Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 11
`Date: December 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC. and DELL PRODUCTS LP,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-01027
`Patent 9,372,580 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 11
`Date: December 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC. and DELL PRODUCTS LP,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-01027
`Patent 9,372,580 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`IPR2020-01027
`Patent 9,372,580 B2
`
`
`
`
`INTRODUCTION
`
`Dell Inc. and Dell Products LP (“Dell” collectively) filed a Petition
`(Paper 2, “Pet.”) under 35 U.S.C. §§ 311–319 for inter partes review of
`claims 1–12 of U.S. Patent No. 9,372,580 B2 (Ex. 1001, “the ’580 patent”).
`Dell also filed a Motion for Joinder (Paper 3, “Mot.”) with Samsung
`Electronics Co. v. Neodron Ltd., IPR2020-00865 (the “Samsung IPR”), for
`which we instituted inter partes review. See IPR2020-00865, Paper 9 (PTAB
`Oct. 26, 2020). Neodron Ltd. (“Neodron”) did not file a preliminary
`response or an opposition to the Motion for Joinder.
`We may institute an inter partes review when “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
`Applying that standard to the Petition and supporting evidence of record, we
`institute an inter partes review of all asserted grounds and all challenged
`claims of the ’580 patent, as explained below. We also grant Dell’s Motion
`for Joinder.
`
`
`
`BACKGROUND
`
`A. REAL PARTIES IN INTEREST
`
`Dell identifies Dell Products LP, Dell Inc., Dell Technologies Inc., and
`Raydium Semiconductor Corp. as real parties in interest. Pet. 3. Neodron
`identifies Neodron Ltd. as the real party in interest. See Paper 4, 1.
`
`
`
`
`2
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`IPR2020-01027
`Patent 9,372,580 B2
`
`
`B.
`
`RELATED PROCEEDINGS
`
`In addition to the Samsung IPR, the parties identify the following as
`related matters: Neodron Ltd. v. Amazon.com, Inc., No. 6:19-cv-00317-ADA
`(W.D. Tex. filed May 21, 2019); Neodron Ltd. v. Dell Technologies Inc., No.
`6:19-cv-00318-ADA (W.D. Tex. filed May 21, 2019); Neodron Ltd. v.
`Hewlett Packard Enterprise Co., No., 6:19-cv-00319-ADA (W.D. Tex. filed
`May 21, 2019); Neodron Ltd. v. Lenovo Group Ltd., 6:19-cv-00320-ADA
`(W.D. Tex. filed May 21, 2019); Neodron Ltd. v. Microsoft Corp., No., 6:19-
`cv-00321-ADA (W.D. Tex. filed May 21, 2019); Neodron Ltd. v. Motorola
`Mobility LLC, 6:19-cv-00322-ADA (W.D. Tex. filed May 21, 2019);
`Neodron Ltd. v. Samsung Electronics Co., 6:19-cv-00323-ADA (W.D. Tex.
`filed May 21, 2019); and In re Certain Touch-Controlled Mobile Devices,
`Computers, and Components Thereof, Inv. No. 337-TA-1162 (filed May 21,
`2019) (“related ITC proceeding”). Pet. 3; Paper 4, 2.
`
`C.
`
`THE ’580 PATENT (EX. 1001)
`
`The ’580 patent issued June 21, 2016, from an application filed
`December 21, 2011. Ex. 1001, codes (22), (45). It relates to “enhanced touch
`detection methods.” Id. at code (54). According to the patent, a touch sensor
`can “detect the presence and location of a touch or the proximity of an object
`(such as a user’s finger or a stylus) within a touch-sensitive area . . . overlaid
`on a display screen.” Id. at 1:5–8. An example is a “capacitive touch screen,”
`which measures a change in capacitance when an object touches or comes
`near the surface of the touch screen, and determines the object’s position in
`relation to the touch screen. Id. at 1:21–26.
`
`
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`3
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`IPR2020-01027
`Patent 9,372,580 B2
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`
`Touch screens may be inaccurate when there is “[p]oor coupling
`between a user of a device and the device itself,” such as “when the user is
`touching two or more [sensor] nodes simultaneously,” and the user
`“retransmi[ts a] drive signal from a drive line on which one touch is present
`to a sense line on which another touch is present.” Ex. 1001, 1:27–36. This
`may “result[] in an unexpected amount of drive signal coupled to (and
`measured on) the sense line.” Id. at 1:36–38.
`Figure 1B, reproduced below, illustrates this retransmission effect:
`
`
`Figure 1B shows touch sensor 10 with drive lines X1 and X4 on a first axis,
`and sense lines Y1 and Y5 on a second axis perpendicular to the first axis.
`Ex. 1001, 6:34–36. A touch-sense controller (not shown) sends signals
`sequentially on drive lines X1 and X4 and receives signals on sense lines Y1
`and Y5. Id. at 6:34–36. It uses the timing of those signals to determine the
`coordinates of touches based on the measured changes in mutual
`capacitance. Id. at 6:32–33, 6:36–44; see also id. at 4:3:55–4:8 (describing
`touch sensing using mutual capacitance).
`
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`4
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`IPR2020-01027
`Patent 9,372,580 B2
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`
`A retransmission effect may occur if the user touches the sensor at
`both the X1–Y1 and X4–Y5 intersections. Ex. 1001, 6:44–47. When that
`happens “[a] drive signal sent on line X1 may be transmitted to line Y5
`through the user’s hand.” Id. at 6:50–51. This “result[s] in line Y5 receiving
`more charge as a result of line X1 being driven than would have otherwise
`occurred.” Id. at 6:51–53.
`The inventors presented the techniques disclosed in the ’580 patent as
`a way to prevent such retransmission problems. See id. at 6:67–7:3.
`
`D. CHALLENGED CLAIMS AND GROUNDS
`
`[a]
`
`[b]
`
`Independent claim 1, which exemplifies the other challenged claims,
`is as follows:
`[pre] 1. A method, performed by executing logic embodied by one
`or more computer-readable non-transitory storage media,
`comprising:
`sending a first set of signals to a first set of lines of a touch
`sensor, the first set of lines arranged along a first axis, each
`line of the first set of lines comprising electrodes;
`receiving a second set of signals on a second set of lines of the
`touch sensor in response to sending the first set of signals,
`the second set of lines arranged along a second axis that is
`different than the first axis, each line of the second set of
`lines comprising electrodes, the second set of lines
`capacitively coupled to the first set of lines;
`in response to receiving the second set of signals, measuring
`the second set of signals to determine a second set of
`measured values corresponding to the second set of signals;
`storing the second set of measured values corresponding to the
`second set of signals;
`sending a third set of signals to the first set of lines;
`determining, after sending the third set of signals to the first
`set of lines, a fourth set of signals by measuring the first set
`of lines that received the third set of signals;
`
`[c]
`
`[d]
`
`[e]
`[f]
`
`
`
`
`5
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`IPR2020-01027
`Patent 9,372,580 B2
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`[g]
`
`[h]
`
`in response to measuring the fourth set of signals, determining
`a fourth set of measured values corresponding to the fourth
`set of signals;
`storing the fourth set of measured values corresponding to the
`fourth set of signals;
`determining a fifth set of signals by compensating the second
`set of signals based on the fourth set of signals, wherein
`determining the fifth set of signals comprises adjusting the
`second set of measured values corresponding to the second
`set of signals with the fourth set of measured values
`corresponding to the fourth set of signals; and
`determining whether a touch occurred based on the fifth set of
`signals.
`Ex. 1001, 13:65–14:34 (adding Dell’s reference letters for each limitation).
`As in the Samsung IPR, Dell argues two grounds for inter partes
`review, as summarized in the following table:
`Claims Challenged
`35 U.S.C. §
`References
`1–12
`103(a)1
`Yousefpor,2 Chang3
`1–12
`103(a)
`Yousefpor, Krah4
`Pet. 5.
`The Petition relies on the declaration of Dr. Andrew Wolfe. Ex. 1002;
`see also Ex. 1003 (Dr. Wolfe’s curriculum vitae). This declaration appears to
`be substantially the same as Dr. Wolfe’s declaration in the Samsung IPR. See
`
`[i]
`
`[j]
`
`
`1 Because the filing date of the ’865 patent was before March 16, 2013, the
`applicable version of 35 U.S.C. § 103 is the one that was in force prior to the
`Leahy–Smith America Invents Act. See Pub. L. No. 112-29, sec. 3(n)(1), 125
`Stat. 284, 293 (2011).
`2 Yousefpor, US 2010/0060608 A1, published Mar. 11, 2010 (Ex. 1005,
`“Yousefpor”).
`3 Chang et al., US 8,587,555 B2, issued Nov. 19, 2013 (Ex. 1006, “Chang”).
`4 Krah et al., US 9,746,967 B1, issued Aug. 29, 2017 (Ex. 1007, “Krah”).
`
`6
`
`
`
`
`IPR2020-01027
`Patent 9,372,580 B2
`
`IPR2020-00865, Ex. 1002. Neodron has not submitted a preliminary
`response, so it has not challenged Dr. Wolfe’s testimony at this stage.
`
`
`
`INSTITUTION OF INTER PARTES REVIEW
`
`We instituted inter partes review in the Samsung IPR on all
`challenged claims and all asserted grounds of unpatentability. IPR2020-
`00865, Paper 9. Dell’s Petition challenges the same claims and asserts the
`same grounds of unpatentability as those on which we instituted the
`Samsung IPR, relying on substantially the same testimonial evidence. See
`Mot. 1 (“This Petition and supporting expert declaration are substantively
`identical to the petition and declarations submitted in the Samsung IPR.”).
`Because the issues presented in Dell’s Petition are identical to those in
`the Samsung IPR, we determine for the same reasons that there is a
`reasonable likelihood that Dell would prevail in showing that at least one of
`claims 1–12 is unpatentable under the grounds of the Petition. Therefore, we
`institute inter partes review for the same reasons stated in our Decision on
`Institution in the Samsung IPR. See IPR2020-00865, Paper 9.
`
` MOTION FOR JOINDER
`
`Because we conclude that Dell’s Petition warrants the institution of an
`inter partes review, we next consider whether to join Dell as a party to the
`Samsung IPR. See 35 U.S.C. § 315(c).
`As the moving party, Dell bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to
`join a case, we consider (1) the reasons why joinder is appropriate,
`(2) whether the petition raises any new grounds of unpatentability, (3) any
`impact that joinder would have on the cost and trial schedule for the existing
`
`7
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`IPR2020-01027
`Patent 9,372,580 B2
`
`review, and (4) whether joinder will add to the complexity of briefing or
`discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013); Consolidated Trial Practice guide, 76 (Nov. 2019),
`https://go.usa.gov/xpvPF.
`Dell’s Motion addresses each of these considerations. Mot. 3–6.
`According to Dell, it relies on substantially the same testimonial evidence
`and proposes no new grounds of unpatentability. Id. at 4. Dell contends that
`its joinder “will not introduce any new prior art, experts, or grounds for
`unpatentability into the Samsung IPR,” so the trial schedule will not be
`impacted. Id. at 5. Because Dell has retained the same expert as Samsung,
`Dell argues that there will be no duplicative expert testimony or trial
`testimony. Id. Dell also represents that it has agreed with Samsung that Dell
`“will maintain a secondary role in the proceeding, if joined,” and “will
`assume a primary role only if the Samsung IPR petitioner ceases to
`participate in the IPR.” Id. According to Dell, “[t]his agreement removes any
`potential ‘complication or delay’ caused by joinder, while providing the
`parties an opportunity to address all issues that may arise and avoiding any
`undue burden” on the parties and the Board. Id. at 5–6.
`In light of these considerations, Dell has shown that joinder to the
`Samsung IPR is appropriate in this case. We also agree with Dell that its
`Motion is timely under 37 C.F.R. § 42.122(b). Mot. 3. Therefore, we grant
`Dell’s Motion for Joinder.
`
`
`
`
`8
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`
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`IPR2020-01027
`Patent 9,372,580 B2
`
`
` ORDER
`
`In consideration of the foregoing, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–12 of the ’580 patent is instituted with respect to the
`grounds set forth in the Petition;
`FURTHER ORDERED that Dell’s Motion for Joinder is granted and
`Dell Inc. and Dell Products LP are joined as parties to IPR2020-00865;
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2020-00865 are unchanged and remain the only
`grounds on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order and any of its
`modifications entered in IPR2020-00865 will govern the schedule of the
`joined proceeding;
`FURTHER ORDERED that filings by the Petitioner parties in
`IPR2020-00865 will be consolidated, and that filings by Dell, alone, are not
`permitted without the Board’s prior approval;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2020-00865; and
`
`FURTHER ORDERED that the case caption in IPR2020-00865 will
`be modified in accordance with the attached example to reflect joinder of
`Dell Inc. and Dell Products LP.
`
`
`
`
`9
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`IPR2020-01027
`Patent 9,372,580 B2
`
`For PETITIONER:
`Brandon White
`Craig Tyler
`PERKINS COIE LLP
`white-ptab@perkinscoie.com
`tyler-ptab@perkinscoie.com
`
`
`For PATENT OWNER:
`Kent Shum
`Neil Rubin
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`
`
`
`10
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`IPR2020-01027
`Patent 9,372,580 B2
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`DELL INC., and DELL PRODUCTS LP
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-008651
`Patent 9,372,580 B2
`
`
`
`
`
`
`
`
`
`
`
`
`1 IPR2020-01027 has been joined with this proceeding.
`
`11
`
`
`
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