Apple Inc v. Neodron Ltd

1. Case Identification

• Case #: IPR2020-01000
• Patent #: 8,749,251
• Filed: June 16, 2020
• Petitioner(s): Apple Inc. & Microsoft Corporation
• Patent Owner(s): Neodron, Ltd.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Managing Power Consumption in Touch-Sensitive Devices
• Brief Description: The ’251 patent relates to managing power consumption for touch-sensitive inputs. The technology uses a control circuit to detect if a user's finger or object is no longer in proximity with a sensor for a predetermined time, at which point it can automatically trigger an "auto-off" or other power-saving function.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over the ’068 Publication in view of QT60161.

• Prior Art Relied Upon: Philipp (Application # 2009/0027068, the '068 Publication") and QT60161 (a 2002 datasheet from Quantum Research Group).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’251 patent’s claims to a “touch screen” and “key touch on the touch screen” constitute new matter introduced on May 26, 2011, severing the patent’s claim to an earlier priority date. This makes the ’068 Publication—the published version of the parent application—prior art under pre-AIA §102(b). The ’068 Publication allegedly disclosed all elements of the challenged claims except for the "touch screen" and "key touch" limitations. It taught an apparatus with a capacitive sensor and control circuit that initiated functions (like auto-off or recalibration) after a predetermined time had elapsed since a touch. The QT60161 datasheet, which described a controller for a multi-key capacitive touch screen overlaying a display, was argued to supply these missing elements. QT60161 disclosed a transparent touch-sensitive panel with up to sixteen "touch keys" formed over an LCD display, using charge-transfer sensing to detect touches on specific key regions.
  • Motivation to Combine: A POSITA would have been motivated to combine the power-saving and recalibration functionalities from the ’068 Publication with the well-known touch screen technology of QT60161. Petitioner asserted that both references are in the same field of endeavor (capacitive touch sensing) and address analogous problems. The motivation was said to be explicit, as QT60161 itself disclosed analogous timer-based functions, such as a "recalibration delay" for extended touches and an "ultra low-power sleep mode," which directly correspond to the primary functions claimed in the ’251 patent. Applying the '068 Publication's timer logic to a modern touch screen interface was presented as a predictable and common-sense design choice.
  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success because combining the prior art elements was a matter of simple programming. The combination merely involved triggering the known timer functions from the ’068 Publication based on a "key touch on a touch screen" (taught by QT60161) instead of a touch on a simple on/off capacitive switch. This was argued to be a predictable substitution of one known input method for another to achieve a known result.

4. Key Claim Construction and Priority Date Arguments

• Petitioner argued that the central issue of the case depended on the construction of "touch screen" and its impact on the patent's effective filing date.
• "touch screen": Petitioner asserted this term should be construed as a transparent touch-sensitive panel that overlays a display (e.g., an LCD). This construction was supported by extrinsic evidence, including technical dictionaries and other patents from the same inventor, which distinguished a "touch screen" from the discrete, non-display-based capacitive switches described in the ’251 patent’s pre-2011 priority documents.
• "key touch on a/the touch screen": This was argued to mean touching a specific, defined region (a "key") on the transparent panel that overlays the display.
• Priority Date Argument: Based on these constructions, Petitioner argued that the "touch screen" and "key touch" limitations were not described in the pre-2011 priority applications, which only disclosed discrete on/off switches for devices like headsets and kitchen appliances. Therefore, these limitations constituted new matter introduced in the 2011 application that resulted in the ’251 patent. This new matter, it was argued, broke the chain of priority, making the patent's effective filing date May 26, 2011, and thereby rendering the ’068 Publication (published in 2009) available as prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate, despite a parallel ITC investigation.
• Timeline: It was argued that the Board's Final Written Decision (FWD) would likely issue before the ITC determination becomes final and appealable, as the ITC decision is subject to a 60-day presidential review period after issuance.
• Investment and Overlap: Petitioner contended that investment in the parallel proceedings was minimal at the time of filing. More importantly, the issues were not identical, as the ITC investigation did not address the validity of challenged claims 10-15.
• System Efficiency: Petitioner asserted that the ITC lacks the authority to invalidate and cancel patent claims, meaning the parallel district court litigation (which was stayed) would still need to address validity. An IPR decision would therefore streamline future proceedings. Further, the standard of proof is lower in IPR (preponderance of the evidence) than in the ITC (clear and convincing evidence), justifying a parallel review.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of the ’251 patent as unpatentable.