U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`
`
`
`
`
`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.
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,526,767
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
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`
`Page
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`
`
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................. 2
`III.
`FEE AUTHORIZATION ............................................................................... 3
`IV. GROUNDS FOR STANDING ....................................................................... 3
`V.
`PRECISE RELIEF REQUESTED ................................................................. 3
`VI. THE CHALLENGED PATENT .................................................................... 4
`VII. PATENT PROSECUTION HISTORY .......................................................... 7
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 8
`IX. PRIORITY DATE .......................................................................................... 8
`X.
`CLAIM CONSTRUCTION ........................................................................... 9
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES ............................................................................................. 10
`A.
`Baltierra (Ex-1005) ............................................................................. 10
`B.
`Katou (Ex-1006) ................................................................................. 11
`C. Warren (Ex-1007) ............................................................................... 13
`D. Westerman (Ex-1008) ........................................................................ 14
`XII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER § 325(D) TO DENY HEARING THESE INVALIDITY
`ISSUES FOR THE FIRST TIME IN THIS PETITION .............................. 17
`XIII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS ................................................................................................... 18
`A. Grounds 1 and 2: Claims 1 and 9-14 are rendered obvious by
`Baltierra alone (Ground 1) or Baltierra in view of Katou
`(Ground 2). ......................................................................................... 18
`1.
`A POSITA would have been motivated to combine the
`teachings of Baltierra and Katou, and would have had a
`reasonable expectation of success in doing so. ........................ 18
`
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`B.
`
`C.
`
`Independent Claims 1 and 12-14 ............................................. 19
`2.
`Dependent Claims 9-11 ............................................................ 34
`3.
`Ground 3: Claims 2-8 are rendered obvious by Baltierra in view
`of Katou and Warren. ......................................................................... 35
`1.
`A POSITA would have been motivated to combine the
`teachings of Baltierra with Katou and Warren, and would
`have had a reasonable expectation of success in doing so....... 35
`Dependent Claims 2-8 .............................................................. 38
`2.
`Grounds 4 and 5: Claims 1 and 9-14 are rendered obvious by
`Westerman alone (Ground 4) or Westerman in view of Katou
`(Ground 5). ......................................................................................... 45
`1.
`A POSITA would have been motivated to combine the
`teachings of Westerman and Katou, and would have had
`a reasonable expectation of success in doing so. ..................... 45
`Independent Claims 1 and 12-14 ............................................. 46
`2.
`Dependent Claims 9-11 ............................................................ 57
`3.
`D. Ground 6: Claims 2-8 are rendered obvious by Westerman in
`view of Katou and Warren. ................................................................ 59
`1.
`A POSITA would have been motivated to combine the
`teachings of Westerman with Katou and Warren, and
`would have had a reasonable expectation of success in
`doing so. ................................................................................... 59
`Dependent Claims 2-8 .............................................................. 61
`2.
`XIV. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ................................................................. 67
`A. Whether Court granted a stay or evidence exists that one may
`be granted if IPR is instituted ............................................................. 67
`Proximity of Court’s trial date to Board’s projected statutory
`deadline for FWD ............................................................................... 68
`Investment in parallel proceeding by Court and parties .................... 68
`
`B.
`
`C.
`
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`ii
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`D. Overlap between issues raised in petition and in parallel
`proceeding .......................................................................................... 69
`E. Whether petitioner and defendant in parallel proceeding are the
`same party ........................................................................................... 70
`Other circumstances that impact Board’s exercise of discretion,
`including the merits ............................................................................ 70
`XV. CONCLUSION ............................................................................................. 71
`
`
`
`F.
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`iii
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS1
`
`Ex-1006
`
`Ex-1001 U.S. Patent No. 8,526,767
`Ex-1002 Declaration of Dr. Benjamin Bederson
`Ex-1003 Curriculum Vitae of Dr. Benjamin Bederson
`Ex-1004 Prosecution History of U.S. Patent No. 8,526,767
`Ex-1005 U.S. Patent Publication No. 2009/0284478, filed on May 15, 2008
`(“Baltierra”)
`JP Patent Publication No. H09-231004, published on Sept. 5, 1997
`(“Katou”), including its certified translation
`Ex-1007 U.S. Patent Publication No. 2007/0176906, published on Aug. 2,
`2007 (“Warren”)
`Ex-1008 U.S. Patent Publication No. 2008/0036743, published on Feb. 14,
`2008 (“Westerman”)
`Intel 486 Datasheet, published April, 1989
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`
`Ex-1009
`Ex-1010
`Ex-1011
`Ex-1012
`Ex-1013
`Ex-1014
`Ex-1015
`Ex-1016
`Ex-1017
`
`
`1 Four-digit pin citations that begin with 0 are to the page stamps added by
`Samsung in the bottom right corner of the exhibits. All other pin citations are to
`original page, column, paragraph, and/or line numbers.
`
`iv
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`[INTENTIONALLY LEFT BLANK]
`Ex-1018
`[INTENTIONALLY LEFT BLANK]
`Ex-1019
`Ex-1020 Claim Mapping Table
`Ex-1021 Provisional Application No. 61/049,453
`Ex-1022 Margaret R. Minsky, Manipulating Simulated Objects with Real-
`World Gestures Using a Force and Position Sensitive Screen,
`SIGGRAPH ‘84 Proceedings of the 11th Annual Conference on
`Computer Graphics and Interactive Techniques 195 (Hank
`Christiansen ed., 1984), DOI:
`http://dx.doi.org/10.1145/800031.808598
`Ex-1023 Apple Inc., iPhone Human Interface Guidelines (Dec. 2007)
`Ex-1024 Benjamin B. Bederson & James D. Hollan, Pad++: A Zooming
`Graphical Interface for Exploring Alternate Interface Physics, UIST
`‘94 Proceedings of the 7th Annual ACM Symposium on User
`Interface Software and Technology 17 (1994), DOI:
`http://dx.doi.org/10.1145/192426.192435
`Ex-1025 David Rogers et al., Tossing Objects in a Desktop Environment,
`submitted to Conference on Human Factors in Computing Systems
`(1996)
`Ex-1026 David Rogers et al., Exemplar Figure of Tossing from Tossing
`Objects in a Desktop Environment, submitted to Conference on
`Human Factors in Computing Systems (1996)
`Ex-1027 Benjamin B. Bederson, Fisheye Menus, UIST ‘00 Proceedings of
`ACM Conference on User Interface Software and Technology 217
`(2000), DOI: 10.1145/354401.354782
`Ex-1028 Hilary Browne et al., Designing a Collaborative Finger Painting
`Application for Children, HCIL-2000-17, CS-TR-4184, UMIACS-
`TR-2000-66 (Sept. 2000), available at https://hcil.umd.edu/pub-
`perm-link/?id=2000-17
`Ex-1029 U.S. Patent No. 3,482,241, issued on Dec. 2, 1969 (“Johnson”)
`Ex-1030 U.S. Patent No. 4,136,291, issued on Jan. 23, 1979 (“Waldron”)
`
`v
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`

`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`Ex-1031 U.S. Patent No. 5,463,388, issued on Oct. 31, 1995 (“Boie”)
`Ex-1032 U.S. Patent Publication No. 2002/015024, published on Feb. 7, 2002
`(“Westerman 2002”)
`Ex-1033 William Buxton et al., Issues and Techniques in Touch-Sensitive
`Tablet Input, ACM SIGGRAPH, Vol. 19, No. 3, 215-224 (Nov 3,
`1985)
`Ex-1034 Dean Harris Rubine, The Automatic Recognition of Gestures, CMU-
`CS-91-202 (Dec. 1991)
`Ex-1035 Wayne Westerman, Hand Tracking, Finger Identification, and
`Chordic Manipulation on a Multi-Touch Surface (Spring 1999)
`Ex-1036 Peri Tarr et al., Workshop on Multi-Dimensional Separation of
`Concerns in Software Engineering, ICSE ‘00 Proceedings of the
`22nd International Conference on Software Engineering 809 (2000),
`DOI: https://doi.org/10.1145/337180.337827
`3Com Corp., PalmPilot™ Handbook (1997), available at
`https://www.pdm.com.co/Articulos%20y%20Guias/Palm/
`Guias%20en%20ingles/PalmPilot%20User%20Guide.pdf ?x81790
`Ex-1038 Solas’s Preliminary Disclosure of Asserted Claims and Infringement
`Contentions to Samsung, dated July 12, 2021
`
`Ex-1037
`
`
`
`vi
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`

`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) requests inter partes review (“IPR”) of Claims 1-14 of
`
`U.S. Patent No. 8,526,767 (“the ’767 Patent”) (Ex-1001), currently assigned to
`
`Solas OLED Ltd. (“Patent Owner”).
`
`The ’767 Patent relates to “gesture recognition” using “a state machine
`
`approach” comprising a plurality of linked state modules. In particular, the patent
`
`discloses a touch sensor device comprising at least two single-touch state machines
`
`operable to process single touches, and a distinct multi-touch state machine “to
`
`process multiple simultaneous touches” and output a recognized multi-touch
`
`gesture. The ’767 Patent makes clear that all of these components, such as touch
`
`sensor devices capable of detecting multiple touch gestures, were well-known in
`
`the art.
`
`The prior art in this Petition demonstrates that Claims 1-14 of the ’767
`
`would have been obvious because they involved predictable combinations of
`
`admittedly well-known components in touch sensor gesture-recognition
`
`technology. Ex-10022 ¶¶34-57; Exs-1022-1023, 1029-1037.
`
`This Petition presents grounds of unpatentability not addressed, and not
`
`
`2 The Petition is supported by a declaration from Dr. Benjamin Bederson, an expert
`in computer science, human-computer interaction, and user interface technologies.
`Id. ¶¶1-20; Exs-1003, 1024-1028.
`
`1
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`cumulative to those addressed, during patent prosecution. The grounds presented in
`
`this Petition are more than reasonably likely to prevail and this Petition should be
`
`granted.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Real Parties-in-Interest: Petitioner identifies the following real parties-in-
`
`interest: Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`Related Matters: Patent Owner has asserted the ’767 Patent against
`
`Petitioner in Solas OLED Ltd. v. Samsung Electronics Co., Ltd. et al., No. 2:21-cv-
`
`00105-JRG (E.D. Tex.). Petitioner filed a declaratory judgment action against
`
`Patent Owner for a declaration of non-infringement of the ’767 Patent and other
`
`patents in Samsung Electronics Co. Ltd. et al. v. Solas OLED Ltd. et al., No. 1:21-
`
`cv-05205 (S.D.N.Y.). Samsung is not challenging the validity of the ’767 Patent in
`
`the action.
`
`Lead and Back-Up Counsel:
`• Lead Counsel: Ryan K. Yagura (Reg. No. 47,191), O’Melveny &
`
`Myers LLP, 400 South Hope Street, 18th Floor, Los Angeles, CA
`
`90071 (Telephone: 213-430-6000; E-Mail: ryagura@omm.com).
`
`• Backup Counsel: Nicholas J. Whilt (Reg. No. 72,081), O’Melveny &
`
`Myers LLP, 400 South Hope Street, 18th Floor, Los Angeles, CA
`
`90071 (Telephone: 213-430-6000; E-Mail: nwhilt@omm.com) and
`
`2
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`

`

`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`Caitlin P. Hogan (Reg. No. 61,515), O’Melveny & Myers LLP, 7
`
`Times Square, Times Square Tower, New York, NY 10036
`
`(Telephone: 212-326-2000; E-Mail: chogan@omm.com).
`
`Service Information: Petitioner consents to electronic service by email to
`
`SolasEDTXSamsungOMM@omm.com. Please address all postal and hand-
`
`delivery correspondence to lead counsel at O’Melveny & Myers LLP, 400 South
`
`Hope Street, 18th Floor, Los Angeles, CA 90071, with courtesy copies to the email
`
`address identified above.
`
`III. FEE AUTHORIZATION
`Pursuant to 37 C.F.R. §§ 42.15(a) and 42.103(a), the PTO is authorized to
`
`charge any and all fees to Deposit Account No. LA500639.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’767 Patent is available for IPR, this Petition is
`
`timely filed, and Petitioner is not barred or estopped from requesting IPR on the
`
`grounds presented.
`
`V.
`
`PRECISE RELIEF REQUESTED
`Petitioner requests cancellation of Claims 1-14 of the ’767 Patent under 35
`
`U.S.C. § 103 on the following grounds:
`
`•
`
`Grounds 1 and 2: Claims 1 and 9-14 are rendered obvious by U.S.
`
`Patent Publication No. 2009/0284478 (“Baltierra”) alone or Baltierra in view of JP
`
`3
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`

`

`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`Patent Publication No. H09-231004 (“Katou”);
`
`•
`
`Ground 3: Claims 2-8 are rendered obvious by Baltierra in view of
`
`Katou and U.S. Patent Publication No. 2007/0176906 (“Warren”);
`
`•
`
`Grounds 4 and 5: Claims 1 and 9-14 are rendered obvious by U.S.
`
`Patent Publication No. 2008/0036743 (“Westerman”) alone or Westerman in view
`
`of Katou;
`
`•
`
`Ground 6: Claims 2-8 are rendered obvious by Westerman in view of
`
`Katou and Warren. See also Ex-1002 ¶¶25-29, 33.
`
`VI. THE CHALLENGED PATENT
`The ’767 Patent generally relates to apparatuses and methods for
`
`recognizing “complex gesture combinations, in particular those that arise in
`
`multitouch.” Ex-1001, 13:64-67.
`
`As shown in figure 6, “Touch 1 and Touch 2 are processed by the 2-touch
`
`state machine, 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. 14:38-42.
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`4
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`
`
`This multi-touch state machine “can also generate more complex gestures.”
`
`Id. 14:43-44. For example, “[i]f one state machine is in state ‘Pressed’ and the
`
`other has just generated a ‘Tap’ event, then the 2-touch state machine can generate
`
`a ‘Press and Tap’ event.” Id. 14:46-49. The ’767 Patent claims relate to figures 4-6
`
`and their accompanying disclosures, which were added for the first time in the
`
`non-provisional application filed on October 20, 2008.
`
`The claims are directed to predictable combinations of these well-known
`
`prior art elements in touch sensor and gesture-recognition devices as reflected, for
`
`example, in Claim 1. The other independent claims are substantially similar, and
`
`the dependent claims simply add minor functional or structural variations.
`
`1. A touch sensor device comprising:
`a sensor having a sensitive area extending in at least one-dimension and
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`5
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`

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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`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 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.
`
`6
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`

`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`
`As explained in detail below, the ’767 Patent’s claims would have been
`
`obvious in view of the prior art. Ex-1002 ¶¶34, 59-60, 62.
`
`VII. PATENT PROSECUTION HISTORY
`The ’767 Patent file history is submitted as Ex-1004. The application leading
`
`to the ’767 Patent application, 12/254,043, was filed on October 20, 2008. It claims
`
`priority to provisional application, 61/049,453, filed on May 1, 2008. The claims
`
`were rejected and amended multiple times during prosecution. See Ex-1004, 152-
`
`165, 199-212.
`
`In a December 5, 2012 interview, the Examiner proposed and Applicant
`
`agreed to add language to the independent Claims 1 and 12-14 to specify that the
`
`“one-touch” state-machines and the “multi-touch” state-machine are distinct from
`
`each other (not combined). Id. 224. In a follow-up December 14, 2012 interview,
`
`Applicant suggested and the Examiner agreed to adding language “wherein the
`
`multi-touch state-machine directly receives each of the outputs from the first one-
`
`touch state-machine and the second one-touch state-machine,” in order to further
`
`limit the claims in view of the prior art. Id. 225.
`
`In allowing the claims, the Examiner made the amendments authorized in
`
`the interviews and stated that Hillis (U.S. Patent Publication No. 2007/0046643),
`
`Warren (Ex-1007), and Bisset (U.S. Patent No. 5,825,352) do not disclose the
`
`limitations of the amended independent Claims 1 and 12-14. Id. 227-231; see also
`
`7
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`

`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`
`Ex-1002 ¶61.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`One of ordinary skill in the art would have had a bachelor’s degree in
`
`electrical engineering, computer engineering, computer science, or a related field,
`
`and at least two years of experience in the research, design, development, and/or
`
`testing of touch 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 ¶¶24, 30-32.
`
`IX. PRIORITY DATE
`As discussed above, Applicant obtained allowance over the prior art based
`
`on the “distinct” “one-touch” state-machines and “multi-touch” state-machine,
`
`which receives directly outputs from the first one-touch state-machine and the
`
`second one-touch state-machine. The sole support for “distinct” one-touch state-
`
`machines and a multi-touch state-machine that receives output from the first and
`
`second one-touch state machines is found in figures 4-6 and their accompanying
`
`disclosures, which were not included in Applicant’s provisional application,
`
`61/049,453 (Ex-1021). Applicant added this new matter to non-provisional
`
`application, 12/254,043 (Ex-1004, 6-37, 52-62).3 Therefore, the earliest priority
`
`
`3 Indeed, much of the current specification was added in the non-provisional filing.
`See Ex-1001, Figs. 4-13 and corresponding text. Figures 1-3 and their
`
`
`8
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`date to which Claims 1-14 are entitled is October 20, 2008.
`
`Nonetheless, Grounds 4-6 render the challenged claims of the ’767 Patent
`
`invalid even if a May 1, 2008 priority date is used. Moreover, in determining what
`
`constitutes prior art, this Petition applies pre-AIA 35 U.S.C. § 102. Ex-1002 ¶¶58,
`
`60.
`
`X. CLAIM CONSTRUCTION
`Petitioner does not believe that any term requires explicit construction to
`
`resolve the issues presented in this Petition.4 Ex-1002 ¶¶21-23.
`
`
`accompanying disclosures do not cover the claimed embodiments. Specifically,
`figure 1 “is limited to processing gestures made up of single touches” (Ex-1001,
`8:36-46); figure 2 expands the first embodiment “to cater for multitouch gestures,”
`with multitouch capability “provided by one additional state, the Multitouch state”
`within the same state-machine (id. 10:51-61); and figure 3 further develops the
`“Pressed state” of the second embodiment to “allow multiple interpretations of a
`single touch” based on duration. Id. 11:61-12:2. In the “fourth embodiment,” added
`in the non-provisional application, “[m]ultiple single-touch state machines are []
`combined to handle multiple touch gestures.” Id. 14:10-19, Fig. 4. The sixth
`embodiment discloses how this approach “can be used to give equivalent
`functionality to the state machine of the second embodiment” with a distinct 2-
`touch state-machine that receives input from “two input state machines,” as recited
`in Claims 1-14. Id. 14:34-56, Fig. 6.
`4 Claim construction disclosures have not started yet in the district court. Petitioner
`respectfully reserves the right to revisit claim construction depending on any
`potential claim construction(s) proposed in district court or in response to Patent
`Owner’s arguments as necessary. Petitioner will request leave to submit the district
`court’s claim construction order as soon as it becomes available.
`
`9
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES
`A. Baltierra (Ex-1005)
`Baltierra, titled “Multi-Contact and Single-Contact Input,” is U.S. Patent
`
`Publication No. 2009/0284478, filed on May 15, 2008. Baltierra qualifies as prior
`
`art under at least 35 U.S.C. § 102(e).
`
`As shown in figure 1, Baltierra discloses a multi-touch gesture-recognition
`
`system, including “contact detectors 106 (shown integrated with a display 107)
`
`included in a contact detection device 108.” Ex-1005 ¶16.
`
`Baltierra discloses that “[o]ne or more contact state machines 120 and a
`
`monitoring state machine 122 may be included in the multi-input system 102 to
`
`switch or determine the identifier module’s input mode.” Id. ¶30. “[E]ach tactile
`
`
`
`10
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`contact has its own instance of a contact state machine”; therefore, “a first finger
`
`may have a first contact state machine and a second finger a second contact state
`
`machine.” Id. ¶31. In this scenario, “the monitoring state machine 122 monitors the
`
`state of the contact state machines 120 to determine when each contact state
`
`machine 120 changes state,” which may occur, when a user makes a new tactile
`
`contact. Id.
`
`For example, “when a user makes a pinching gesture, a user may contact the
`
`contact detection device 108 with his/her thumb before contacting the contact
`
`detection device 108 with his/her forefinger.” Id. ¶33. Separate contact state
`
`machines 120 for the thumb and forefinger change state when contact is made by
`
`the thumb and forefinger. Id. “In response to these state changes and the number of
`
`contacts change, the monitoring state machine 122 changes the identifier module’s
`
`input mode” to output a mapped function corresponding to the pinch gesture. Id.
`
`¶33; Ex-1002 ¶¶63-66.
`
`B. Katou (Ex-1006)
`Katou, titled “Information Processing Device,” is JP Patent Publication No.
`
`H09-231004, published on September 5, 1997. Katou qualifies as prior art under at
`
`least 35 U.S.C. § 102(b). A certified translation of Katou is included in Ex-1006.
`
`Katou also discloses a multi-touch gesture-recognition system. Ex-1006,
`
`Abstract. As shown in figure 1, Katou discloses distinct gesture interpreting means
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`11
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`Petition for Inter Partes Review
`for one-touch gestures (i.e., gesture decoding means (16)) and multi-touch gestures
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`(i.e., composite gesture decoding means (18)), received from two finger contact
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`means (12):
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`
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`Specifically, Katou discloses “gesture decoding means” (16) for decoding
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`single-touch gestures received from finger contact means (12). Id. ¶¶30-31, 40.
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`Moreover, Katou discloses “composite gesture decoding means” (18), “connected
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`to the gesture decoding means (16),” which “judge[s] the composite meaning
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`generated by a combination of at least one or more decoded gesture information
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`12
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`Petition for Inter Partes Review
`(17) and generate[s] composite gesture information (18a).” Id. ¶43; Ex-1002 ¶¶67-
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`69.
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`C. Warren (Ex-1007)
`Warren, titled “Proximity Sensor and Method for Indicating Extended
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`Interface Results,” is U.S. Patent Publication No. 2007/0176906, published on
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`August 2, 2007. Warren qualifies as prior art under at least 35 U.S.C. § 102(b).5
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`Warren also discloses a multi-touch gesture-recognition system. Ex-1007
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`¶27. Its touch screen “distinguish[es] between different object combination
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`motions … and generate[s] user interface results responsive to the motions.” Id.
`
`¶42.
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`5 Warren is a § 102(a) reference if a May 1, 2008 priority date applies.
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`13
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`U.S. Patent No. 8,526,767
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`As shown, Warren discloses “four states, an IDLE state 501, a FIRST RESULT
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`state 502, a SECOND RESULT state 503, and a THIRD RESULT state 504.” Id.
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`The IDLE state 501, for example, “provides an idle result”; “the first result is
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`providing ‘pointing’”; and “the second result is providing ‘dragging.’” Id. ¶¶42-43.
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`Warren further discloses transitions between states (e.g., transition from the IDLE
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`state to a FIRST RESULT state) based on the removal of one or more fingers from
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`the sensor. Id. ¶¶46-47, 58-59; Ex-1002 ¶¶70-72.
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`D. Westerman (Ex-1008)
`Westerman, titled “Gesturing with a Multipoint Sensing Device,” is U.S.
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`Patent Publication No. 2008/0036743, published on February 14, 2008. Westerman
`
`qualifies as prior art under at least 35 U.S.C. § 102(a).
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`Westerman also discloses a multi-touch gesture-recognition system,
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`including “a multipoint sensing area” and “a gesture module configured to
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`determine a gesture set” and output actions associated therewith, based on touch-
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`input received from the multipoint sensing area. Ex-1008 ¶29. Moreover,
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`Westerman discloses that its “electronic system may be configured with any of the
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`[] embodiments” disclosed. Id. ¶204.
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`As shown in figure 22, Westerman discloses control operation 410, that can
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`simultaneously detect first and second touches on the multipoint sensing device,
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`recognize first and second arrangements of contacts associated with the touches,
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`14
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`generate gesture sets based on the arrangements of contacts, monitor the first and
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`second touches for gesture events, and implement actions associated with first and
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`second gesture events. Id. ¶¶33, 152.
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`
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`In figure 23, Westerman discloses a module that detects first and second
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`GUI pointers resulting from first and second finger gestures, detects whether the
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`pointers are locked to a displayed object, monitors the positions of the pointers
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`
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`15
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`relative to their locked positions by finger movements, and modifies the displayed
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`object when one or both pointers are moved relative to their locked positions. Id.
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`¶153.
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`Examples of multi-touch gestures recognized and output by the system of
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`figure 23 are changing an object’s orientation (i.e., rotation), size (i.e., zoom
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`in/out), and shape. Id. ¶¶153-154; Ex-1002 ¶¶73-77.
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`
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`16
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`U.S. Patent No. 8,526,767
`Petition for Inter Partes Review
`XII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION UNDER
`§ 325(d) TO DENY HEARING THESE INVALIDITY ISSUES FOR
`THE FIRST TIME IN THIS PETITION
`In considering its discretion under § 325(d), “the Board uses the following
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`two-part framework: (1) whether the same or substantially the same art previously
`
`was presented to the Office or whether the same or substantially the same
`
`arguments previously were presented to the Office; and (2) if either condition of
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`first part of the framework is satisfied, whether the petitioner has demonstrated that
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`the Office erred in a manner material to the patentability of challenged claims.”
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`
`Here, the first prong is not met. None of the primary references relied upon
`
`in this Petition were before the Examiner and only one of the secondary references
`
`was before the Examiner.6 Applicant relied on distinct state-machine module
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`limitations added to distinguish the prior art before the Examiner. Ex-1004, 224,
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`227-231. These limitations, however, are disclosed in Baltierra and Westerman.
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`Because the first prong is not met, the Board need not move to the second prong.
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`See, e.g., Oticon Med. AB v. Cocklear Ltd, IPR2019-00975, Paper 15 at 20 (PTAB
`
`
`6 The three Westerman references cited on IDS’s by Applicant during prosecution
`(U.S. Patent No. 6,888,536 and U.S. Patent Publication Nos. 2002/0015024 (Ex-
`1032) and 2008/0309626) are unrelated and do not contain similar disclosures to
`Westerman (Ex-1008). Although Warren (Ex-1007), a secondary reference, was
`cited, Petitioner relies on Warren solely for elements of the dependent claims.
`
`17
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`Oct. 16, 2019) (precedential) (declining to exercise discretion when “new,
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`noncumulative prior art [is] asserted in the Petition”).
`
`Accordingly, this Petition should be addressed on the merits.
`
`XIII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS
`The ’767 Patent contains 14 claims, of which four are independent.
`
`Independent Claims 1 and 12-14 contain substantially similar limitations.
`
`Dependent claims 2-11 further limit the apparatus of independent Claim 1.
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`Substantially similar claim elements are discussed together in the below element-
`
`by-element analysis. See also Ex-1020. Any meaningful differences between the
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`claims or elements are individually identified and discussed. As explained below,
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`the challenged claims are disclosed or taught by the prior art. Ex-1002 ¶78.
`
`A. Grounds 1 and 2: Claims 1 and 9-14 are rendered obvious by
`Baltierra alone (Ground 1) or Baltierra in view of Katou (Ground
`2).
`1.
`
`A POSITA would have been motivated to combine the
`teachings of Baltierra and Katou, and would have had a
`reasonable expectation of success in doing so.
`Baltierra alone or in view of Katou discloses all of the limitations of Claims
`
`1 and 9-14. As set forth below in detail, a POSITA would have been motivated to
`
`combine the teachings of Baltierra and Katou, and would have a reasonable
`
`expectation of success in doing so. Ex-1002 ¶79. Both references relate to
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`interactive multi-touch systems and methods for recognizin