PTAB

IPR2020-00653

HP Inc v. Neodron Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Capacitive Touch Sensor Control Method and Apparatus
  • Brief Description: The ’173 patent describes a method for controlling a parameter (e.g., temperature, volume) using a capacitive touch sensor. The system operates in two modes: a first mode sets an initial parameter value based on the position of a user's first touch on the sensor, and a second mode adjusts that parameter based on the subsequent displacement of the user's touch along the sensor.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 8-11, and 17-19 are obvious over Trent

  • Prior Art Relied Upon: Trent (Application # 2004/0252109).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Trent teaches all elements of the challenged independent claims. Trent discloses a closed-loop capacitive sensor for controlling parameters such as volume, brightness, or temperature. Petitioner asserted Trent teaches a method of receiving first signals from an initial touch to determine a starting position, setting a parameter to an initial value based on that absolute position (e.g., touching the middle of a volume sensor sets volume to 50%), and subsequently receiving second signals corresponding to motion along the sensor. Trent further discloses calculating the displacement (both distance and direction) from these second signals and adjusting the parameter value accordingly.
    • Motivation to Combine (for §103 grounds): This ground primarily relied on Trent's teachings, supplemented by the general knowledge of a person of ordinary skill in the art (POSITA). Petitioner contended that Trent provides a comprehensive system for touch-based parameter control, and any minor variations needed to arrive at the claimed invention, such as mapping a parameter range to the sensor length, would have been obvious design choices for a POSITA implementing Trent's system.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as Trent describes a complete, functional system using well-understood capacitive sensing and software control principles.

Ground 2: Claims 1-3, 5-12, and 14-19 are obvious over Trent in view of Engholm

  • Prior Art Relied Upon: Trent (Application # 2004/0252109) and Engholm (Patent 6,229,456).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Trent by adding the teachings of Engholm to address claim limitations related to threshold-based adjustments. Petitioner argued that Engholm, which addresses the problem of unintentional inputs on touch devices, discloses using a "debounce value"—a predetermined threshold of movement that must be exceeded before an input is registered. This teaching was mapped directly to claim 3 and 12's limitation of switching from a first mode (setting the value) to a second mode (adjusting the value) only after the user's displacement exceeds a predetermined threshold. Engholm also teaches using incremental changes to the parameter once the threshold is met.
    • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA would combine these references because both address the common problem of creating intuitive and precise parameter controls for electronic devices with limited space. A POSITA implementing Trent’s sensor would be motivated to incorporate Engholm’s threshold ("debounce") feature to solve the known problem of input "bouncing" or inadvertent value changes from slight, unintentional finger movements, thereby making the final product more reliable and user-friendly.
    • Expectation of Success (for §103 grounds): Success would be expected because the combination involves implementing routine and predictable software functionality (Engholm's threshold logic) with a known hardware system (Trent's sensor).

Ground 3: Claims 1-3, 5-12, and 14-19 are obvious over Bryan in view of Trent and Engholm

  • Prior Art Relied Upon: Bryan (Patent 5,559,301), Trent ('109 application), and Engholm ('456 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground combined the teachings of all three references. Petitioner argued that Bryan discloses a touchscreen interface for an audio device featuring on-screen sliders to control parameters. Bryan's flowchart logic describes setting a parameter based on an initial touch and adjusting it based on subsequent movement along the slider. Petitioner contended that Bryan teaches the fundamental two-mode operation claimed in the ’173 patent. Trent was added for its disclosure of a more compact and power-efficient closed-loop capacitive sensor, which would be an obvious improvement over Bryan's generic touchscreen. Engholm was added for the same reason as in Ground 2: to provide the claimed threshold functionality to prevent inadvertent inputs.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine the references to create an improved user interface. They would start with Bryan's established slider-based control method, replace the generic touchscreen with Trent’s more advanced and space-saving capacitive sensor technology, and incorporate Engholm’s debounce/threshold logic to enhance precision and prevent errors. This combination addresses the shared goal of all three references: providing flexible and accurate parameter control on small-display devices.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success as the combination involves integrating well-known UI concepts (Bryan), established sensor technology (Trent), and routine software filtering techniques (Engholm).

4. Key Claim Construction Positions

  • Petitioner stated that while no specific constructions were dispositive, it identified several potentially relevant constructions based on a parallel ITC proceeding involving the ’173 patent.
  • "a sensing element that comprises a sensing path that comprises a length": Proposed as "a physical electrical sensing element made of conductive substances that comprises a path for sensing that is determined for each use that comprises a length." This construction emphasizes the physical nature of the sensor.
  • "displacement": Proposed as "distance and direction of movement." This construction is critical to Petitioner's argument that prior art like Trent, which tracks angular motion, inherently discloses this element.
  • "object": Construed broadly to include a human finger or other appendage, as well as inanimate objects like a stylus, which aligns with the objects used in the cited prior art.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5-12, and 14-19 of Patent 8,432,173 as unpatentable.