Cypress Semiconductor Corp v. Neodron Ltd

1. Case Identification

• Case #: IPR2021-01128
• Patent #: 8,432,173
• Filed: June 16, 2021
• Petitioner(s): Cypress Semiconductor Corp. and STMicroelectronics, Inc
• Patent Owner(s): Neodron Ltd.
• Challenged Claims: 1-3, 5-12, and 14-19

2. Patent Overview

• Title: Capacitive Position Sensor
• Brief Description: The ’173 patent discloses a method and apparatus for adjusting a parameter using a two-mode capacitive touch sensor. The technology is directed to a first mode for setting an initial parameter value based on a touch position and a second, finer adjustment mode entered automatically after the initial selection, where displacement of the object along the sensor path refines the parameter value.

3. Grounds for Unpatentability

Ground 1: Obviousness over Trent - Claims 1-2, 8-11, and 17-19 are obvious over Trent in light of the knowledge of a POSITA.

• Prior Art Relied Upon: Trent (Application # 2004/0252109).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Trent taught all limitations of the challenged independent claims. Trent disclosed a "closed-loop sensor on a solid-state object position detector" used for software control of parameters like audio volume. Petitioner asserted Trent’s disclosure of using "absolute position" to set a "starting value for a controlled parameter" met the claim limitation of setting an initial parameter value (the first mode of operation). Further, Trent’s disclosure of using "relative positions (or motions)" of a user's touch to cause "corresponding variation in the controlled parameter" met the claim limitation of adjusting the parameter based on displacement (the second mode of operation).
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference plus the general knowledge of a person of ordinary skill in the art (POSITA). Petitioner argued that to the extent any minor element was not explicitly disclosed in Trent (e.g., associating a full range of parameter values with the sensor length), it would have been an obvious and well-known design choice for a POSITA implementing Trent’s system, particularly given Trent’s own discussion of prior art capacitive sliders that performed this function.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in applying common user interface principles to Trent's disclosed capacitive sensor system, as it involved routine implementation of known functionalities.

Ground 2: Obviousness over Trent and Engholm - 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 used Trent as the primary reference for the capacitive sensor system and combined it with Engholm, which disclosed a "display-based control knob" for user interaction. Petitioner argued Engholm remedied deficiencies in prior art sliders by providing finer control. Specifically, Engholm taught switching from a first mode (setting a value) to a second mode (adjusting the value) only after a user's movement exceeds a pre-determined "debounce value" or threshold. This was alleged to directly teach the limitations of claims 3 and 12, which require switching to a second adjustment mode after displacement exceeds a threshold. Engholm also taught incremental parameter changes and mapping a range of parameter values onto a circular control, which Petitioner mapped to other dependent claims.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA would combine Trent and Engholm because both references addressed the same problem of improving parameter control on devices with limited space. A POSITA would be motivated to integrate Engholm’s software-based user interface improvements, such as the use of a "debounce" threshold to prevent inadvertent adjustments, into the hardware-based capacitive sensor system of Trent to create a more precise and reliable user control.
  • Expectation of Success (for §103 grounds): Success was expected because the combination involved applying Engholm's known software logic for input filtering and parameter mapping to Trent's conventional capacitive sensor, a predictable integration of complementary technologies.

Ground 3: Obviousness over Bryan, Trent, and Engholm - 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 (Application # 2004/0252109), and Engholm (Patent 6,229,456).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Bryan as a base reference, which disclosed a "touchscreen interface having pop-up variable adjustment displays" with linear "sliders" for controlling audio parameters on a device like a musical keyboard. Petitioner argued that while Bryan disclosed a touchscreen system for setting and adjusting parameters, it did not specify the touch technology. Trent was introduced to supply the teaching of using capacitive sensing, which Trent described as ideal for small, custom-sized controls like those in Bryan. Engholm was added for the same reasons as in Ground 2: to provide the specific teachings of using a displacement threshold to switch between operational modes for finer adjustment.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to implement the touchscreen sliders of Bryan using the superior capacitive technology disclosed in Trent, as it was well-suited for the small-area control applications described in Bryan. To improve the usability of this combined system, a POSITA would further incorporate the input-filtering and fine-adjustment techniques from Engholm to solve the known problem of making precise adjustments on a touchscreen.
  • Expectation of Success (for §103 grounds): The combination was presented as a predictable integration of known user interface designs (Bryan), sensor hardware (Trent), and control software logic (Engholm) to achieve a more robust and flexible control system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). Regarding the Fintiv factors, Petitioner contended that this IPR was filed at a very early stage of a parallel ITC investigation, before a schedule was entered or substantive work had occurred, weighing heavily in favor of institution. Petitioner also argued against denial under §325(d), noting that while the grounds were substantively identical to those in a previously filed IPR (IPR2020-00267), that prior case was instituted by the Board but subsequently dismissed due to settlement before a final written decision was issued. Therefore, Petitioner claimed the merits had not been fully adjudicated.

5. Relief Requested

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