STMicroelectronics Inc v. Neodron Ltd

1. Case Identification

• Case #: IPR2021-01160
• Patent #: 8,749,251
• Filed: June 30, 2021
• Petitioner(s): STMicroelectronics, Inc.
• Patent Owner(s): Neodron, Ltd.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Power Management for Capacitive Proximity Sensors
• Brief Description: The ’251 patent relates to managing power consumption in devices with capacitive sensors. The technology initiates a power-saving function after a predetermined amount of time has elapsed since the sensor last detected a user's touch or proximity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Koziuk - Claims 1, 7, 10, and 16 are obvious over Koziuk in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Koziuk (Patent 6,058,485) and the general knowledge of a Person of Ordinary Skill in the Art (POSITA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Koziuk, which was not considered during prosecution, discloses all limitations of the independent claims. Koziuk teaches a power management system for a "digitizing panel" that detects finger or stylus touches via capacitance changes. Its controller uses programmable timers to track inactivity; after a set period without a touch, it transitions the device into a lower-power "sleep state" or "power management state." This directly maps to the claimed method of determining an amount of time elapsed since a last touch and initiating a particular function (power saving) if that time exceeds a predetermined duration.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference plus the knowledge of a POSITA, which Petitioner asserted would find the teachings of Koziuk directly applicable to the problem solved by the ’251 patent.
  • Expectation of Success (for §103 grounds): A POSITA would have readily understood that Koziuk's programmable timers and state transitions could be implemented to achieve the power-saving functions claimed in the ’251 patent.

Ground 2: Obviousness over Koziuk and Kalendra - Claims 3, 12, and 18 are obvious over Koziuk in view of Kalendra.

• Prior Art Relied Upon: Koziuk (Patent 6,058,485) and Kalendra (Patent 5,283,559).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Koziuk's disclosure of a power-saving mode triggered by inactivity. The dependent claims require the "particular function" to be a "recalibration of measurement of changes in capacitance." Petitioner asserted that Kalendra, which relates to capacitive touch screens, explicitly teaches performing such recalibration after "extended periods of inactivity" to maintain accuracy against environmental changes.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kalendra's known calibration technique with Koziuk's system to enhance its performance and reliability. Since both references address capacitive touch panels and periods of inactivity, adding a periodic calibration function as taught by Kalendra would have been a predictable and straightforward improvement to the system disclosed in Koziuk.
  • Expectation of Success (for §103 grounds): Because Koziuk already provided the timer and controller infrastructure for identifying periods of non-use, a POSITA would have had a reasonable expectation of success in adding software logic to implement Kalendra's calibration function upon the expiration of Koziuk's inactivity timer.

Ground 3: Obviousness over QT60161 - Claims 1, 3-5, 7-10, 12-14, 16, and 18-20 are obvious over QT60161 in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Quantum Research Group QT60161 Data Sheet ("QT60161").

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented QT60161 as an alternative primary reference. QT60161 is a datasheet for a "QMatrix" touch-sensor IC controller that can scan a matrix of up to sixteen touch keys. It discloses programmable "negative" and "positive recalibration delay" timers. For example, the negative recalibration timer monitors for a key touch that lasts longer than a set duration (e.g., due to an obstruction) and then initiates a recalibration of that key's threshold. This system determines an elapsed time since a touch event began and initiates a specific function (recalibration) after that time exceeds a programmable duration, meeting the limitations of the independent and recalibration-focused dependent claims.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference plus POSITA knowledge. Petitioner contended that QT60161 alone teaches the claimed invention.
  • Expectation of Success (for §103 grounds): The detailed technical disclosures in the QT60161 datasheet would have enabled a POSITA to implement the claimed system with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Koziuk in view of QT110 (a datasheet teaching programmable timers set by power supply voltages) and Koziuk in view of Bruwer (an application teaching an automatic shut-off function).

4. Key Claim Construction Positions

• "touch screen": Petitioner argued that because the ’251 patent specification does not define the term, it should be given its well-accepted meaning in the art: a transparent touch-sensitive panel that overlays a display, such as an LCD.
• "key touch on a/the touch screen": Petitioner proposed two alternative constructions, as the intrinsic record is also silent on this phrase.
  • Primary Construction: Any user-initiated touch on the touch screen. This broad construction is supported by disclosures allowing for a single "key" and is used for the grounds based on Koziuk.
  • Secondary Construction: A user-initiated touch in a specific, defined region ("key") on a touchscreen that is subdivided into multiple such regions. This narrower construction is addressed by the ground based on QT60161, which discloses a matrix of individual keys.

5. Arguments Regarding Discretionary Denial

• §325(d) (Non-Cumulative Art): Petitioner argued against discretionary denial under §325(d), noting that the primary references (Koziuk, QT60161, Bruwer) were never cited or considered during prosecution. While one secondary reference (QT110) was cited on the face of the patent, it was never discussed or applied by the Examiner, meaning the arguments presented in the petition were not previously before the Office.
• §314(a) (Fintiv Factors): Petitioner argued that the Fintiv factors strongly favor institution despite co-pending ITC and district court litigation. Key arguments included:
  • The petition was filed very early in the parallel proceedings, within weeks of the ITC complaint and before any substantive activity, scheduling, or investment by the parties or the court.
  • Petitioner expressed willingness to stipulate that it would not pursue the same invalidity grounds in the ITC, eliminating concerns of overlap and duplicative efforts.
  • The district court litigation was subject to a mandatory stay pending the outcome of the ITC investigation, making its trial date irrelevant.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 8,749,251 as unpatentable.