Trials@uspto.gov
`571-272-7822
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`Paper 20
`Date: September 15, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC, DELL INC., and
`DELL PRODUCTS LP,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00653
`Patent 8,432,173 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
`
`
`
`
`571-272-7822
`
`
`
`
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`
`Paper 20
`Date: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC, DELL INC., and
`DELL PRODUCTS LP,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00653
`Patent 8,432,173 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
`
`
`
`
`
`IPR2020-00653
`Patent 8,432,173 B2
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`
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`
`INTRODUCTION
`
`HP Inc., Lenovo (United States) Inc., Morotola Mobility LLC, Dell
`Inc., and Dell Products LP (collectively, “Petitioner”) filed (1) a Petition for
`inter partes review (Paper 5, “Pet.”) of claims 1–3, 5–12, and 14–19 of U.S.
`Patent No. 8,432,173 B2 (Ex. 1001, “the ’173 patent”); and (2) a Motion for
`Joinder (Paper 6, “Mot.”) with IPR2020-00267 (the “Samsung IPR”), for
`which we instituted an inter partes review. See Samsung Electronics Co. v.
`Neodron Ltd., IPR2020-00267, Paper 7 (PTAB June 8, 2020) (“IPR2020-
`00267 Dec.”). Neodron Ltd. (“Patent Owner”) 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, we institute an inter partes review of all asserted
`grounds and all challenged claims of the ’173 patent, and join Petitioner as a
`party to the Samsung IPR for the reasons explained below. We base our
`decision solely on the preliminary record in this case, and we have not
`considered any arguments or evidence Patent Owner has submitted in the
`Samsung IPR.
`
`
`
`BACKGROUND
`
`A. REAL PARTIES IN INTEREST
`
`The parties identify themselves as real parties in interest. See Pet. 3;
`Paper 8, 1. Petitioner also identifies Lenovo Group Ltd., Dell Inc., Dell
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`Products LP, and Microsoft Corp. as real parties in interest “without
`admitting that those parties are in fact real parties-in-interest.” Pet. 3.
`
`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. HP
`Inc., No. 6:19-cv-00319-ADA (W.D. Tex. filed May 21, 2019); Neodron Ltd.
`v. Lenovo Group Ltd., No. 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, No. 6:19-
`cv-00322-ADA (W.D. Tex. filed May 21, 2019); and Neodron Ltd. v.
`Samsung Electronics Co., Ltd., No. 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. 3–4; Paper 8, 2.
`
`C.
`
`THE ’173 PATENT (EX. 1001)
`
`The ’173 patent relates to “capacitive position sensors for detecting
`the position of an object around a curved path.” Ex. 1001, 1:21–22. The
`sensor can operate in two modes. The first mode is shown in Figure 1,
`reproduced below:
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`Figure 1 shows “part of a control panel 50 having a capacitive sensor 60 and
`a digital readout display 70.” Ex. 1001, 7:38–39. As shown in the sensor’s
`first operating mode, “a user’s finger is used to select a cooking
`temperature.” Id. at 7:61–63. Finger 80 is near a portion of sensing element
`100 corresponding to a temperature of 175 °C, which also appears on
`readout display 70. Id. at 7:63–66.
`Because the sensor resolution is limited, the initial temperature
`selected in the first operating mode may only be an approximation of the
`intended temperature. See Ex. 1001, 7:66–8:8. Therefore, the sensor
`automatically enters a second mode of operation to allow the user to fine-
`tune the selected temperature, as shown below in Figure 2A:
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`Ex. 1001, 8:9–10. Figure 2A depicts capacitive sensor 60 in a second
`operating mode. Id. at 8:10–12. In this mode, “a user is able to increase or
`decrease the temperature selected in the first mode by a pre-determined
`increment” by displacing finger 80 “by a pre-determined threshold angle.”
`Id. at 8:13–17. In this example, the user has rotated finger 80
`counterclockwise, as represented by arrow C, to decrease the temperature
`from 175 °C to 173 °C, with the updated temperature shown on display 70.
`See id. at 8:21–27.
`
`D. CHALLENGED CLAIMS AND GROUNDS
`
`Independent claim 1, which exemplifies the other challenged claims,
`is as follows:
`[pre] 1. A method comprising:
`[a]
`receiving one or more first signals indicating one or more first
`capacitive couplings of an object with a sensing element
`that comprises a sensing path that comprises a length, the
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`[b]
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`[c]
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`[d]
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`first capacitive couplings corresponding to the object
`coming into proximity with the sensing element at a first
`position along the sensing path of the sensing element[;]
`determining based on one or more of the first signals the first
`position of the object along the sensing path;
`setting a parameter to an initial value based on the first
`position of the object along the sensing path, the initial
`value comprising a particular parameter value and being
`associated with a range of parameter values, the range of
`parameter values being associated with the length of the
`sensing path;
`receiving one or more second signals indicating one or more
`second capacitive couplings of the object with the sensing
`element, the second capacitive couplings corresponding to
`a displacement of the object along the sensing path from
`the first position; and
`determining based on one or more of the second signals the
`displacement of the object along the sensing path; and
`adjusting the parameter within the range of parameter values
`based on the displacement of the object along the sensing
`path.
`Ex. 1001, 9:37–62 (adding Petitioner’s reference letters for each limitation).
`Claims 10 and 19 are also independent; claims 2, 3, and 5–9 depend from
`claim 1; and claims 11, 12, and 14–19 depend from claim 10. See id. at
`9:63–12:29.
`
`[e]
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`[f]
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`Petitioner argues three grounds for inter partes review, as summarized
`in the following table:
`References
`35 U.S.C. §
`Claims Challenged
`Trent1
`103
`1, 2, 8–11, 17–19
`Trent, Engholm2
`103
`1–3, 5–12, 14–19
`Bryan,3 Trent, Engholm
`103
`1–3, 5–12, 14–19
`Pet. 6. For Ground 1, Petitioner alleges that claims 1, 2, 8–11, and 17–19 of
`the ’173 patent are unpatentable under 35 U.S.C. § 103 as obvious over
`Trent. Id. For Ground 2, Petitioner alleges that claims 1–3, 5–12, and 14–19
`are unpatentable under § 103 as obvious over Trent in view of Engholm. Id.
`For Ground 3, Petitioner alleges that claims 1–3, 5–12, and 14–19 are
`unpatentable under § 103 as obvious over Bryan in view of Trent and
`Engholm. Id.
`Petitioner relies on a declaration of Dr. Benjamin B. Bederson
`submitted in support of the petition in the Samsung IPR. Ex. 1002; see also
`Ex. 1003 (Dr. Bederson’s curriculum vitae).
`
` ANALYSIS
`
`For the reasons discussed below, we determine there is a reasonable
`likelihood that Petitioner would prevail in showing that at least one of claims
`1–3, 5–12, or 14–19 is unpatentable under the grounds of the Petition. As a
`foundation for addressing those grounds in detail, we first address the level
`
`
`1 Trent Jr., et al., US 2004/0252109 A1, published Dec. 16, 2004 (Ex. 1005,
`“Trent”).
`2 Engholm et al., US 6,229,456 B1, issued May 8, 2001 (Ex. 1006,
`“Engholm”).
`3 Bryan, Jr., et al., US 5,559,301, issued Sept. 24, 1996 (Ex. 1007, “Bryan”).
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`of ordinary skill in the art, and whether we need to construe claim terms for
`our analysis.
`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the pertinent art at the time of the
`invention is one of the factual considerations relevant to obviousness. See
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). It is also relevant to
`how we construe the patent claims. See Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc). To assess the level of ordinary
`skill, we construct a hypothetical “person of ordinary skill in the art,” from
`whose vantage point we assess obviousness and claim interpretation. See In
`re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). This legal construct
`“presumes that all prior art references in the field of the invention are
`available to this hypothetical skilled artisan.” Id. (citing In re Carlson, 983
`F.2d 1032, 1038 (Fed. Cir. 1993)).
`In the related ITC proceeding, the Administrative Law Judge
`considered the parties’ proposed articulations of the level of ordinary skill,
`which were similar, and held that
`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 sensors, human-machine interaction and interfaces,
`and/or graphical user interfaces, and related firmware and
`software, or the equivalent, with additional education
`substituting for experience and vice versa.
`Ex. 1008, 8. Petitioner does not dispute this articulation, and Dr. Bederson
`agrees with it. See Pet. 10, Ex. 1002 ¶ 30.
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`This articulation of the level of ordinary skill is consistent with the
`problems and solutions in the ’173 patent and the prior art of record.
`Therefore, we adopt the ALJ’s formulation for the purpose of this decision.
`To the extent that we may need to further characterize the level of ordinary
`skill at trial, the parties may develop this issue, including by cross-
`examining Dr. Bederson.
`
`B.
`
`CLAIM CONSTRUCTION
`
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). This
`includes “construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. We also
`consider “[a]ny prior claim construction determination concerning a term of
`the claim in a civil action, or a proceeding before the International Trade
`Commission, that is timely made of record” in this proceeding. Id. The
`ordinary and customary meaning of a claim term “is its meaning to the
`ordinary artisan after reading the entire patent,” and “as of the effective
`filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
`1313, 1321 (Fed. Cir. 2005) (en banc).
`Although the ALJ construed a number of claim terms in the related
`ITC proceeding, Petitioner contends that we do not need to explicitly
`construe any claim terms. Pet. 11 (citing Ex. 1002 ¶ 54). In the related ITC
`proceeding, the parties agreed on constructions for “object,” “sensing
`element,” and “displacement,” and the ALJ construed the disputed terms
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`“sensing path,” “the range of parameter values being associated with the
`length of the sensing path,” and “the sensing path comprises a closed loop”
`(claims 2 and 11). Pet. 11–13; Ex. 1008, 18–25.
`Apart from the term “displacement,” the constructions from the
`related ITC proceeding do not appear to be material to the obviousness
`arguments Petitioner raises in its Petition. The ALJ adopted the parties’
`agreed construction of “displacement” as meaning “distance and direction of
`movement.” Ex. 1008, 18. Based on the preliminary evidence of record, this
`construction appears to be consistent with the ordinary and customary
`meaning of the term, in light of the ’173 patent disclosure. See, e.g., Ex.
`1001 4:21–58, 5:44–45 (disclosing examples in which the displacement is a
`positive or negative angle, indicating both direction and angular distance).
`Therefore, for the purpose of this decision, we adopt the ALJ’s construction
`of the term “displacement” as meaning “distance and direction of
`movement.”
`
`C. GROUND 1: OBVIOUSNESS OVER TRENT
`
`For Ground 1, Petitioner alleges that claims 1, 2, 8–11, and 17–19 of
`the ’173 patent are unpatentable under 35 U.S.C. § 103 as obvious over
`Trent. Pet. 6.
`A claim is unpatentable under § 103 for obviousness if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We
`typically consider “whether there was an apparent reason to combine the
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`known elements in the fashion claimed by the patent at issue.” Id. at 418
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition
`must “articulate specific reasoning, based on evidence of record, to support
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also
`35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2019).
`We base our obviousness inquiry on factual considerations including
`(1) the scope and content of the prior art, (2) any differences between the
`claimed subject matter and the prior art, (3) the level of skill in the art, and
`(4) any objective indicia of obviousness or non-obviousness (i.e., secondary
`considerations) that may be in evidence. See Graham, 383 U.S. at 17–18.
`Based on these factors,4 Petitioner is reasonably likely to prevail in
`showing that at least one of claims 1, 2, 8–11, and 17–19 is unpatentable as
`obvious over Trent, for the reasons given below.
`
`1.
`
`Overview of Trent
`
`Trent is a U.S. application published on December 16, 2004.
`Ex. 1005, code 43. Thus, we agree with Petitioner that Trent is prior art to
`the ’173 patent under 35 U.S.C. § 102(b). Pet. 13.
`Trent discloses a “closed-loop sensor” as part of a user interface,
`which senses touch motions along a closed loop, to generate a signal that
`causes an action on a host device. See Ex. 1005 ¶ 73. An example of such a
`sensor is shown in Figure 36, below:
`
`
`4 At this stage, neither party has presented evidence of objective indicia of
`obviousness or non-obviousness, so this does not factor into our decision.
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`Figure 36 shows “an object position detector 130 having four closed-loop
`sensors to vary the settings of audio controls.” Ex. 1005 ¶ 121. One of these
`is sensor 132, which controls the volume. Id. “[T]he motions (illustrated by
`arrow 134) of an input object on the volume control . . . 132 will cause the
`volume of the audio system to either increase or decrease.” Id.
`
`2.
`
`Independent claims 1, 10, and 19
`
`Independent claim 1, reproduced above, is a method claim. See supra
`part II.D. Independent claims 10 and 19 are substantially similar to
`independent claim 1, except that claim 10 is directed to a “computer-
`readable non-transitory storage media embodying logic that is operable
`when executed” to perform substantially the method of claim 1. Ex. 1001,
`10:33–58. Claim 19 is directed to an apparatus for performing, substantially,
`the method of step 1. Id. at 12:1–29. Petitioner’s arguments regarding the
`respective limitations of claims 1, 10, and 19 are substantially the same. See
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`Pet. 22–39. Therefore, we discuss each independent claim’s corresponding
`limitations collectively.
`Petitioner identifies, within Trent, alleged disclosures for each of
`limitations 1[a]–1[f] of claim 1, and corresponding limitations 10[a]–10[f]
`and 19[a]–19[h] of claims 10 and 19. See Pet. 22–39.
`
`(a)
`
`Preambles and limitations 1[a]–[b], 10[a]–[b], and
`19[a]–[c]
`
`According to Petitioner, Trent discloses the preambles of each
`independent claim, as well as limitations 1[a] and 1[b] (corresponding to
`limitations 10[a], 10[b], and 19[a]–[c]). Pet. 22–28. These limitations
`include receiving a first signal set indicating the capacitive couplings of an
`object (such as a finger) along a sensing path comprising a length, and using
`the first signal set to determine the object’s first position along the sensing
`path. See Ex. 9:38–46; 10:35–42, 12:2–13. According to Petitioner, Trent
`discloses a touch sensor that has a circular sensor path, and the recited
`“length” is the circumference of this circular path. See Pet. 24–26 (citing
`Ex. 1005 ¶¶ 23, 73, 76, 79–81, Figs. 4, 5; Ex. 1002 ¶¶ 81, 83, 85). Petitioner
`also argues that Trent discloses a method of determining the position of the
`object along the sensor path. Pet. 27–28 (citing Ex. 1005 ¶¶ 74, 80, 124–129,
`Fig. 40; Ex. 1002 ¶¶ 88–90).
`We find Petitioner’s arguments sufficiently persuasive, at this
`preliminary stage, to establish by a reasonable likelihood that Trent discloses
`the preambles of claims 1, 10, and 19, and limitations 1[a], 1[b], 10[a],
`10[b], and 19[a]–[c].
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`(b) Limitations 1[c], 10[c], and 19[e]
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`Limitations 1[c], 10[c], and 19[e] recite “setting a parameter to an
`initial value based on the first position of the object along the sensing path.”
`Ex. 1001, 9:47–48, accord id. at 10:43–44, 12:14–15. This initial value must
`comprise “a particular parameter value” and must be “associated with a
`range of parameter values, the range of parameter values being associated
`with the length of the sensing path.” Id. at 9:48–52; accord id. at 10:44–48,
`12:15–19.
`Petitioner contends that Trent discloses setting a parameter to an
`initial value. Pet. 29. According to Petitioner, “Trent discloses using
`‘absolute’ positioning, corresponding to the precise location that a user
`touches the closed-loop sensor, to set an ‘initial value’ for a parameter in
`some modes.” Id. (citing Ex. 1005 ¶ 92 (“[I]t may occasionally be useful to
`use this absolute position (i.e., an exact starting point), for example, to
`indicate a starting value for a controlled parameter . . . .”)).
`Relying on testimony of Dr. Bederson, Petitioner argues that a person
`of ordinary skill in the art would have had reason to combine the volume
`control knob of Trent’s Figure 36 (reproduced above) with functionality that
`sets the volume to an initial value as disclosed in Trent’s paragraph 92. Pet.
`29–30 (citing Ex. 1002 ¶¶ 92–93). Petitioner also argues that Trent
`identifies, as part of the prior art “solutions” to the problem of the invention,
`a two-dimensional sensor in which users can slide their fingers to generate
`scrolling actions. Pet. 31. According to Dr. Bederson, a person of ordinary
`skill in the art would have understood that such a sensor would set a
`parameter to an initial value as recited in the claims. See Ex. 1002 ¶ 93.
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`We find Petitioner’s arguments, and Dr. Bederson’s supporting
`testimony on the above points, sufficiently persuasive at this preliminary
`stage to show by a reasonable likelihood that Trent discloses or teaches
`limitations 1[c], 10[c], and 19[e].
`
`(c) Limitations 1[d]–[e], 10[d]–[e], and 19[f]–[g]
`
`Limitations 1[d], 10[d], and 19[f] recite receiving “second signals
`indicating one or more capacitive couplings of the object with the sensing
`element.” Ex. 1001, 9:53–55, accord id. at 10:49–51, 12:20–22. These
`second capacitive couplings must “correspond[] to a displacement of the
`object along the sensing path from the first position.” Id. at 9:55–57; accord
`id. at 10:51–53, 12:22–24. The next limitations 1[e], 10[e], and 19[g] recite
`“determining based on one or more of the second signals the displacement of
`the object along the sensing path.” Id. at 9:58–59; accord id. at 10:54–55,
`12:25–26.
`Petitioner argues that Trent teaches measuring the displacement of an
`object in proximity to the circular sensor, as recited in the claims. Pet. 31–
`32. According to Petitioner, after Trent discloses that the sensor reports an
`absolute position as a single angular coordinate, Trent teaches that “the
`relative positions (or motions) can be reported in the same (such as
`angular) units as well.” Id. at 32 (quoting Ex. 1005 ¶ 74) (citing Ex. 1002
`¶ 97)). Dr. Bederson opines that this angular relative position includes both a
`direction and a relative distance along the curved loop from the absolute
`position. Ex. 1002 ¶ 97 (stating that the ’173 patent also teaches measuring
`distance in angular units (citing Ex. 1005 ¶ 73)); Ex. 1001 4:21–58, 5:44–45
`(disclosing examples in which the displacement is measured as an angle).
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`Petitioner also contends that “Trent discloses an algorithm for
`determining the distance and direction of motion (i.e. the claimed
`“displacement”) between two reported positions along the sensing path.”
`Pet. 33–34 (citing Ex. 1005 ¶ 134). Petitioner points to examples in Trent,
`including two flowcharts, that show how to determine relative angular
`movement, in positive or negative degrees (to indicate the direction of
`movement), between an old position and a new position. Id. at 34–36 (citing
`Ex. 1005, ¶¶ 134, 139, Figs. 44, 45; Ex. 1002 ¶¶ 100–102).
`We find Petitioner’s arguments, and Dr. Bederson’s supporting
`testimony, sufficiently persuasive at this preliminary stage to show by a
`reasonable likelihood that Trent discloses or teaches limitations 1[d]–[e],
`10[d]–[e], and 19[f]–[g].
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`(d) Limitations 1[f], 10[f], and 19[h]
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`Limitations 1[f], 10[f], and 19[h] recite “adjusting the parameter
`within the range of parameter values based on the displacement of the object
`along the sensing path.” Ex. 1001, 9:60–55, accord id. at 10:49–51, 12:20–
`22. Petitioner argues that Trent discloses this limitation, in that, “in response
`to movement in clockwise or counter-clockwise directions, ‘the value of a
`setting’ can be correspondingly adjusted.” Pet. 37. Petitioner points to an
`example in Trent where movement in the clockwise direction generates a
`signal “that can cause the data, menu option, three dimensional model, or
`value of a setting to traverse in a particular direction,” and likewise, the
`value traverses in the opposite direction for counter-clockwise movement.
`Id.
`
`Petitioner also points to another example in Trent of measuring the
`angular difference between two points during traversal of the closed-loop
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`path, and “the sign of this result is used to indicate the direction of motion,
`while the absolute distance is used to indicate the amount of motion.”
`Pet. 37. Petitioner points out that, according to Trent, this example “results
`in a more natural feeling correspondence between the motion of the user’s
`input object and the corresponding variation in the controlled parameter
`(e.g., scrolling distance, menu traversal, or setting value).” Id. (quoting Ex.
`1005 ¶ 139). Thus, Petitioner contends that “Trent adjusts the parameter
`within the range of parameter values based on the displacement of the
`object.” Id. at 37–38 (citing Ex. 1002 ¶ 103).
`We find Petitioner’s arguments sufficiently persuasive at this
`preliminary stage to show by a reasonable likelihood that Trent discloses or
`teaches limitations 1[f], 10[f], and 19[h]. Thus, the preliminary evidence
`shows by a reasonable likelihood that Trent teaches each limitation of claims
`1, 10, and 19. Petitioner has also shown, sufficiently for this preliminary
`stage, that a person of ordinary skill in the art would have had reason to
`combine the various embodiments in Trent to achieve the claimed
`inventions.
`
`3.
`
`Dependent claims 2, 8, 9, 11, 17, and 18
`
`The Petition analyzes each of dependent claims 2, 8, 9, 11, 17, and 18,
`and presents reasons why Trent discloses or teaches each limitation in these
`claims. See Pet. 39–42. At this preliminary stage, we find Petitioner’s
`contentions for each of these claims to be sufficiently persuasive to show by
`a reasonable likelihood that the claims are unpatentable as obvious over
`Trent as alleged.
`
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`4.
`
`Preliminary conclusion regarding Ground 1
`
`For the above reasons, we determine that Petitioner is reasonably
`likely to prevail in showing that claims 1, 2, 8–11, and 17–19 of the ’173
`patent are unpatentable under § 103 as obvious over Trent.
`
`D. GROUND 2: OBVIOUSNESS OVER TRENT IN VIEW OF ENGHOLM
`
`For Ground 2, Petitioner alleges that claims 1–3, 5–12, and 14–19 of
`the ’173 patent are unpatentable under 35 U.S.C. § 103 as obvious over
`Trent in view of Engholm. Pet. 6. For the reasons given below, we determine
`that Petitioner is reasonably likely to prevail in showing that at least one of
`claims 1–3, 5–12, and 14–19 is unpatentable over Trent in view of Engholm.
`
`1.
`
`Overview of Engholm
`
`Engholm is a U.S. patent that issued May 8, 2001. Ex. 1006, code 45.
`Thus, we agree with Petitioner that Engholm is prior art to the ’173 patent
`under 35 U.S.C. § 102(b). Pet. 16.
`Engholm discloses a method “for facilitating user interaction with a
`measurement instrument,” that involves “display[ing] a control knob glyph
`corresponding to a user-adjustable parameter of the measurement
`instrument, the control knob glyph having an indicator and a partially
`circular drag area through which the indicator can be rotated.” Ex. 1006,
`code (57). An example of such a glyph is shown in Figure 4b, below:
`
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`Figure 4b shows control knob glyph 412, which is “separated into two
`portions, a first including drag area 414 and indicator 416, and a second
`including an increment button 418 and decrement button 420.” Id. at 6:37–
`40. A user can interactively rotate indicator 416 through drag area 414. Id. at
`6:40. “Moving indicator 416 in a counterclockwise manner decreases the
`current value being set by control knob glyph 412, while moving indicator
`416 in a clockwise manner increases the current value.” Id. at 6:32–35.
`
`2. Motivation to combine Trent and Engholm
`
`Petitioner argues that Engholm provides additional teachings with
`respect to a closed-loop sensor, and that a person of ordinary skill in the art
`would have had reason to incorporate these teachings into Trent’s method
`and apparatus. Pet. 42–44 (citing Ex. 1002 ¶¶ 113–116). In particular,
`Petitioner argues that Trent and Engholm address a similar problem, “the
`difficulty of inputting and changing parameters in small or otherwise limited
`spaces.” Id. at 42. Petitioner contends that both references solve this problem
`“in similar and predictable ways, such as by using touch sensors and
`providing further control of input and adjustment of parameters.” Id.; see
`also id. at 43–44 (citing Ex. 1005 ¶¶ 2–3, 11, 95, 145; Ex 1006, 1:32–33,
`1:40–44, 2:13–14, 2:24, 12:18–25). Petitioner also argues, with supporting
`
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`testimony from Dr. Bederson, that “one of skill in the art would have had a
`reasonable expectation of success” in combining the teachings of Trent and
`Engholm, “because each of these solutions involve[s] routine software
`functionality that is reasonably predictable to implement and amenable to
`simple substitution by those of skill in the art.” Pet. 44 (citing Ex. 1002
`¶ 116).
`On the record before us, we find Petitioner’s arguments, and Dr.
`Bederson’s supporting testimony, to be sufficiently persuasive at this
`preliminary stage.
`
`3.
`
`Independent claims 1, 10, and 19
`
`For Ground 2, Petitioner’s arguments with respect to the independent
`claims rely on substantially the same arguments as Ground 1, except for
`additional arguments regarding limitations 1[c] and 1[f] and corresponding
`limitations in claims 10 and 19. See Pet. 44–51.
`Regarding limitation 1[c] and corresponding limitations 10[c] and
`19[e], Petitioner argues that Engholm, like Trent, discloses “the range of
`parameter values being associated with the length of the sensing path.” Id. at
`48. With supporting testimony from Dr. Bederson, Petitioner contends that
`“one of skill in the art would have been motivated to combine, for example,
`the volume dial of Trent’s Figure 36 with the parameter mapping of
`Engholm, because it would allow a user to more easily determine the exact
`volume they initially selected when they touched the volume dial.” Pet. 50
`(citing Ex. 1002 ¶ 128).
`Regarding limitation 1[f] and corresponding limitations 10[f] and
`19[h], Petitioner contends that, like Trent, “Engholm discloses ‘the control
`subsystem provides a control knob glyph on the display device
`
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`corresponding to a user-adjustable parameter.’” Pet. 51 (citing Ex. 1006,
`2:42–47).
`We find Petitioner’s arguments sufficiently persuasive at this
`preliminary stage to show that Engholm teaches limitations 1[c], 1[f], 10[c],
`10[f], 19[e], and 19[h], and that a person of ordinary skill in the art would
`have had reason to combine these teachings with Trent’s method and sensor
`apparatus. Thus, the preliminary evidence is sufficient at this stage to show
`by a reasonable likelihood that Petitioner is reasonably likely to prevail in
`showing that claims 1, 10, and 19 are unpatentable as obvious over Trent in
`view of Engholm.
`
`4.
`
`Dependent claims 2, 3, 5–9, 11, 12, and 14–18
`
`The Petition analyzes each of dependent claims 2, 3, 5–9, 11, 12, and
`14–18, and presents reasons why a combination of Trent and Engholm
`teaches each limitation in these claims. See Pet. 51–62. At this preliminary
`stage, we find Petitioner’s contentions to be sufficiently persuasive to show
`by a reasonable likelihood that the dependent claims are unpatentable as
`alleged.
`
`5.
`
`Preliminary conclusion regarding Ground 2
`
`For the above reasons, we determine that Petitioner is reasonably
`likely to prevail in showing that claims 1–3, 5–12, and 14–19 of the ’173
`patent are unpatentable under § 103 as obvious over Trent in view of
`Engholm.
`
`
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`E. GROUND 3: OBVIOUSNESS OVER BRYAN IN VIEW OF TRENT AND
`ENGHOLM
`
`For Ground 3, Petitioner alleges that claims 1–3, 5–12, and 14–19 are
`unpatentable under § 103 as obvious over Bryan in view of Trent and
`Engholm. Pet. 6.
`Because Petitioner has shown a reasonable likelihood of prevailing
`with respect to at least one claim of the ’173 patent, we will institute on all
`grounds and all claims raised 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.”).
`Ground 3 asserts unpatentability of the same claims asserted
`collectively in Grounds 1 and 2. Therefore, at this stage of the proceeding, it
`is not necessary for us to provide an assessment of Ground 3. Nevertheless,
`we note that Petitioner provides a detailed explanation as to this ground,
`supported by Dr. Bederson’s testimony and specific citations to Bryan,
`Trent, and Engholm indicating where the references teach the limitations of
`claims 1–3, 5–12, and 14–19. See Pet. 63–83.
`
` MOTION FOR JOINDER
`
`Because we conclude that the Petition warrants the institution of an
`inter partes review, we have discretion to join Petitioner as a party to the
`Samsung IPR. See 35 U.S.C. § 315(c).
`A joinder motion should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact, if any, joinder would have on the trial
`
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`schedule for
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