Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: September 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and MICROSOFT CORPORATION,
`Petitioner,
`v.
`NEODRON, LTD.,
`Patent Owner.
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`QUINN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: September 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and MICROSOFT CORPORATION,
`Petitioner,
`v.
`NEODRON, LTD.,
`Patent Owner.
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`QUINN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`I.
`INTRODUCTION
`Apple Inc. and Microsoft Corporation (collectively “Petitioner”), filed
`a Petition requesting inter partes review of claims 1–40 of U.S. Patent No.
`7,821,425 B2 (Ex. 1001, “the ’425 patent”). Paper 1 (“Pet.”). Neodron Ltd.
`(“Patent Owner”), timely filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s
`Preliminary Response (Paper 8, “Reply”), and Patent Owner filed a
`Preliminary Response Sur-Reply (Paper 9, “Sur-Reply”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for the reasons discussed below, we grant the
`Petition and institute inter partes review as requested.
`
`A. Related Matters
`The parties indicates that the ’425 patent has been asserted in the
`following proceedings: Neodron Ltd. v. Amazon.com, Inc., No. 6-20-cv-
`00115-ADA (W. D. Tex.); Neodron Ltd. v. Apple Inc., No. 6-20-cv-00116-
`ADA (W.D. Tex.); Neodron Ltd. v. AsusTek Computer Inc., No. 6-20-cv-
`00117-ADA (W.D. Tex.); Neodron Ltd. v. LG Electronics, Inc., No. 6-20-
`cv-00118-ADA (W.D. Tex.); Neodron Ltd. v. Microsoft Corporation, No. 6-
`20-cv-00119-ADA (W. D. Tex.); and Neodron Ltd. v. Samsung Electronics
`Co., Ltd. et al, No. 6-20-cv-00121-ADA (W. D. Tex.). Pet. 67; Paper 5, 2.
`Petitioner additionally indicates that the ’425 patent has been asserted in
`Capacitive Touch-Controlled Mobile Devices, Computer, and Components
`Thereof, No. 337-TA-1193 (ITC). Pet. 67. Patent Owner also indicates that
`the following district court matters may also be affected by a decision in this
`proceeding: Neodron Ltd. v. Motorola Mobility LLC, No. 5-20-cv-01179-
`
`2
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`IPR2020-00778
`Patent 7,821,425 B2
`SVK (N. D. Ca.); and Neodron Ltd. v. Sony Corporation, No. 6-20-cv-
`00122-ADA (W. D. Tex). Paper 5, 2–3.
`
`B. The ’425 Patent1
`The ’425 patent relates to keyboards, keypads, and other data entry
`devices having capacitive keys. Ex. 1001, code (57). The ’425 patent
`discloses that small keyboards suffer from a keying ambiguity problem,
`where, for example, a user’s finger is likely to overlap from a desired key
`onto adjacent keys. Id. at 1:31–35. To address this problem, the ’425 patent
`provides an iterative method of removing keying ambiguity. Id. at 2:3–4.
`The method involves measuring a detected signal strength associated with
`each key in an array, comparing the measured signal strengths to find a
`maximum, determining that the key having the maximum signal strength is
`the unique user-selected first key, and maintaining that selection (i.e.,
`“winning key”) until either the first key’s signal strength drops below a
`threshold level or a second key’s signal strength exceeds the first key’s
`signal strength. Id. at 2:4–11.
`The ’425 patent further discloses that, when any key is selected, its
`signal strength value may be enhanced relative to all the other keys so as to
`deselect all other keys. Id. at 2:11–13. For instance, the ’425 patent
`explains that the “winning” key is given a slight advantage in subsequent
`repetitions of the decision process. Id. at 2:5864. For instance, the first
`
`
`1 The ’425 patent is a continuation-in-part application claiming priority via a
`chain of several application to U.S. Provisional Application No. 60/395,368,
`filed July 12, 2002. Ex. 1001, (60), (63). Petitioner alleges the ’425 patent
`is not entitled to its claimed priority date. Pet. 5–7. We find, however, that
`it is not necessary for us to decide this issue because the asserted prior art
`appear to have priority dates earlier than July 12, 2002.
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`key to “win” remains selected even when the maximal strength has shifted to
`a new key, if the first key has enough signal strength in excess of its
`associated threshold value. Id. at 5:2540. That threshold value is further
`described as the “biasing or skewing” of the key selection method in favor of
`an already selected key. Id. at 5:3850. According to the ’425 patent, the
`“bias” may be provided in many ways in subsequent key selection decisions,
`such as “adding an incremental value to the signal associated with the
`selected key,” and:
`multiplying the signal strength of the selected key by a value
`greater than one in subsequent selections; 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.
`Id. at 5:43–50. The biasing is further explained in connection with Figure
`5A, reproduced below.
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`Patent 7,821,425 B2
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`Figure 5A shows a flow chart of a method carried out when a Key 1
`goes from inactive to active. Id. at 4:1517. For example, when the signal
`acquired from Key 1 exceeds a certain threshold value at step 26, the
`acquired signal is compared against other acquired signals. Id. at 7:49–55.
`In determining whether Key 1 “wins” over other active key(s), the method
`introduces a non-dithering bias value “k,” which is added to the active key at
`step 30. Id. at 7:5558, 8:47. If the signal value of Key 1 exceeds the
`signal value of the active key by at least the bias “k” value, Key 1 will
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`Patent 7,821,425 B2
`become the active key when a counter is reached, and all other keys become
`inactive. Id. at 8:1417.
`
`C. Illustrative Claims
`Of the challenged claims, claims 1, 7, 16, 25, and 33 are independent.
`Each of challenged claims 2–6, 8–15, 17–24, 26–32, and 34–40 depends
`from claim 1, 7, 16, 25, or 33.
`Claims 1 and 7 are illustrative:
`1. An apparatus for supplying a unique key output from an
`operating key board comprising a plurality of keys when a user
`is proximate two or more keys thereof, the apparatus comprising:
`a respective sensor uniquely associated with each of the
`two or more keys, each of the sensors connected to supply a
`respective output signal representative of the user's coupling
`thereto to a controller;
`the controller operable to iteratively compare all of the two
`or more output signals supplied thereto to respective threshold
`values and to each other, to initially select as the key for
`supplying the unique key output that one of the two or more keys
`having a maximum value of all the signal outputs that exceed
`their respective thresholds, and, on subsequent iterations, to bias
`the iterated comparison in favor of the previously selected key.
`
`
`
`7. A method of providing a unique output representative of a key
`uniquely selected by a user from a plurality of keys in which each
`key is operable to provide a respective detected signal having a
`respective signal strength responsive to a presence of at least a
`portion of the user, the method comprising the sequentially
`executed steps of:
`(a) measuring the respective detected signal strength
`associated with each key in the plurality thereof;
`(b) comparing each of the measured signal strengths with
`a respective selected threshold value to form a subset of
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`Patent 7,821,425 B2
`keys having associated signals greater than the respective
`threshold values;
`(c) determining that no key has been selected if the subset
`is empty, and otherwise determining that the key that is the
`subset and that is associated with a maximum signal
`strength is the current uniquely selected key;
`(d) subsequent to determining a uniquely selected key,
`modifying step (c) to bias subsequent determinations in
`favor of the uniquely selected key and then repeating steps
`(a), (b) and the modified step (c).
`
`
`Ex. 1001, 8:52–67, 9:1837.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`The asserted grounds in this proceeding involve the following prior art
`references:
`
`a) Jahier: US 5,525,980, issued June 11, 1996, filed as Exhibit 1007;
`
`b) QT60161: Quantum Technologies Research Group QT60161,
`datasheet, (2002), filed as Exhibit 1008;
`
`c) Houston: US 6,696,985, issued Feb. 24, 2004, filed as Exhibit
`1009;
`
`d) Senk: US 5,760,715, issued June 2, 1998, filed as Exhibit 1010;
`and
`
`e) West: US 5,831,597, issued Nov. 3, 1998, filed as Exhibit 1011.
`
`Petitioner asserts the following grounds of unpatentability (Pet. 8):
`Statutory
`Basis
`§ 103(a)
`
`Claims Challenged
`12, 510, 1419,
`24–25, 29–37, 39–40
`
`Reference(s)
`
`Jahier
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`Claims Challenged
`5, 14, 23, 26–28, 30,
`36
`4, 12, 13, 21, 22
`4, 12, 13, 21, 22
`3, 11, 20, 38
`
`Statutory
`Basis
`§ 103(a)
`
`Reference(s)
`
`Jahier, QT60161
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Jahier, Houston
`Jahier, Senk
`Jahier, West
`
`Petitioner also relies on a Declaration of Dr. Tony Givaris, filed as
`Exhibit 1003 (“Givargis Declaration”).
`
`II. DISCUSSION
`
`A. Claim Construction
`There are no claim terms in dispute or that need construction for
`purposes of this Decision.
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. 1, 17 (1966). “The
`importance of resolving the level of ordinary skill in the art lies in the
`necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg.
`Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of
`ordinary skill in the art” is a hypothetical construct, from whose vantage
`point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
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`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1993)).
`Petitioner proffers that a person having ordinary skill in the art “would
`have had at least a bachelor’s degree in electrical engineering, computer
`engineering, computer science, or a related field, and at least two years of
`experience in the research, design, development and/or testing of touch
`sensors, human-machine interaction and interfaces, and/or graphical user
`interface, and related firmware and software, or the equivalent, with
`additional education substituting for experience and vice versa.” Pet. 4–5
`(citing Givargis Decl. ¶ 31–33). At this juncture, we do not find it necessary
`to define the level of skill with specificity save to note that the level of
`ordinary skill is evidenced by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of
`specific findings on the level of skill in the art does not give rise to
`reversible error where the prior art itself reflects an appropriate level and a
`need for testimony is not shown).
`
`C. Obviousness over Jahier
`Petitioner asserts that claims 1–2, 5–10, 14–19, 24–25, 29–37, and
`39–40 would have been obvious over Jahier. Pet. 11–42.
`
`1. Overview of Jahier (Ex. 1007)
`Jahier is entitled “Method and Apparatus for Operating a Capacitive
`Tactile Keyboard.” Ex. 1005, code [54]. Jahier describes a process by
`which the position of an operator’s finger on the keyboard and the pressure
`exerted are determined cyclically by measuring capacitance and pressure.
`Id. at 1:1013. Jahier determines the differences between measured
`capacitance values and a reference capacitance. Id. at 2:3941. This
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`Patent 7,821,425 B2
`difference capacitance value is compared to a low threshold and a high
`threshold. Id. at 2:4446. Based on the comparison, Jahier determines the
`state of the keyboard. Id. at 2:4143. The keyboard states and the
`transitions between states are depicted in Figure 3, reproduced below.
`
`
`Figure 3 illustrates how the selection controller of Jahier operates to
`determine the state and transition between states. Id. at 3:6164, 4:4950.
`The states are: NO SELECTION, BEGIN SELECTION, SELECTION
`CONFIRMED, and END SELECTION. Id. at 5:58; Fig. 3. Jahier explains
`that a key i becomes a preselected key I—that is a transition from NO
`SELECTION to BEGIN SELECTION state occurs—when the capacitive
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`difference (“ECC”) for key i is higher than a given threshold and above the
`ECC for any other key. Id. at 5:1120. Once in the BEGIN SELECTION
`state, there are three options. Id. at 5:396:22. First, key I may be
`“confirmed” as the selected key (confirming that the user’s finger is on key
`I), shown in Figure 3 as transition “c.” Id. at 5:636:4. Second, key I may
`no longer be a preselected key if its ECC falls below a low threshold, a
`transition that is shown in Figure 3 as transition “b.” Id. at 5:3958. Such a
`transition may occur, for example, if the key was inadvertently touched. Id.
`Third, and most notably for purposes of this Decision, is transition “2,” in
`which another key altogether may become the preselected key. Id. at
`6:523. Jahier explains that if the ECC for key I is between a low and a high
`threshold, key I remains the preselected key. Id. at 6:512. But if the ECC
`of another key (read here a new key i) is equal to or higher than the high
`threshold, and the ECC of preselected key I stays below the high threshold,
`the new key i will become the preselected key. Id. at 6:1327 (stating also
`that the controller remains in the BEGIN SELECTION with the new key i as
`the preselected key).
`
`2. Reasonable Likelihood Determination
`After considering Petitioner’s contentions and Patent Owner’s
`arguments in opposition, we are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing on showing that claims 7–10, 14–19,
`24–25, 29–37, and 39–40 would have been obvious over Jahier.
`
`Independent Claim 1
`i.
`Claim 1 recites a controller operable to “iteratively compare all of the
`two or more output signals supplied thereto to respective threshold values
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`Patent 7,821,425 B2
`and to each other.” Ex. 1001, 8:5659. This involves “initially select[ing]
`as the key for supplying the unique key output that one of the two or more
`keys having a maximum value of all the signal outputs that exceed their
`respective values.” Id. at 8:62–65 (the “first iterative comparison”
`limitation). Claim 1 further requires that, on “subsequent iterations,” the
`controller “bias the iterated comparison in favor of the previously selected
`key.” Id. at 8:6667 (the “subsequent iterative comparison” limitation).
`Petitioner relies on Jahier as teaching the first iterative comparison because
`Jahier’s controller compares the capacitive difference value for each key
`(“ECC(i)”), to both (1) a low threshold and (2) a high threshold, and that the
`controller preselects the “key displaying the greatest difference.” Pet. 1819
`(citing Ex. 1007, 5:1120). We agree that because Jahier selects the key
`displaying the greatest difference, Jahier apparently has compared the values
`of the ECC(i) (for each key) to both thresholds, and then has compared the
`difference of those values. That is to say, Jahier appears to compare, albeit
`indirectly, the output signals to respective threshold values and to each other.
`For the “subsequent iterative comparison” limitation, Petitioner argues
`that “a second key may displace preselected key I only if its capacitance
`difference value ECC(i) exceeds both preselected key I’s ECC(i) and the
`High Threshold.” Id. at 19 (citing Ex. 1007, 6:1328). Petitioner proffers
`an annotated figure, reproduced below, showing Jahier’s operation.
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`The figure above shows a Low Threshold (in green) and a High
`Threshold (in red) with the signal for the Preselected Key I falling between
`the Low and High Thresholds and with the signal for the Second Key
`exceeding the High Threshold. Pet. 20. According to Petitioner, the second
`key’s ECC(i) signal exceeds the preselected key I by what is labeled a “bias
`amount” (shown in blue). Id. Jahier thus would select the Second Key as
`the new preselected key as the High Threshold is exceeded. Id. The
`language of claim 1, however, refers to a further comparison that Jahier does
`not appear to make. Claim 1’s “subsequent iterative comparison” requires
`biasing the “iterated comparison.” Ex. 1001, 8:6667. The iterated
`comparison requires comparing the output signals to respective threshold
`values “and to each other.” Id. at 8:6062. Jahier’s alleged “subsequent
`iterative comparison,” however, does not appear to compare the output
`signals as recited. In other words, we do not see any argument by Petitioner,
`nor do we understand Jahier to teach, that the ECC of the second key is
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`compared with the ECC of the preselected key, or to any other ECC for that
`matter, when performing its biasing technique.
`At this juncture in the proceeding, therefore, we are guided by the
`plain meaning of the claim language to determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on its assertion that
`Jahier teaches the “subsequent iterative comparison” limitation of claim 1.
`To the extent either party contends that the plain language of the claim
`supports an interpretation of the “subsequent iterative comparison” that does
`not require a comparison between output signals, we request briefing on this
`as an issue of claim construction.
`
`Independent Claims 7, 16, 25, and 33
`ii.
`Claim 7 recites slightly different language than claim 1. For instance,
`claim 7 requires two comparisons, but the first comparison is of “each of the
`measured signal strengths with a respective selected threshold value.” Id. at
`9:2627. In other words, claim 7 does not require a comparison between
`signal strengths (or outputs) as the plain language of claim 1 requires. The
`second comparison of claim 7, likewise, does not require such a comparison:
`“subsequent to determining a uniquely selected key, modifying step (c) to
`bias subsequent determinations in favor of the uniquely selected key and
`then repeating steps (a), (b), and modified step (c).” Id. at 9:3437. Claim
`16 similarly recites a first comparison that involves only a threshold
`comparison (id. at 10:611) and a second comparison that requires a bias “in
`favor of the initial user-selected key,” without expressly requiring a
`comparison between signal values (id. at 10:2124 (reciting a comparison of
`the “values retained for further consideration at the second instant to select
`the user-selected key at the second instant”). Claim 25 is even broader,
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`requiring only a controller operable “to bias a determination of a selected
`key as a function of a previously selected key.” Id. at 10:5759. And claim
`33 tracks language similar to the controller operation recited in claim 25:
`“bias a determination of an active key as a function of a current active key.”
`Id. at 11:1618.
`We agree that Petitioner has demonstrated that Jahier’s threshold
`comparisons described above with respect to claim 1 appear to teach the
`comparison limitations described above for independent claims 7, 16, 25,
`and 33. Pet. 28 (relying for claim 7 on the analysis provided for claim 1),
`3335, 39. Patent Owner’s arguments to the contrary are not persuasive on
`the present record. PO Resp. 1018. First, Patent Owner’s argument that
`Jahier only compares to thresholds does not take into account that the plain
`meaning of claims 7, 16, 25, and 33 fairly reads on a threshold comparison.
`Second, Patent Owner’s argument that Petitioner mischaracterizes Jahier is
`rooted in an unpersuasive argument that the recited “bias” cannot be a
`threshold comparison. The implied argument is that the meaning of “bias”
`or “biasing” somehow conveys the distinction. But Patent Owner has not
`presented any claim construction analysis supporting such an interpretation
`and we fail see any support in the Specification to give credit to Patent
`Owner’s contention. Lastly, Patent Owner relies on a previous Decision on
`Institution of the Board that involved the Jahier reference in connection with
`a patent related to the ’435 patent. Id. at 1718. That argument is
`unpersuasive because that Decision on Institution turned on claim language
`that is not at issue here: a “select amount.” In contrast, the claims here do
`not require biasing by any particular amount.
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`Consequently, at this juncture, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`independent claims 7, 16, 25, and 33 are unpatentable as obvious over
`Jahier.
`
`iii. Dependent claims
`Petitioner has provided a mapping of the further limitations recited in
`dependent claims 2, 56, 8–10, 1415, 17–19, 24, 29–32, 34–37, and 39–40
`to disclosures in the cited reference. Pet. 23–26, 28–31, 34–38, 40–42.
`Patent Owner does not argue these claims in the Preliminary Response.
`Having reviewed the information presented in the Petition we
`determine that, for claims 8–10, 1415, 17–19, 24, 29–32, 34–37, and 39–
`40, we determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing in its challenge of unpatentability.
`As to claims 2, 5, and 6, however, because they depend from claim 1,
`we determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing on the obviousness challenged based on Jahier.
`
`D. Remaining Obviousness Grounds
`Petitioner asserts the following: claims 5, 14, 23, 26–28, 30, and 36
`would have been obvious over the combination of Jahier and QT60161;
`claims 4, 12, 13, 21, and 22 would have been obvious over the combination
`of Jahier and Houston; claims 4, 12, 13, 21, and 22 would have been obvious
`over the combination of Jahier and Senk; and claims 3, 11, 20, and 38 would
`have been obvious over the combination of Jahier and West. Pet. 42–66.
`Patent Owner does not argue these claims in the Preliminary Response.
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`Having reviewed the information presented in the Petition we
`determine that Petitioner, for claims 12–14, 20–23, 26–28, 30, 36, and 38,
`has demonstrated a reasonable likelihood of prevailing in its challenge of
`unpatentability. As to claims 3–5, because they depend from claim 1, we
`determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing in its challenge of unpatentability.
`
`E. Discretion to Deny Under 35 U.S.C. § 314(a)
`Patent Owner contends the Board should exercise its discretion under
`35 U.S.C. § 314(a) and deny institution in light of the advanced stage of the
`parallel International Trade Commission (“ITC”) proceeding involving the
`’425 patent. Prelim. Resp. 19–20, 31; Sur-Reply 1. Petitioner contends that
`the Board has never denied institution in view of a parallel ITC proceeding,
`and should not do so in the present proceeding. Reply 1. In assessing
`whether to exercise such discretion, the Board weighs the following factors:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). Recognizing that “there is some overlap
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`among these factors” and that “[s]ome facts may be relevant to more than
`one factor,” the Board “takes a holistic view of whether efficiency and
`integrity of the system are best served by denying or instituting review.” Id.
`(citation omitted). We note Petitioner’s arguments attempting to carve out
`ITC investigations from the exercise of authority to deny institution. Reply
`13. However, Fintiv does not support such an argument, and, therefore, we
`are not persuaded by it. See Fintiv, 8 (stating that “even though the Office
`and the district court would not be bound by the ITC’s decision, an earlier
`ITC trial date may favor exercising authority to deny institution . . . if the
`ITC is going to decide the same or substantially the similar issues to those
`presented in the petition.”).
`Although we have considered Patent Owner’s argument in light of the
`Fintiv factors, we decline to exercise our discretion to deny the Petition.
`Related district court litigation involving the ’425 patent has been stayed,
`and Patent Owner instead focuses on the ITC Investigation, which the
`parties agree is unlikely to be stayed. See Reply 4 (Petitioner
`acknowledging that “it is unlikely the ITC investigation will be stayed”); PO
`Resp. 23 (Patent Owner asserting that “it is extremely unlikely that an ITC
`case will be stayed pending IPR”).
`But notwithstanding Patent Owner’s assertion, the record evidences
`that the ITC Investigation is only in a limited state of advancement.
`Notably, for example, in addressing the overlap between issues raised in the
`Petition and in the ITC Investigation, Patent Owner’s Preliminary Response
`largely relies on speculation based on comparison with how issues have
`developed in a related but different ITC investigation, namely In the Matter
`of Certain Touch-Controlled Mobile Devices, Computers, and Components
`Thereof, No. 337-TA-1162 (ITC). Based on development in that different
`
`18
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`proceeding, Patent Owner speculates that Petitioner is “likely to present the
`same prior art and invalidity theories.” Prelim. Resp. 28. If the ITC
`Investigation were in a more advanced state, we expect Patent Owner would
`have been able to identify overlapping issues at the time it filed its
`Preliminary Response without resorting to such speculation.
`That the ITC Investigation is not significantly advanced is also
`evident from the schedule provided by Patent Owner as Exhibit 2001. At
`this time, there has been no claim-construction hearing in the ITC
`Investigation, and an evidentiary hearing is not scheduled before February
`16, 2021. Ex. 2001, 1–3. There has thus been limited investment in the ITC
`Investigation by the Commission or by the parties. Although Patent Owner
`emphasizes that an Initial Determination by the ITC is expected by June 18,
`2021, the target date for completion of the ITC investigation is not until
`October 20, 2021, later than the deadline for issuing our Final Written
`Decision in this proceeding. These considerations impact Fintiv factors (2)
`and (3), which we find weigh against exercising our discretion to deny the
`Petition.
`In addition, although Patent Owner asserts that “the same claims and
`claim construction standard are at issue in both proceedings,” Petitioner
`observes that the ITC will not consider the validity of challenged claims 13
`and 14. Prelim. Resp. 27; Reply 6 (“Thus, unless the Board institutes this
`proceeding and considers the merits of claims 124, when the district court
`lifts its stay, the district court will have to independently, and without
`guidance from the Board or the ITC, consider these issues.”). This
`consideration impacts Fintiv factor (4), which we also find weighs against
`exercising our discretion to deny the Petition.
`
`19
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`The combination of factors (2)–(4), together with the strength of
`Petitioner’s position, as implicated by Fintiv factor (6), outweigh the
`remaining factors, such as the commonality of parties and the likelihood that
`no stay will be entered in the ITC Investigation. Accordingly, we conclude
`that efficiency and integrity of the system are best served by instituting
`review.
`
`Statutory Basis
`
`Reference(s)
`
`III. CONCLUSION
`As explained above, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing on its challenge of claims 740 as
`unpatentable under 35 U.S.C. § 103(a). Accordingly, we institute review on
`all challenged claims and grounds as asserted in the Petition. See SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); AC Techs. S.A. v.
`Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board
`institutes an IPR, it must . . . address all grounds of unpatentability raised by
`the petitioner.”); U.S. Patent and Trademark Office, Guidance on the impact
`of SAS on AIA trial proceedings (Apr. 26, 2018),
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial (“SAS Guidance”).
`Accordingly, we institute trial on all challenged grounds and all
`claims as asserted (listed below).
`Claims
`Challenged
`12, 510, 1419,
`24–25, 29–37, 39–
`40
`5, 14, 23, 26–28,
`30, 36
`
`Jahier, QT60161
`
`§ 103(a)
`
`Jahier
`
`§ 103(a)
`
`20
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`Claims
`Challenged
`
`Statutory Basis
`
`Reference(s)
`
`4, 12, 13, 21, 22
`
`§ 103(a)
`
`Jahier, Houston
`
`4, 12, 13, 21, 22
`
`§ 103(a)
`
`Jahier, Senk
`
`3, 11, 20, 38
`
`§ 103(a)
`
`Jahier, West
`
`
`Our determination in this Decision is not a final determination on the
`patentability of any challenged claims and, thus, leaves undecided any
`factual issues necessary to determine whether sufficient evidence supports
`Petitioner’s contentions by a preponderance of the evidence in the final
`written decision. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068
`(Fed. Cir. 2016) (noting that “there is a significant difference between a
`petitioner’s burden to establish a ‘reasonable likelihood of success’ at
`institution, and actually proving invalidity by a preponderance of the
`evidence at trial”) (quoting 35 U.S.C. § 314(a) and comparing § 316(e)).
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a) the Petition is granted;
`
`and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’425 patent is hereby instituted with trial commencing
`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of review.
`
`21
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`FOR PETITIONER:
`
`Adam P. Seitz – Lead Counsel
`Paul R. Hart – Back-Up Counsel
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`FOR PATENT OWNER:
`
`Kent Shum – Lead Counsel
`Neil A. Rubin – Back-Up Counsel
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`22
`
`
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