STMicroelectronics Inc v. Neodron Ltd

1. Case Identification

• Case #: IPR2021-01161
• 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: Touch-Sensitive Power Consumption Management
• Brief Description: The ’251 patent relates to managing power consumption for devices with touch-sensitive inputs. The invention describes a control circuit that detects a user's touch via capacitance changes and can initiate functions, such as an "auto-off" power-saving procedure, after a predetermined time has elapsed since the last touch.

3. Grounds for Unpatentability

Ground 1: Obviousness over Philipp and QT60161 - 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 is not entitled to its claimed priority date before May 26, 2011, because the claim limitations "touch screen" and "key touch on the touch screen" constitute new matter not supported by the parent applications. This makes the ’068 Publication—the published version of the parent application—prior art. The ’068 Publication disclosed the core functionality of the challenged claims, including initiating a power-saving or recalibration function after a set time from a user's last touch on a discrete capacitive sensor. However, it did not disclose applying this to a "touch screen." The QT60161 datasheet remedied this deficiency by disclosing an integrated circuit controller for a multi-key capacitive touch screen designed to be formed over an LCD panel. QT60161 taught detecting a "key touch" using charge-transfer sensing. Petitioner contended that combining the timer-based power management system of the ’068 Publication with the touch screen technology of QT60161 would render the challenged claims obvious. For dependent claims, the ’068 Publication was alleged to teach the specific functions of deactivating measurements (claim 2), recalibrating the sensor (claim 3), and turning off the apparatus (claim 6), as well as methods for calculating the time duration based on power supply voltages, output voltages, and delay multipliers (claims 4-5).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to apply the known and beneficial power-saving and recalibration features of the ’068 Publication to the common and well-understood technology of multi-key touch screens. The motivation was strengthened because QT60161 itself disclosed analogous timer-based functions, including recalibrating a key after a prolonged touch and implementing an "ultra low-power sleep mode." The references shared compatible capacitive sensing technologies, making their integration straightforward. Applying the established auto-off functionality from a simple capacitive switch to a more advanced touch screen interface was presented as a predictable design choice to improve power efficiency in modern devices.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing the timer-based functions of the ’068 Publication on the touch screen of QT60161 was a matter of simple and predictable programming. The combination involved applying a known technique (timer-based power management) to a known device (a touch screen) to achieve predictable results.

4. Key Claim Construction Positions

• Petitioner argued that the terms "touch screen" and "key touch on a/the touch screen" were central to the invalidity analysis.
• Petitioner asserted that, based on extrinsic evidence and the patent owner's own related patents, the well-accepted meaning of "touch screen" in the art is a transparent touch-sensitive panel that overlays a display (e.g., an LCD). This is distinct from the discrete, non-display-based on/off capacitive switches disclosed in the pre-2011 priority documents of the ’251 patent.
• This construction was critical to Petitioner's primary argument: because the priority documents only disclosed discrete switches, the introduction of "touch screen" limitations in 2011 constituted new matter that severed the priority chain. This rendered the ’068 Publication (published in 2009) available as prior art against all challenged claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate, presenting several reasons why the Board should institute review despite co-pending ITC and district court litigation.
• The IPR petition was filed at a very early stage of the parallel ITC investigation, less than two weeks after its institution and before significant investment by the parties or the court. The related district court litigation was statutorily stayed pending the ITC outcome.
• Petitioner argued there was no substantial overlap between the IPR and the ITC case, as invalidity had not yet been addressed in the ITC proceeding. Furthermore, Petitioner offered to stipulate that it would not pursue the same invalidity grounds in the parallel litigation.
• The petition's merits were asserted to be particularly strong, noting that the Board had previously instituted a review on the same grounds against the same patent in a prior proceeding that was terminated due to settlement.
• Finally, Petitioner argued that the IPR offers a unique remedy—the cancellation of patent claims—that the ITC cannot provide, making Board review more efficient and conclusive.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’251 patent as unpatentable under 35 U.S.C. §103.