Samsung Electronics Co Ltd v. Power2B Inc

1. Case Identification

• Case #: IPR2021-01190
• Patent #: 10,156,931
• Filed: June 25, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): Power2B Inc.
• Challenged Claims: 1-3, 6-15, and 18-21

2. Patent Overview

• Title: Displays and Information Input Devices
• Brief Description: The ’931 patent describes computing devices, such as mobile phones, with touchscreens that use infrared (IR) sensing to detect the position of a nearby object. The system uses an IR emitter and a position-sensing array configured to receive IR light transmitted through the device's display panel to determine the object’s position and execute corresponding software functions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gettemy and Philipp - Claims 1, 3, 6-13, 15, and 18-21 are obvious over Gettemy in view of Philipp.

• Prior Art Relied Upon: Gettemy (Application # 2003/0156100) and Philipp (Patent 4,879,461).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gettemy disclosed the core system of the challenged claims: a portable device with a display panel comprising a pixel array and an array of photodetectors. Gettemy’s photodetectors receive light reflected from a nearby object (e.g., a stylus or finger) back through the display surface to determine the object's position and execute input functions. Petitioner contended that while Gettemy disclosed using IR light sensors, it did not explicitly disclose a corresponding IR emitter. Philipp was argued to supply this teaching, as it disclosed a well-known optical sensor system using a paired IR light-emitting diode (LED) and photodiode to detect objects. Philipp also explicitly taught using a microprocessor to compare the received signal against a predetermined threshold to confirm object presence, a limitation Petitioner alleged was also taught or suggested by Gettemy’s use of an "expected readout value."
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine these references to solve known problems in touch display technology. A POSITA implementing Gettemy’s system, which expressly envisioned using IR detectors, would have naturally looked to known art like Philipp for a compatible IR emitter and for robust thresholding techniques to improve detection reliability. The combination involved applying a known technique (Philipp's IR emitter/detector pair and thresholding) to a known device (Gettemy's touch display) to yield predictable results.
  • Expectation of Success: A POSITA would have had a high expectation of success because pairing a light emitter with a sensor of the same wavelength is a fundamental design principle. Incorporating Philipp's IR LED into Gettemy's system—whether as part of the backlight, pixel structure, or as a separate component—was presented as a routine and predictable design choice using well-understood hardware and software.

Ground 2: Obviousness over Gettemy, Philipp, and Carstedt - Claims 2 and 14 are obvious over Gettemy and Philipp in view of Carstedt.

• Prior Art Relied Upon: Gettemy (Application # 2003/0156100), Philipp (Patent 4,879,461), and Carstedt (WO 86/00447).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Gettemy and Philipp to address the specific limitations of dependent claims 2 and 14, which require determining a baseline level of ambient light and setting the predetermined detection threshold above that baseline. Petitioner argued that Gettemy disclosed detecting ambient light and noted potential issues with "unwanted registrations" that could be corrected by adjusting a "level of sensitivity." To implement a dynamic and robust solution for this known problem, a POSITA would have looked to art like Carstedt. Carstedt explicitly taught a touch input device that "dynamically compensates for ambient light" by sampling the ambient light level to establish a baseline and then calculating a new, adjusted threshold for object detection. This process, Petitioner argued, directly corresponds to the method recited in the challenged claims.
  • Motivation to Combine: The motivation was to improve the performance of the Gettemy/Philipp system. A POSITA would recognize that changing ambient light conditions could interfere with accurate touch detection, a problem alluded to in Gettemy. Carstedt provided a known, elegant solution for this exact issue. Therefore, a POSITA would have been motivated to incorporate Carstedt’s dynamic thresholding technique into the base system to enhance its reliability and functionality across different lighting environments without adding significant hardware complexity.
  • Expectation of Success: Success was predictable because Carstedt’s teachings involved implementing well-understood software algorithms for signal processing. Integrating these algorithms into the processor of the Gettemy/Philipp system to adjust thresholds based on ambient light sensor readings would have been a straightforward exercise for a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that the Board should not exercise discretionary denial under 35 U.S.C. §325(d) or the Fintiv factors.
• §325(d): Petitioner asserted denial was improper because two of the three primary references (Philipp and Carstedt) were never before the examiner. While Gettemy was cited in a late-stage Information Disclosure Statement (IDS), the prosecution record was silent on its teachings, indicating the examiner overlooked its relevance. Petitioner specifically pointed to Gettemy's disclosure of receiving reflected light "through at least one layer of the display panel," a limitation added by the applicant late in prosecution to secure allowance, as evidence of material examiner error.
• Fintiv: Petitioner contended that denial based on a parallel district court case was unwarranted because investment in the litigation was minimal, with discovery not yet open. Further, the estimated trial date was distant, and Petitioner stipulated not to pursue in court the same invalidity grounds raised in the IPR. Petitioner also noted that the IPR challenges significantly more claims than are asserted in the parallel litigation, making the Board the more efficient forum for resolving the patentability of the challenged claims.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 6-15, and 18-21 of Patent 10,156,931 as unpatentable under 35 U.S.C. §103.