Samsung Electronics Co Ltd v. Solas OLED Ltd

1. Case Identification

• Case #: IPR2021-01254
• Patent #: 8,526,767
• Filed: July 13, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): Solas OLED Ltd.
• Challenged Claims: 1-14

2. Patent Overview

• Title: Gesture Recognition Using State Machine Modules
• Brief Description: The ’767 patent relates to a gesture recognition system using a state machine approach. The system employs distinct single-touch state machines to process individual touches and a separate multi-touch state machine that receives outputs from the single-touch machines to recognize complex multi-touch gestures.

3. Grounds for Unpatentability

Ground 1: Obviousness over Baltierra and Katou - Claims 1 and 9-14 are obvious over Baltierra in view of Katou.

• Prior Art Relied Upon: Baltierra (Application # 2009/0284478) and Katou (JP Patent Publication No. H09-231004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baltierra discloses the core architecture of the challenged claims. Baltierra teaches a multi-touch system where each tactile contact has its own "contact state machine," which corresponds to the claimed "one-touch state-machine module." Baltierra further discloses a "monitoring state machine" that receives outputs from these individual machines to process multi-touch inputs and recognize gestures like pinching, corresponding to the claimed "multi-touch state-machine module." Petitioner asserted that to the extent Baltierra is found not to explicitly teach certain gesture recognition functions, Katou provides this teaching by disclosing distinct "gesture decoding means" for single-touch gestures and "composite gesture decoding means" for multi-touch gestures based on outputs from the single-touch modules.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Baltierra's state machine architecture with Katou's more explicit gesture decoding logic to improve the functionality and accuracy of gesture recognition, which was a known objective in the field. Both references address the same technical problem of gesture detection on touch screens using a modular, state machine-based approach.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves implementing known gesture decoding logic within a well-understood state machine framework, a common and predictable software design task.

Ground 2: Obviousness over Westerman and Katou - Claims 1 and 9-14 are obvious over Westerman in view of Katou.

• Prior Art Relied Upon: Westerman (Application # 2008/0036743) and Katou (JP Patent Publication No. H09-231004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Westerman provides an alternative primary basis for unpatentability. Westerman discloses a system that detects a "first touch" and a "second touch" (e.g., from different hands), each associated with its own arrangement of contacts and gesture sets, mapping to the claimed first and second "one-touch state-machine modules." Westerman’s control operation (Fig. 23) then processes these separate inputs to perform multi-touch actions like object rotation or zoom, which maps to the claimed "multi-touch state-machine module." As in Ground 1, Katou was cited to supplement any perceived deficiency by teaching a distinct module for processing combined single-touch outputs.
  • Motivation to Combine: A POSITA would combine Westerman's system with Katou's explicit disclosure of distinct single- and multi-touch decoding modules to create a more structured and modular system. This combination would follow the well-known "separation of concerns" software engineering principle, which was a common motivation for organizing complex software into distinct, specialized modules.
  • Expectation of Success: Success was expected because the combination involves a straightforward integration of known software modules to solve a common problem in touch-based interfaces, leveraging established programming paradigms.

Ground 3: Obviousness over Baltierra, Katou, and Warren - Claims 2-8 are obvious over Baltierra in view of Katou and Warren.

• Prior Art Relied Upon: Baltierra (Application # 2009/0284478), Katou (JP Patent Publication No. H09-231004), and Warren (Application # 2007/0176906).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets dependent claims 2-8, which add limitations such as an "idle-state module" and a "press-state module." Petitioner argued the Baltierra/Katou combination teaches the basis for these features, with Baltierra's "Zero Mode" (no tactile contact) corresponding to an idle state. Warren was introduced to explicitly teach these limitations, as it discloses an "IDLE state" and state transitions based on the presence, absence, or duration of touches. For example, Warren teaches transitioning from an IDLE state upon touch detection and returning to it upon removal of touch, mapping directly to claim 2. Warren also discloses state transitions based on touch duration (e.g., distinguishing a tap from a drag), mapping to the "press-state module" of claim 4.
  • Motivation to Combine: A POSITA would combine the state transition logic from Warren with the core Baltierra/Katou system to implement a more robust and conventional state machine. Incorporating an explicit idle state and recognizing touch duration were well-known techniques for improving the usability and reliability of touch-based user interfaces.
  • Expectation of Success: A POSITA would expect success, as integrating a standard feature like an idle state or duration-based logic into a gesture recognition system was a routine and predictable design modification.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 2-8 based on the combination of Westerman, Katou, and Warren, relying on similar design modification theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or the Fintiv factors.
• §325(d) Argument: Petitioner asserted that the primary prior art references, Baltierra and Westerman, were not before the Examiner during the original prosecution of the ’767 patent. Therefore, the core invalidity arguments presented in the petition are new and were not previously considered by the USPTO.
• Fintiv Argument: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court proceeding was in its earliest stages, with minimal investment by the parties or the court. Petitioner also stated its intent to file a motion to stay the district court case if the inter partes review (IPR) is instituted and argued that the strong merits of the petition weigh heavily in favor of institution to promote an efficient resolution.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-14 of Patent 8,526,767 as unpatentable under 35 U.S.C. §103.