed by the processor, configured to analyze the
`time series of data to distinguish one or more gesture inputs
`from the time series of data, the gesture-processing logic
`being coded with gesture-recognition code comprising a
`plurality of state-machine modules, the plurality of state
`machine modules comprising:
`a first one-touch state-machine module, the first one touch state-
`machine module being operable to recognize at least a first
`one-touch gesture and generate a first output based on the first
`one-touch gesture;
`a second one-touch state-machine module, the second one-touch
`state-machine module being operable to recognize at least a
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`second one-touch gesture and generate a second output based
`on the second one touch gesture; and
`a multi-touch state-machine module operable to:
`receive, directly from the first one-touch state-machine
`module, the first output;
`receive, directly from the second one-touch state-machine
`module, the second output; and
`recognize, based on at least the first and second outputs, at
`least one multi-touch gesture, the first one-touch state-
`machine module, the second one-touch state-machine
`module, and the multi-touch state-machine module being
`distinct state-machine modules; and
`output the recognized multi-touch gesture.
`Ex. 1001, 20:51–21:26.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–14 are unpatentable based on the
`following grounds (Pet. 3–4):
`
`Claim(s) Challenged
`1, 9–14
`1, 9–14
`
`35 U.S.C §
`103(a)2
`103(a)
`
`Reference(s)/Basis
`Baltierra3
`Baltierra, Katou4
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Here, Petitioner
`alleges that the ’767 patent has an October 20, 2008 effective filing date.
`Pet. 8–9. At this juncture of the proceeding, Patent Owner does not contest
`Petitioner’s assertions as to the October 20, 2008 effective filing date.
`Prelim. Resp. 16–26. Because the October 20, 2008 effective filing date is
`before the effective date of the applicable AIA amendments, we refer to the
`pre-AIA versions of 35 U.S.C. §§ 102 and 103.
`3 U.S. Pat. Appl. Pub. No. US 2009/0284478 A1, published Nov. 19, 2009
`(Ex. 1005, “Baltierra”).
`4 Japanese Pat. Pub. No. 9-231004, published Sept. 5, 1997 (Ex. 1006, 1–19,
`“Katou”). Petitioner provides a certified English-language translation of
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`Claim(s) Challenged
`2–8
`1, 9–14
`1, 9–14
`2–8
`
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`
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`35 U.S.C §
`103(a)
`103(a)
`103(a)
`103(a)
`
`II. DISCUSSION
`
`Reference(s)/Basis
`Baltierra, Katou,
`Warren5
`Westerman6
`Westerman, Katou
`Westerman, Katou,
`Warren
`
`A. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`Relying on the testimony of Dr. Benjamin B. Bederson, Petitioner
`offers an assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill at the time of the ’767 patent. Pet. 8
`
`
`Katou (Ex. 1006, 21–46). Any reference to Katou hereinafter will be to the
`English-language translation.
`5 U.S. Pat. Appl. Pub. No. US 2007/0176906 A1, published Aug. 2, 2007
`(Ex. 1007, “Warren”).
`6 U.S. Pat. Appl. Pub. No. US 2008/0036743 A1, published Feb. 14, 2008
`(Ex. 1008, “Westerman”).
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`(citing Ex. 1002 ¶¶ 24, 30–32). For example, Dr. Bederson states that a
`person having ordinary skill in the art “would have been someone with at
`least a bachelor’s degree in electrical engineering, computer engineering,
`computer science, or a related field, plus at least two years of experience in
`the research, design, development, and/or testing of touch and/or proximity
`sensors, human-machine interaction and interfaces, and related firmware and
`software, or the equivalent, with additional education substituting for
`experience and vice versa.” Ex. 1002 ¶ 30. Patent Owner does not propose
`an alternative assessment. See generally Prelim. Resp. We adopt
`Petitioner’s definition of the level of skill for purposes of this Decision,
`except that we delete the phrase “at least” to avoid including ambiguity in
`the definition of the level of skill.
`
`C. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including 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. 37 C.F.R. § 42.100(b) (2020).
`Petitioner states that it “does not believe that any term requires
`explicit construction to resolve the issues presented in this Petition.” Pet. 9.
`Patent Owner does not oppose. See generally Prelim. Resp.
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
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`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`D. Asserted Obviousness of Claims 1 and 9–14 over Baltierra alone or over
`Baltierra and Katou
`Petitioner contends claims 1 and 9–14 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Baltierra alone or over Baltierra and
`Katou. Pet. 18–35. In support of its showing, Petitioner relies upon the
`declaration of Dr. Benjamin B. Bederson. Id. (citing Ex. 1002).
`
`1. Baltierra
`Baltierra describes tools that initiate a function based on tactile
`contacts received through a contact detection device, such as a touch pad.
`Ex. 1005 ¶ 3. These tools use an input mode to identify gestures and switch
`input modes to determine accurately gestures based on tactile contacts. Id.
`Figure 1 of Baltierra is illustrative and is reproduced below.
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`Figure 1 shows an environment with a computer and a contact
`detection device. Id. ¶ 6. Computing system 100 includes multi-input
`system 102, contact detection device 108, and application 110. Id. ¶ 16.
`Multi-input system 102 includes identifier module 104, contact state
`machine 120, and monitoring state machine 122. Id. Contact detection
`device 108 includes contact detectors 106. Id. Gestures are detected by
`contact detectors 106 and are identified by identifier module 104. Id. Once
`the gestures are identified, identifier module 104 initiates application 110 to
`provide a function, such as zooming. Id. Contact state machine 120 and
`monitoring state machine 122 switch or determine identifier module 104’s
`input mode. Id. ¶ 30.
`Each tactile contact has its own instance of contact state machine. Id.
`¶ 31. For instance, “a first finger may have a first contact state machine and
`a second finger [may have] a second contact state machine.” Id. Monitoring
`state machine 122 monitors the change in the number of tactile contacts by
`monitoring the state of contact state machines 120. Id. ¶ 32. Upon
`determining that contact state machines 120 have changed their states and
`the changes in the number of tactile contacts, monitoring state machine 122
`then “switches the identifier module’s input mode from a previous input
`mode to a current input mode.” Id.
`
`2. Katou
`Katou describes an information processing device for operating
`commands corresponding to gesture information input via finger contact
`means, such as for an operator’s finger or a touch pen. Ex. 1006 ¶ 1. The
`information processing device includes gesture capture means such as a
`touch panel that is capable of capturing gesture information. Id. ¶ 2. The
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`finger contact means inputs gesture information such as pressure signal that
`is transmitted to a gesture capture means. Id. ¶ 30.
`Figure 1 of Katou is illustrative and is reproduced below.
`
`
`Figure 1 shows a functional block diagram of an information
`processing device. Id. ¶ 126. Information processing device 10 includes
`finger contact means 12, gesture capture means 14, gesture decoding means
`16, and composite gesture decoding means 18. Id. ¶¶ 40, 126. Gesture
`decoding means 16 is connected to gesture capture means 14 and composite
`gesture decoding means 18, to decode captured gesture information 12 and
`generate decoded gesture information 17. Id. ¶ 40. Decoded gesture
`information 17 and generated composite gesture information 18a are
`combined to generate a “composite meaning.” Id. ¶ 43. Command
`generating means 20 “judge[s]” this composite meaning. Id.
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`3. Discussion
`Claim 1 includes the following limitations:
`a multi-touch state-machine module operable to:
`receive, directly from the first one-touch state-machine
`module, the first output;
`receive, directly from the second one-touch state-machine
`module, the second output; and
`recognize, based on at least the first and second outputs, at
`least one multi-touch gesture.
`Ex. 1001, 21:15–26 (emphasis added). Independent claims 12–14 include
`similar language. Id. at 22:32–43, 23:1–12, 24:11–22. Petitioner’s
`contentions for each independent claim with respect to the above claim
`language are the same. Pet. 30–32.
`For the challenge based on Baltierra alone, Petitioner contends that
`Baltierra’s “[m]onitoring state machine 122 is a multi-touch state-machine
`module because it determines when to switch input modes based on the
`output states of the first and second contact state machines” 120. Id. at 30
`(citing Ex. 1005 ¶¶ 31–32, Fig. 1). Patent Owner argues that Petitioner
`identifies “Baltierra’s ‘monitoring state machine 122’ as the claimed ‘multi-
`touch state-machine module,’” but Petitioner fails to “show that Baltierra’s
`monitoring state machine 122 recognizes any multi-touch gesture” as
`required by the claims. Prelim. Resp. 17 (citing Pet. 30), id. at 19–20
`(“Baltierra does not teach that monitoring state machine 122 is capable of
`identifying any gestures at all.”).
`Petitioner fails to explain, with supporting evidence, how Baltierra’s
`monitoring state machine 122 is operable to “recognize, based on at least the
`first and second outputs, at least one multi-touch gesture.” Baltierra
`describes that in some embodiments, each tactile contact has its own
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`instance of a contact state machine, for example, a first finger may have a
`first contact state machine and a second finger a second contact state
`machine. Ex. 1005 ¶ 31. Monitoring state machine 122 “monitors the
`change in the number of tactile contacts by monitoring the state of the
`contact state machines 120.” Id. ¶ 32. Petitioner has not shown that
`monitoring the change of state or monitoring the change in the number of
`tactile contacts meets the claim limitation of a multi-touch state-machine
`module operable to “recognize, based on at least the first and second
`outputs, at least one multi-touch gesture.” As Patent Owner points out,
`Baltierra’s identifier module 104 is described as recognizing multi-touch
`gestures, not monitoring state machine 122. Id. ¶¶ 16, 22–25.
`In its Reply, Petitioner cites to passages in Baltierra that it did not
`include in the Petition and argues that Baltierra’s monitoring state machine
`122 changes the identifier module’s input mode in response to state changes
`and number of contact changes. Pet. Reply 5 (citing Ex. 1005 ¶¶ 33, 39–41).
`Petitioner argues that such descriptions show how monitoring state machine
`122 recognizes a multi-touch gesture. Id. Petitioner did not present these
`arguments in the Petition. Although we authorized Petitioner to file a reply
`to address whether we should exercise our discretion under 35 U.S.C.
`§ 314(a) to deny institution based on, inter alia, Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), we did not
`authorize Petitioner to augment its showings on the merits presented in the
`Petition, as to how the challenged claims are unpatentable. Paper 9.
`Accordingly, we need not and do not address Petitioner’s new arguments
`and newly cited passages from Baltierra as to how Baltierra’s monitoring
`state machine 122 meets the claim limitation of a multi-touch state-machine
`module operable to “recognize, based on at least the first and second
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`outputs, at least one multi-touch gesture.” As explained above, Petitioner
`fails to explain sufficiently how Baltierra’s monitoring state machine 122
`that functions to monitor the change of state or monitors the change in the
`number of contacts meets the claim limitation of a multi-touch state-machine
`module operable to “recognize, based on at least the first and second
`outputs, at least one multi-touch gesture.”
`Petitioner alternatively contends that “Baltierra’s monitoring state
`machine 122 and identifier module 104 further recognizes multi-touch
`gestures based on input from the first and second contact state machines.”
`Pet. 30–31 (quoting various passages from Ex. 1005 ¶¶ 33, 39–40). Patent
`Owner argues that with respect to Petitioner’s “alternative theory in which
`the limitation is met by ‘monitoring state machine and identifier module
`104,” “identifier module 104 recognizes gestures, but not based on the
`output of any single-touch state machine and not based on the output of
`monitoring state machine 122.” Prelim. Resp. 17–18 (citing Pet. 30). Patent
`Owner contends that “Baltierra’s identifier module 104 cannot disclose the
`’767 patent’s ‘multi-touch state-machine module’ because it does not use the
`output of any one-touch state machine to recognize gestures.” Id. at 19.
`Lastly, Patent Owner argues that Petitioner fails to explain “how the two
`separate modules 122 and 104 could be combined to form the ’767 patent’s
`multi-touch state-machine module, much less why a POSITA7 would be
`motivated to or have a reasonable expectation of success in doing so.” Id. at
`21.
`
`We agree with Patent Owner that Petitioner fails to show how
`Baltierra’s monitoring state machine 122 and identifier module 104 together
`
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`7 A person of ordinary skill in the art.
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`are operable to “recognize, based on at least the first and second outputs, at
`least one multi-touch gesture.” Although identifier module 104 does
`identify gestures, it does so without “receiv[ing] directly” from a first and
`second one-touch state-machine module (contact state machines 120) a first
`and second output as claimed. Ex. 1005 ¶¶ 16, 21–25, Fig. 1. We agree
`with Patent Owner that Baltierra’s identifier module 104 “operates directly
`on the output of the input controller 116.” Prelim. Resp. 18–19 (citing Ex.
`1005, Fig. 1 (showing identifier module 104 receiving output from input
`controller 116, not contact state machines 120)).
`The Petition also does not explain how identifier module 104, which
`Petitioner relies on to meet the claimed “gesture-processing logic,” also
`meets the “multi-touch state-machine module” limitation. Pet. 23–24.
`Petitioner relies on contact state machines 120 and monitoring state machine
`122 to meet the claimed “plurality of state-machine modules,” separate from
`the claimed “gesture processing logic,” which Petitioner indicates is met by
`identifier module 104. In other words, Petitioner does not identify identifier
`module 104 as one of the claimed “plurality of state-machine modules,” yet
`Petitioner inconsistently relies on identifier module 104 to later, in its
`Petition, be a part of the claimed “multi-touch state-machine module.” Id. at
`23–24, 30–31. Such a showing without explanation is fatal to the Petition.
`Moreover, we agree with Patent Owner that Petitioner fails to explain
`“how the two separate modules 122 and 104 could be combined to form the
`’767 patent’s multi-touch state-machine module, much less why a POSITA
`would be motivated to or have a reasonable expectation of success in doing
`so.” Prelim. Resp. 21. Specifically, Petitioner fails to explain at all how
`Baltierra’s monitoring state machine 122 together with identifier module 104
`meet the claimed “multi-touch state-machine module.” Pet. 30–31. Indeed,
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`Petitioner appears to rely on the two separate modules 122 and 104 to meet
`the claimed function of recognizing multi-touch gestures, while relying only
`on monitoring state machine 122 to meet the claimed “multi-touch state-
`machine module.” Id. at 30 (“[m]onitoring state machine 122 is a multi-
`touch state-machine module”). Independent claims 1 and 12–14, however,
`require that the multi-touch state-machine module be operable to recognize
`at least one multi-touch gesture. Moreover, we agree with Patent Owner that
`Petitioner fails to explain how the two separate modules 122 and 104 could
`be combined to form the claimed multi-touch state-machine module or why
`a person having ordinary skill in the art would have been motivated to do so.
`Prelim. Resp. 21. The Petition is silent in that regard and makes no showing
`regarding combining the two separate modules 122 and 104. Pet. 30–31.
`Claims 9–11 depend from claim 1. For claims 9–11, Petitioner does
`not present arguments or evidence that remedy the deficiencies in
`Petitioner’s contentions identified above with regard to independent claims 1
`and 12–14. Pet. 34–35. For all of the above reasons, we are not persuaded
`that Petitioner has established a reasonable likelihood that Petitioner would
`prevail in showing that claims 1 and 9–14 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Baltierra.
` For the challenge based on Baltierra in combination with Katou,
`Petitioner contends that “[t]o the extent it is determined that Baltierra does
`not teach a multi-touch state-machine module operable to recognize at least
`one multi-touch gesture, a POSITA would have been motivated to combine
`Baltierra with Katou with a reasonable expectation of success in doing so for
`reasons similar to those discussed with respect to the contact state
`machines.” Pet. 31 (citing Ex. 1002 ¶ 105). Petitioner argues that since
`Baltierra’s monitoring state machine 122 “has access to the gesture
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`information provided by the separate contact state machines [120], it can be
`programmed similar to the identification module [104] to provide the
`function of recognizing gestures (e.g., pinch) and mapping it to a
`corresponding function (e.g., Zoom Out).” Id. Petitioner further argues that
`a person having ordinary skill in the art would have been motivated to
`integrate “these functions as taught by Katou, which discloses that the
`module receiving the one-touch gestures is ‘composite gesture decoding
`means (18) capable of judging composite meaning generated by a
`combination of at least one or more decoded gesture information (17) and
`generating composite gesture information (18a).’” Id. (citing Ex. 1006
`¶¶ 11–12, 40–43, Fig. 1). Lastly, Petitioner argues that a “POSITA would
`have been further motivated to make this combination in order to structure
`the software with distinct state machine modules because of the ‘separation
`of concerns’ software engineering principle” and that the combination
`“requires simple integration of existing functions of the monitoring state
`machines and the identifier module.” Id. at 32 (citing Ex. 1002 ¶¶ 48–49,
`105; Ex. 1036).
`Patent Owner argues that Petitioner’s suggestion “that Baltierra’s
`monitoring state machine 122 ‘can be programmed similar to the
`identification module to provide the function of recognizing gestures,’” is
`not explained sufficiently. Prelim. Resp. 21 (citing Pet. 31–32). That is so,
`Patent Owner argues, because “Baltierra already contains a module
`dedicated to performing the function of recognizing multi-touch gestures:
`identifier module 104” and Petitioner fails to explain “why a POSITA would
`be motivated to provide duplicative gesture recognition functionality in
`monitoring state machine 122” or “how the two multi-touch gesture
`recognition modules would work together in the proposed combination.” Id.
`
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`We agree with Patent Owner that Petitioner has failed to explain
`sufficiently why a person having ordinary skill in the art would have been
`motivated to make the combination as proposed by Petitioner. The Petition
`does not make clear whether Petitioner proposes to integrate Baltierra’s
`identifier module 104 into monitoring state machine 122, or else to maintain
`Baltierra’s identifier module 104, but also to include the function of
`identifier module 104 in monitoring state machine 122. If the former, then
`Petitioner fails to explain how identifier module 104 can still be the claimed
`“gesture-processing logic” also recited in the claim. In other words, if the
`identifier module 104 is eliminated and integrated into monitoring state
`machine 122, then the Petition is inconsistent insofar as it maps the “gesture-
`processing logic” to identifier logic module 104 separate from the claimed
`“plurality of state-machine modules.” See Pet. 23–24, 31–32. If, on the
`other hand, Petitioner proposes to maintain Baltierra’s identifier logic
`module 104 in the proposed combination, but also to add the functionality of
`recognizing multi-touch gestures to monitoring state machine 122, then we
`agree with Patent Owner that Petitioner and Dr. Bederson fail to explain why
`a person having ordinary skill in the art would have wanted to include the
`function of recognizing gestures into the monitoring state machine when the
`identification module already provides that function. Pet. 31; Ex. 1002
`¶ 105.
`Moreover, to the extent that Petitioner proposes to integrate whatever
`is in Baltierra’s identifier module 104 into monitoring state machine 122, we
`determine that Petitioner fails to explain why a person having ordinary skill
`in the art would have done so. In particular, Petitioner argues that
`“[b]ecause Baltierra’s monitoring state machine has access to the gesture
`information provided by the separate contact state machines, it can be
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`programmed similar to the identification module to provide the function of
`recognizing gestures (e.g., a pinch) and mapping it to a corresponding
`function (e.g., Zoom Out).” Pet. 31. Dr. Bederson testifies the same. Ex.
`1002 ¶ 105. Petitioner then explains that Katou teaches “integrat[ing] these
`functions” and that it would have been obvious to make the combination
`“because of the ‘separation of concerns’ software engineering principle.”
`Pet. 31–32 (citing Ex. 1002 ¶¶ 48–49, 105; Ex. 1036; Ex. 1006 ¶¶ 11–12,
`40–43, Fig. 1).
`Petitioner fails to explain how the quoted passage from Katou teaches
`“integrating these functions.” Id. at 31. And, even if Katou somehow
`teaches “integrating these functions,” such a teaching would be undermined
`by Petitioner’s suggestion that integration would have been desirable based
`on the “separation of concerns” principle. See id. at 32. According to Dr.
`Bederson, the “separation of concerns” principle “refers to the idea that by
`separating the components of a technical system and minimizing the
`coordination between them, each can be developed, tested, and updated
`separately from each other.” Ex. 1002 ¶ 48 (emphasis added). As
`Dr. Bederson further testifies, a common application of the “separation of
`concerns” principle is in the design of software systems, where designers
`“design software modules to operate independently of each with well-
`defined Application Programming Interfaces (APIs). This approach makes
`it possible to change the implementation of one module (without changing
`its API) without the other modules being aware of those changes.” Id. ¶ 49.
`Thus, the “separation of concerns” principle, which advocates separating
`software modules, is in direct conflict with Petitioner’s proposal to
`“integrate these functions” into one module.
`
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`Claims 9–11 depend from claim 1 and incorporate all the limitations
`of claim 1 from which they depend. For claims 9–11, Petitioner does not
`present arguments or evidence that remedy the deficiencies in Petitioner’s
`contentions identified above with regard to independent claim 1. Pet. 34–35.
`For all of the above reasons, we are not persuaded that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in showing
`that claims 1 and 9–14 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over Baltierra and Katou.
`
`E. Asserted Obviousness of Claims 2–8 over Baltierra, Katou, and Warren
`Petitioner contends claims 2–8 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Baltierra, Katou, and Warren. Pet. 35–45.
`
`1. Warren
`Warren describes a proximity sensor that uses a touch sensor device
`for producing user interface inputs. Ex. 1007 ¶ 1. The proximity sensor
`facilitates user interface navigations such as dragging and scrolling.
`Id. ¶ 11. In one embodiment, the proximity sensor distinguishes between the
`motions of different object combinations and indicates specific results
`responsive to the detected object combinations. Id. ¶ 42; Fig. 5.
`Figure 5 of Warren is illustrative and is reproduced below.
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`Figure 5 shows a state diagram of a proximity sensor device process.
`Id. ¶ 16. State diagram 500 includes four states, IDLE state 501, FIRST
`RESULT state 502, SECOND RESULT state 503, and THIRD RESULT
`state 504, in which each state corresponds to user interface action performed
`in response to various motions. Id. ¶ 16. IDLE state 501 provides an idle
`result whereas FIRST RESULT state 502, SECOND RESULT state 503,
`and THIRD RESULT state 504 provide results responsive to
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