Apple Inc v. Neodron Ltd

1. Case Identification

• Case #: IPR2020-01331
• Patent #: 7,821,502
• Filed: July 29, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Neodron, Ltd.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Capacitive Position Sensor
• Brief Description: The ’502 patent discloses a capacitive sensor for determining an object's position. The sensor comprises column and row electrodes formed on a single substrate surface, where electrodes in a given row or column are electrically coupled using connections, including "wrap-around" connections that lie outside the primary sensing area to avoid internal crossovers.

3. Grounds for Unpatentability

Ground 1: Obviousness over Grummer and Tagg - Claims 1-6, 8-14, 16-17, and 20-23 are obvious over Grummer in view of Tagg.

• Prior Art Relied Upon: Grummer (Patent 4,233,522) and Tagg (Application # 2003/0067451).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Grummer disclosed a single-layer capacitive touch panel with row and column electrodes, but its design required internal crossover connectors to connect broken electrode segments. Critically, Grummer expressly disparaged the use of such internal crossovers, noting they create fabrication disadvantages. Tagg disclosed a capacitive touch screen that used external, "wrap-around" conductive wires to connect electrodes at opposing ends of a row or column, thereby avoiding internal crossovers. Petitioner asserted that the combination of Grummer's single-layer electrode array with Tagg's external wrap-around connections taught all limitations of the independent claims, including connecting row/column segments using connections outside the active sensing region.
  • Motivation to Combine: A POSITA would combine Tagg's wrap-around connections with Grummer's single-layer design to achieve the very benefits Grummer desired but did not fully realize: a simplified, single-layer construction without the disadvantages of internal conductor crossovers. This combination would create the "ideal" structure Grummer suggested by solving the problem of internal crossovers with a known technique from Tagg, which was in the same field. Additional motivation was cited to improve transparency and reduce manufacturing cost and complexity.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references related to capacitive touch sensors, and the modification involved applying a known conductor routing technique (Tagg) to a known sensor layout (Grummer) to solve a recognized problem. The modification was portrayed as a predictable design choice.

Ground 2: Obviousness over Grummer, Tagg, and Gillespie - Claims 7, 15, 18-19, and 24 are obvious over Grummer in view of Tagg and in further view of Gillespie.

• Prior Art Relied Upon: Grummer (Patent 4,233,522), Tagg (Application # 2003/0067451), and Gillespie (Patent 5,880,411).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Grummer and Tagg from Ground 1. Petitioner argued that Gillespie supplied the teachings for the remaining challenged claims, which related to specific measurement and processing techniques. Gillespie disclosed a capacitive sensing system using simultaneous, parallel charge-transfer measurement techniques for both axes to improve response time and noise immunity. It also taught calculating the centroid of signals across rows and columns to determine a touch location. These features, according to Petitioner, mapped to claim limitations requiring charge transfer circuits (claim 7) and centroid calculation (claim 19).
  • Motivation to Combine: The motivation to add Gillespie's teachings was explicit in Gillespie itself, which promoted the advantages of its simultaneous, charge-transfer sensing approach over the sequential scanning methods used in prior art systems like Grummer. A POSITA would have been motivated to replace Grummer's sequential measurement system with Gillespie's superior parallel sensing and processing techniques to improve the overall performance, speed, and noise immunity of the sensor device established in Ground 1.
  • Expectation of Success: A POSITA would have expected success in incorporating Gillespie's techniques into the Grummer/Tagg device. Gillespie's processing components (e.g., arithmetic unit for centroid calculation) could be readily implemented in Grummer's microprocessor-based system with predictable results, constituting a known improvement to a standard sensor architecture.

4. Key Claim Construction Positions

Petitioner argued for express constructions for three key terms, contending they were critical to the invalidity analysis.

• "sensing area" / "active sensing region": Petitioner argued these terms must be construed as the area defined by the outer physical perimeter of the electrode pattern itself. This construction was central to their argument because it established that the "wrap-around connections" taught in Tagg and claimed in the ’502 patent were truly "outside" this area, even if a touch near the edge could be detected over the connections.
• "wrap-around connection": Petitioner argued this term should be construed broadly as any electrical connection for coupling row or column electrodes that wraps around other electrodes, irrespective of its specific shape or point of attachment. This construction allowed Tagg's external conductive wires to meet the claim limitation.

5. Arguments Regarding Discretionary Denial

Petitioner presented extensive arguments that discretionary denial under either General Plastic (§325(d)) or Fintiv (§314(a)) would be inappropriate.

• Against General Plastic Denial: Petitioner emphasized that it had never previously challenged the ’502 patent, distinguishing this case from serial petition scenarios. It also argued that the prior art and grounds asserted were substantially different from those in prior IPRs filed by other parties (Samsung and Lenovo).
• Against Fintiv Denial: Petitioner argued the parallel district court litigation was in its infancy, with no significant investment by the court or parties in litigating validity. Key deadlines were distant, and no trial date was set. Petitioner contended a stay of the litigation was likely if the IPR was instituted, which would conserve resources and prevent overlap, strongly favoring institution. Petitioner also stipulated it would not pursue the same invalidity grounds in district court if the IPR was instituted.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-24 of the ’502 patent as unpatentable.