`571-272-7822
`
`Paper8
`Entered: July 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,INC.,
`Petitioner,
`
`V.
`
`NEODRONLTD.,
`Patent Owner.
`
`IPR2020-00515
`Patent 9,024,790 B2
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER,and
`SCOTT B. HOWARD,Administrative Patent Judges.
`
`HOWARD,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Jnter Partes Review
`35 US.C. $ 314
`
`INTRODUCTION
`
`A. Background and Summary
`
`SamsungElectronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively, “Petitioner’) filed a Petition to institute an inter partes
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`review of claims 1—24 of U.S. Patent No. 9,024,790 B2 (Ex. 1001, “the ’790
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`patent”). Paper 3 (“Petition,” “Pet.”). Neodron Ltd. (“Patent Owner”) did
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`not file a Patent Owner Preliminary Response.
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`
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`IPR2020-00515
`Patent 9,024,790 B2
`
`Wehaveauthority, acting on the designation of the Director, to
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`determine whetherto institute an inter partes review under 35 U.S.C. § 314
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`and 37 C.F.R. § 42.4(a). Inter partes review may notbeinstituted unless
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`“the information presented in the petition filed under section 311 and any
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`responsefiled under section 313 showsthat there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims
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`challengedin the petition.” 35 U.S.C. § 314(a) (2018). A decision to
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`institute under 35 U.S.C. § 314 may notinstitute on fewer than all claims
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`challenged in the Petition. SAS Inst, Inc. v. Iancu, 138 S. Ct. 1348, 1359-60
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`(2018).
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`For the reasons set forth below, upon considering the Petition and the
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`evidence of record, we determine that the information presented in the
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`Petition establishes a reasonablelikelihood that Petitioner will prevail with
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`respectto at least one of the challenged claims. Accordingly, we institute
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`inter partes review onall of the challenged claims basedonall of the
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`groundsidentified in the Petition.
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`B. Real Parties in Interest
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`Petitioner identifies Samsung Electronics Co., Ltd. and Samsung
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`Electronics America,Inc. as the real parties in interest. Pet. 2.
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`Patent Owneridentifies Neodron Ltd.as the real party in interest.
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`Paper 6, 1 (Patent Owner’s Mandatory Notices).
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`C. Related Matters
`
`Theparties identify the following district court proceeding involving
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`the °790 patent: Neodron Ltd. v. Samsung Elecs. Co., Ltd., No. 6:19-cv-
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`00398-ADA (W.D. Tex.). Pet. 2; Paper 6, 2.
`
`Petitioner identifies additional proceedings involving either the ’790
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`patent or United States Patent No. 8,102,286—the parent of the ’790 patent:
`
`
`
`IPR2020-00515
`Patent 9,024,790 B2
`
`In the Matter of Certain Touch-Controlled Mobile Devices, Computers, and
`
`Components Thereof, ITC Inv. 337-TA-1162; Neodron Ltd. v. Samsung
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`Elecs. Co., Ltd., No. 6:19-cv-00903-ADA (W.D. Tex.); and Samsung Elecs.
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`Co., Ltd. v. Neodron Ltd. , IPR2020-00259. Pet. 2-3.
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`D. The ’790 Patent
`
`The ’790 patent relates to keypads having capacitive keys. Ex. 1001,
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`code (57). The ’790 patent discloses that keypads maysuffer from keying
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`ambiguity problems caused, for example, when a user’s finger touches a key
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`and adjacent ones. Jd. at 1:36—40. To select one key amongseveral keys
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`that exhibit activity, the °790 patent determines which key has the maximum
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`signal strength, and maintains that selection until either the first-determined
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`key drops below somethreshold level, or a second key’s signal strength
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`exceedsthe first key’s signal strength. Jd. at 2:9-17. The method deselects
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`all other keys and enhancesthe selected key’s signal strength value. Jd. at
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`2:17-19. In particular, the 790 patent explains that the “winning”keyis
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`given a slight advantage in subsequentrepetitions of the decision process, in
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`order to avoid indecisiveness and eliminate oscillation between two or more
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`keys having moreorless the same signal strength. Jd. at 2:63-67. For
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`instance, the first key to win remains selected even when the maximal
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`strength has shifted to a new key,if the first key has enough signal strength
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`in excess ofits associated threshold value. /d. at 3:10-14. That threshold
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`value is further described as the “biasing or skewing”of the key selection
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`method in favor of an already selected key. Jd. at 5:42—48. According to
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`the ’790 patent, the “bias” may be provided in many ways in subsequent key
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`selection decisions, such as:
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`These ways may be equivalent to adding an incremental value to
`the signal associated with the selected key; multiplying the signal
`
`
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`IPR2020-00515
`Patent 9,024,790 B2
`
`strength of the selected key by a value greater than one in
`subsequentselections; subtracting a respective incremental value
`from the signal strengths associated with each of the non-selected
`keys; or multiplying the signal strength of each of the non-
`selected keys by a respective value less than one.
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`Id. at 5:51-58. The biasing is further explained in connection with Figure
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`5A, reproduced below.
`
`
`
`Start
`K1 tnactive Acquire $1
`
`Key K1
`Signal for
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`
`
`Compare S1
`with Sj
`all j
`
`
`30
`
`=F ;
`—/
`AllotherSj
`
`
` Di =O +1
`
`
`
`lim T.C.
`
`33
`
`FIG. 5A
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`
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`IPR2020-00515
`Patent 9,024,790 B2
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`Figure 5A showsa flow chart of a method carried out when a Key 1 goes
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`from inactive to active. Id. at 4:22—24. For example, when the signal
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`acquired from Key 1 exceedsa certain threshold value at step 26, the
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`acquired signal is compared against other acquired signals. Jd. at 7:54-60.
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`In determining whether Key 1 “wins” over other active key(s), the method
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`introduces a non-dithering bias value “k,” which is addedto the active key at
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`step 30. Id. at 7:60—63; 8:9-12. If the signal value of Key 1 exceeds the
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`signal value of the active key byat least the bias “k” value, Key 1 will
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`becomethe active key when a counter is reached, and all other keys become
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`inactive. Id. at 8:19-22.
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`E.
`
`Illustrative Claims
`
`Of the challenged claims, claims 1, 7, and 13 are independent. Each
`ofchallenged claims 2—6, 8-12, and 14-20 dependsdirectly from claim 1, 7,
`
`or 13.
`
`Claim1is illustrative and reads as follows:
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`1. An apparatus comprising:
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`plurality of keys;
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`control logic operatively coupled to the plurality of keys
`and configuredto:
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`analyze, to determine a first active key, respective first
`signal values of the plurality of keys;
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`assign, based at least on the respective first sensor values
`of the plurality keys, a first key as the first active key; and
`
`to determine a second active key, respective
`analyze,
`second signal values of the plurality of keys, the analysis, to
`determine the secondactive key, of the respective second signal
`values of the plurality of keys being biased in favor ofthe first
`key.
`
`Ex. 1001, 8:58—9:3.
`
`
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`IPR2020-00515
`Patent 9,024,790 B2
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`F. Prior Art and Asserted Grounds
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`Petitioner asserts that claims 1-24 are unpatentable on the following
`
`grounds:
`
`
`Claim(s) Challenged|35 U.S.C. §' Reference(s)/Basis
`
`
`
`1, 7, 8, 13, 14, 19-24|102(b)?
`pee EE Tia
`4,10, 11, 16, 17
`5, 12, 18
`3, 9, 15
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Jahier, Senk*
`Jahier, QT60161°
`
`Petitioner also relies on a Declaration of Dr. Benjamin B. Bederson,
`
`Ph.D., filed as Exhibit 1002 (“Bederson Declaration”).
`
`! The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the
`790 patent issued from an application filed before March 16, 2013, we
`apply the pre-AIA versionsofthe statutory bases for unpatentability.
`2 Although the Petition only identifies section 103 as a basis for
`unpatentability in the section titled “Precise Relief Requested,” the Petition
`sets forth that claims 1, 7, 8, 13, 14, and 19-24 are either anticipated or
`rendered obvious by Jahier. Compare Pet. 4 (Precise Relief Requested) with
`id. at 17-39 (arguing claims 1, 7, and 13 are either anticipated or obvious),
`45—51 (arguing Jahier discloses the additional limitations recited in claims 8,
`14, and 19-24).
`
`3 US 5,525,908, issued June 11, 1996 (Ex. 1005).
`
`4 US 5,760,715, issued June 2, 1998 (Ex. 1006).
`> Quantum Research Group QT60161 16 Key QMatrix Keypanel Sensor IC
`Datasheet (2002) (Ex. 1007)
`© US 5,831,597, issued Nov. 3, 1998 (Ex. 1008).
`
`
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`IPR2020-00515
`Patent 9,024,790 B2
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`A. Legal Standards
`
`1. Anticipation
`
`ANALYSIS
`
`A patent claim is unpatentable under 35 U.S.C. § 102 if “the four
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`comers of a single, prior art document describe every element of the claimed
`
`invention, either expressly or inherently, such that a person ofordinary skill
`
`in the art could practice the invention without undue experimentation.”
`
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
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`Cir. 2000). “A single prior art reference may anticipate without disclosing a
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`feature of the claimed invention if such feature is necessarily present, or
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`inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958
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`(Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
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`1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within
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`the four corners of the documentnotonlyall of the limitations claimed but
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`also all of the limitations arranged or combinedin the same wayasrecited in
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`the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed.
`
`Cir. 2008). However, “the reference need notsatisfy an ipsissimis verbis
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`test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
`
`2. Obviousness
`
`In Graham v. John Deere Co. ofKansas City, 383 U.S. 1 (1966),the
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`Supreme Court set out a framework for assessing obviousness under 35
`
`U.S.C. § 103 that requires consideration of four factors: (1) the “level of
`
`ordinary skill in the pertinent art,” (2) the “scope and contentofthe prior
`
`art,” (3) the “differences betweenthe priorart and the claimsat issue,” and
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`(4) if in evidence, “secondary considerations” of non-obviousness such as
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`“commercial success, long-felt but unsolved needs, failure of others, etc.”
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`Id. at 17-18. “While the sequence of these questions might be reordered in
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`Patent 9,024,790 B2
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`any particular case,” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 407
`
`(2007), the U.S. Court of Appeals for Federal Circuit has “repeatedly
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`emphasized that an obviousness inquiry requires examination of all four
`
`Graham factors and that an obviousness determination can be made only
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`after consideration of each factor,” Nike, Inc. v. Adidas AG, 812 F.3d 1326,
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`1335 (Fed. Cir. 2016), overruled on other grounds by Aqua Prods., Inc.v.
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`Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).
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`B. Level of Ordinary Skill in the Art
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`In determining whether an invention would have been obviousat the
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`time it was made, weconsiderthe level of ordinary skill in the pertinent art
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`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
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`resolving the level of ordinary skill in the art lies in the necessity of
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`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
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`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`
`skill in the art” is a hypothetical construct, from whose vantage point
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`obviousness is assessed. Jn re Rouffet, 149 F.3d 1350, 1357 (Fed.Cir.
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`1998). “This legal construct is akin to the ‘reasonable person’ used as a
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`reference in negligence determinations” and “also presumesthatall priorart
`references in the field of the invention are available to this hypothetical
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`skilled artisan.” Jd. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
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`1993)).
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`Here, Petitioner asserts a certain education and work experience of a
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`person commensurate with the level or ordinary skill in the art. Pet. 10-11
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`(stating that the proffered level or ordinary skill in the art comes from a
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`finding in a related, co-pending ITC investigation). Patent Owner does not
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`address this issue.
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`IPR2020-00515
`Patent 9,024,790 B2
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`For purposes of this Decision, we adopt the level of ordinary skill in
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`the art that Petitioner proffers, except that we delete the qualifier “at least” to
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`eliminate vaguenessas to the amountof practical experience. The qualifier
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`expandsthe range indefinitely without an upper bound, and thus precludes a
`meaningful indication of the level of ordinary skill in the art.’
`
`C. Claim Construction
`
`Weapply the same claim construction standard used in the federal
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`courts, in other words, the claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. § 282(b), which is
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`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
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`banc). 37 C.F.R. § 42.100(b) (2020). Under the Phillips standard, the
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`“words of a claim are generally given their ordinary and customary
`meaning,” whichis “the meaning that the term would have to a person of
`ordinary skill in the art in question at the time of the invention,i.e., as of the
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`effective filing date of the patent application.” Phillips, 415 F.3d at
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`1312-13.
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`Petitioner proposes constructions for four terms. See Pet. 15-17.
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`Because no express construction is needed to resolve any dispute in
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`this proceeding, we do not construe any of the claim limitations. See Nidec
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`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017) (noting that “we need only construe terms‘that are in
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`controversy, and only to the extent necessary to resolve the controversy’”
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`7 If Patent Ownerproposesa different level of ordinary skill in the art in its
`Response, the parties are encouraged to address whether there are any
`material differences between the two proposals and what impact,if any, the
`different level has on the obviousnessanalysis.
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`IPR2020-00515
`Patent 9,024,790 B2
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999))).
`
`D. Anticipation by Jahier
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`Petitioner argues Jahier anticipates claims 1, 7, 8, 13, 14, and 19-24
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`of the ’790 patent. Pet 23-39. Based on the current record, we are
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`persuadedthat Petitioner has established a reasonable likelihood of
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`prevailing on its asserted anticipation ground with respect to claims1, 7, 8,
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`13, 14, and 19-24.
`
`1. Overview ofJahier
`
`Jahier is entitled “Method and Apparatus for Operating a Capacitive
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`Tactile Keyboard.” Ex. 1005, code (54). Jahier describes a process by
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`whichthe position of an operator’s finger on the keyboard and the pressure
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`exerted are determined cyclically by measuring capacitance andpressure.
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`Id. at 1:10-13. Jahier determines the differences between measured
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`capacitance values and a reference capacitance. Jd. at 2:39-41. This
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`difference capacitance value is comparedto a low threshold and a high
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`threshold. Jd. at 2:44—46. Based on the comparison, Jahier determines the
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`state of the keyboard. Jd. at 2:41-43. The keyboard states and the
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`transitions between states are depicted in Figure 3, reproduced below.
`
`10
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`IPR2020-00515
`Patent 9,024,790 B2
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`FIG. 3
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`
`
`
`REFERENCE
`
`VALUE. OF
`ASSOCIATED
`PRESSURE
`VALUE OF
`CURRENT
`PRESSURE
`ACQUIRED,
`
`
`
`2
`
`
`END
`SELECTION
`SELECTION
`
`TATE
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`
`
`
`
`SELECTION
`
`CONFIRMED
`STATE
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`Figure 3 illustrates how the selection controller of Jahier operates to
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`determine the state and transition betweenstates. Jd. at 3:61—64; 4:49-50.
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`The states are: NO SELECTION, BEGIN SELECTION, SELECTION
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`CONFIRMED,and END SELECTION./d. at 5:5—8; Fig. 3. Jahier explains
`that a key i becomesa preselected key /—thatis a transition from NO
`SELECTION to BEGIN SELECTIONstate occurs—whenthe capacitive
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`difference (“ECC”) for key i is higher than a given threshold and above the
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`ECCfor any other key.
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`/d. at 5:11-20. Once in the BEGIN SELECTION
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`state, there are three options. Jd. at 5:39-6:22. First, key J may be
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`“confirmed”as the selected key (confirming that the user’s finger is on key
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`J), shownin Figure 3 astransition “c.” Jd. at 5:63-6:4. Second, key J may
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`1]
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`IPR2020-005 15
`Patent 9,024,790 B2
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`no longerbe a preselected keyif its ECC falls below a low threshold, a
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`transition that is shownin Figure 3 as transition “b.” Jd. at 39-58. Sucha
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`transition may occur, for example, if the key was inadvertently touched. Jd.
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`Third is transition “2,” in which another key altogether may become the
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`preselected key. Jd. at 6:5-23. Jahier explains that if the ECC for key J is
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`between a low anda high threshold, key J remains the preselected key. Jd. at
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`6:5~12. But if the ECC of another key (read here a new key i) is equal to or
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`higher than the high threshold, and the ECC ofpreselected key J stays below
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`the high threshold, the new key i will become the preselected key. Jd. at
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`6:13-27 (stating also that the controller remains in the BEGIN SELECTION
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`with the new key i as the preselected key).
`2. Analysis of Claims 1, 7, and 13*
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`Petitioner argues that Jahier discloses‘[a]n apparatus” as recited in
`
`claim 1. Pet. 23. Specifically, Petitioner argues that Jahier discloses “[a]
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`method and apparatus for determining a valid selection of a capacitance
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`'
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`tactile keyboard.” Jd. (quoting Ex. 1005, code (57)).
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`Petitioner also argues that Jahier discloses a “plurality of keys” as
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`recited in claim 1. Pet. 23-24. Specifically, Petitioner argues that Jahier
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`discloses capacitive keys which are “a touchable (e.g. by a user’s finger)
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`portion of a mechanicalto electrical transducing device(i.e. a device that
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`converts a mechanical energy in the form of a touch to electrical energy in
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`the form of a capacitive measurement).” Jd. (citing Ex, 1005, 2:52-44,
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`7:43-52). Petitioner further argues a person having ordinary skill in the art
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`8 Because Petitioner relies on substantially the same argumentsfor claims1,
`7, and 13, we will only address claim 1. See Pet. 36-39. Although weonly
`address claim 1, our analysis applies equally to claims 7 and 13.
`
`12
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`would appreciate that these capacitive keys are non-bistable. Jd. at 24
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`(citing 2:39-3:4, 4:58-61, 5:10-6:23, 7:6-24,Figs. 1, 3, 4).
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`Petitioner also argues that Jahier discloses “control logic operatively
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`coupled to the plurality of keys” as recited in claim 1. Pet. 24-31.
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`Specifically, Petitioner directs us to selection controller 2 which implements
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`the state machine shown in Jahier’s Figure 3. Jd. at 24—25 (citing Ex. 1005,
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`3:45—-47, 3:65—-4:3, Fig. 3). According to Petitioner, if the limitation is not
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`construed as a means-plus-function limitation, no further analysis is
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`required. Jd. at 26.
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`Petitioner further argues that if the limitation is a means-plus-function
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`limitation, then Jahier also discloses the structure shown in Figure 5A or
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`Figures 5A and 5B ofthe ’790 patent. Pet. 16, 26; see also Ex. 1025, 18-19
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`(claim construction order). Petitioner argues that Jahier discloses
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`correspondingstructure:
`
`(1) logic for comparing the sensor values to a threshold, as shown
`in blocks 24, 26 of Figure 5a, (2) logic for comparing sensor
`values, including a bias, as shownin blocks 29, 30 of Figure 5a,
`and (3) a counter that increments to a terminal count (TC) as
`shownin blocks 28, 31, 32, 33 of Figure 5a. Ex-1001, Fig. 5a.
`Jahier discloses a microcontroller (element 2 in Figure 1, as
`described above) and each of these additional features, as
`described in detail below.
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`Pet. 27 (citing Ex. 1002 J] 75-78); see also id. at 27-28 (discussing logic
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`for comparing the sensorvalues to a threshold (citing Ex. 1005, 2:39-3:4,
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`4:55-58, 5:10-6:23, 7:6—24, Figs. 1, 3, 4; Ex. 1002 ¥ 79)), 28-29 (discussing
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`logic for comparing sensorvalues, including a bias (citing Ex. 1005, 2:39—
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`13
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`IPR2020-00515
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`3:4, 5:10-6:23, 7:6-24, Figs. 1, 3, 4; Ex. 1002 §§ 80-81°)), 29-31
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`(discussing a counter that increments to a terminal count(citing Ex. 1005,
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`2:39-3:4 3:22-33, 5:10-6:23, 6:50—60, 7:6—24, Figs. 1, 3, 4; Ex. 1002
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`{1 82-86_).
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`Petitioner also argues that Jahier discloses “control logic...
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`configured to analyze, to determinea first active key, respective first signal
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`values of the plurality of keys”as recited in claim 1. Pet. 31-33.
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`Specifically, Petitioner argues that Jahier discloses comparing ECC values
`of each ofthe plurality of keys and then selecting the one with the largest
`value—so long asit is above a Low Threshold—astheactive key. Jd.
`
`(citing Ex. 1005, 2:39-3:4, 4:55-6:23, 7:6—24, Figs. 1, 3, and 4).
`
`Petitioner also argues that Jahier discloses “control logic...
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`configured to .. . assign, based at least on the respective first sensor values
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`of the plurality keys, a first key as the first active key” as recited in claim 1.
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`Pet. 33. Specifically, Petitioner argues, “Jahier discloses assigningthefirst
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`key as thefirst active key.” Jd. (citing Ex. 1002 § 88).
`
`Petitioner also argues that Jahier discloses “control logic...
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`configured to .. . analyze, to determine a secondactive key, respective
`
`secondsignal values ofthe plurality of keys, the analysis, to determine the
`
`second active key, of the respective second signal values of the plurality of
`keys being biased in favor ofthe first key” as recited in claim 1. Pet. 33-36.
`Specifically, Petitioner argues that because the selection of a second key will
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`only happen when the ECC ofthe second keyis greater than or equal to the
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`High Threshold and the ECCofthe first key is less than the High Threshold,
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`9° Petitioneralso refers to its arguments directedto the “analyze,to
`determine a secondactive key”limitation, discussed infra. Pet. 29.
`
`14
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`“the selection of the second active key is biased in favorof thefirst key
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`because the second key’s signal must not simply exceedthat ofthefirst, but
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`must exceed it by more than the amount by whichthe first key is below the
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`High Threshold.” Jd. at 33-35 (citing 2:39-3:4, 5:10-6:23, 7:6—24,Figs. 1,
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`3, 4). Petitioner further argues that “because the first preselected key
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`remainspreselected if another key’s signal exceeds it but does not exceed
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`the high threshold, butthe first preselected key can be replaced by another
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`key if that other key’s signal exceedsthe first by more than the amount by
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`whichthe first preselected key is below the high threshold,” the analysis is
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`non-locking.
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`/d. at 35-36 (citing Ex. 1002
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`90).
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`After reviewing Petitioner’s arguments and information, including the
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`Bederson Declaration (Ex. 1002), which Patent Owner does not addressat
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`this stage, we are persuadedthat Petitioner sufficiently demonstrates, for
`purposesofthis Decision, that Jahier discloses each claim limitation recited
`in claim 1 and that each of the elements are arranged as in the claim.!°
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`Accordingly, Petitioner has demonstrated, on this record, a reasonable
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`likelihood of prevailing on its assertion that claim 1 along with claims 7 and
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`13—whichrely on substantially the same arguments—are anticipated by
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`Jahier.
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`3. Claims 8, 14, and 19-24
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`BecausePetitioner has demonstrated a reasonable likelihood of
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`success in proving that at least one claim of the ’790 patent is unpatentable,
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`'0 Because Petitioner treated the preamble asastructural limitation and
`sufficiently demonstrated that Jahier discloses the controllogic if it is a
`means-plus-function limitation, we do not decide whether the preambleis
`entitled to patentable weightor if claim 1 recites a means-plus-function
`limitation.
`
`15
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`IPR2020-00515
`Patent 9,024,790 B2
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`weinstitute on all grounds andall claims raised in the Petition. See PGS
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`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating
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`that a decision whetherto institute an inter partes review “requires a simple
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`yes-or-noinstitution choice respecting a petition, embracingall challenges
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`includedin the petition”); Patent Trial and Appeal Board Consolidated Trial
`Practice Guide November 2019 (“CPTG”), 5!! (“In institutingatrial, the
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`Board will either (1) institute as to all claims challenged in the petition and
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`on all groundsin the petition, or (2) institute on no claims and deny
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`institution. The Board will not institute on fewer than all claimsorall
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`challengesin a petition.” (citations omitted)). Therefore, at this stage of the
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`proceeding,it is not necessary for us to provide an assessmentof every
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`challenge raised by Petitioner, especially as Patent Ownerhasnot presented
`
`any responsive argument.
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`Nevertheless, we note that Petitioner provides detailed explanations
`
`supported by the testimony of Dr. Bederson, andspecific citations to Jahier
`indicating where in the reference Petitioner argues the additional limitations
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`of claims 8, 14, and 19-24 are disclosed. Pet. 45-51. Accordingly,at this
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`stage of the proceeding, we are persuaded the information presented in the
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`Petition establishes there is a reasonable likelihood that Petitioner would
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`prevail with respect to claims 8, 14, and 19-24.
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`E. Obviousness Grounds
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`As noted above, because Petitioner has demonstrated a reasonable
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`likelihood of success in proving that at least one claim of the 790 patentis
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`unpatentable, weinstitute on all grounds andall claimsraised in the Petition.
`Therefore, at this stage of the proceeding,it is not necessary for us to
`
`Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`16
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`IPR2020-00515
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`provide an assessment of every groundraised by Petitioner, especially as
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`Patent Ownerhas not presented any responsive argument.
`Nevertheless, we note that Petitioner provides detailed explanations
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`supported by the testimony of Dr. Bederson andspecific citations to the
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`relevant references indicating where in the reference Petitioner argues the
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`limitations of claims 1-24 are taught, and whya person ofordinary skill in
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`the art would have combined or modified the teachings of the relevant
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`references. See Pet. 17-67. Accordingly, at this stage of the proceeding, we
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`are persuaded the information presented in the Petition establishes there is a
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`reasonablelikelihood that Petitioner would prevail with respect to claims 1—
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`24 based on the obviousness groundsin the Petition.
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`CONCLUSION
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`Following 35 U.S.C. § 314 we have determined whetherthetotality of
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`the information presentedat this stage showsthere is a reasonable likelihood
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`that Petitioner would prevail with respect to at least one of the claims
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`challenged in the Petition. And because Petitioner has demonstrated a
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`reasonable likelihood of success in proving that at least one claim of the
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`790 patent is unpatentable, we institute on all grounds andall claimsraised
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`in the Petition.
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`Ourfactual findings, conclusions of law, and determinationsat this
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`stage of the proceeding are preliminary, and based on the evidentiary record
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`developed thus far. This is not a final decision as to the patentability of
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`claims for which inter partes reviewis instituted. Our final decision will be
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`based on the record as fully developed duringtrial.
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`17
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`IPR2020-00515
`Patent 9,024,790 B2
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`ORDEREDthat, that an inter partes review ofall challenged claims
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`of the ’790 patent is instituted with respectto all groundsset forth in the
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`Petition; and
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`FURTHER ORDEREDthat pursuant to 35 U.S.C. § 314(a), inter
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`partes review ofthe ’790 patent is hereby instituted commencing on the
`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given oftheinstitution ofa trial.
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`For PETITIONER:
`
`Marc Pensabene
`
`Nicholas Whilt
`
`Brian Cook
`
`O’MELVENY & MYERSLLP
`mpensabene@omm.com
`nwhilt@omm.com
`bcook@omm.com
`
`For PATENT OWNER:
`
`Kent Shum
`Neil A. Rubin
`Russ August & Kabat
`kshum@raklaw.com
`nrubin@raklaw.com
`
`18
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