Samsung Electronics Co Ltd v. Power2B Inc

1. Case Identification

• Case #: IPR2022-00300
• Patent #: 7,952,570
• Filed: December 9, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.; and Samsung Electronics America, Inc.
• Patent Owner(s): Power2B Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Electronic Input Device with Light Emitting Stylus
• Brief Description: The ’570 patent discloses an electronic device, such as a touch screen computer, that uses a light-emitting stylus for user input. The device determines the stylus’s position and orientation by analyzing the electromagnetic radiation pattern it projects onto an input area, using light sensors positioned around the perimeter of the device's display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bird and Ishii - Claims 1, 2, 9, 10, 12, 13, 16, and 18-22 are obvious over Bird in view of Ishii.

• Prior Art Relied Upon: Bird (Patent 5,959,617) and Ishii (EP Patent Publication No. EP0572182).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bird, which was previously used by the Examiner to reject the original claims, discloses an electronic input device with a light pen that projects a beam onto a sensor array to determine position and orientation. Petitioner contended the key limitations added during prosecution to secure allowance—a sensor array "positioned outside said input area" and a conical beam creating an "elliptical pattern having elliptical eccentricity which is a function of the orientation"—are also expressly taught or rendered obvious by the combination. Bird explicitly suggests using "peripheral light sensors" as described in Ishii, which discloses photosensors at the end of optical waveguides, thus positioning them outside the input area. Furthermore, Bird teaches that tilting its pen changes the shape of the light spot from circular to elliptical, and that further tilting elongates the ellipse, which Petitioner asserted directly maps to the claimed relationship between orientation and elliptical eccentricity.
  • Motivation to Combine: The motivation was explicit, as Bird expressly teaches that its light sensing array may be of a kind that uses waveguides to "conduct input light to peripheral light sensors, for example as described in aforementioned EP-A-0572 182 [Ishii]."
  • Expectation of Success: A person of ordinary skill in the art (POSITA) would have had a high expectation of success in following Bird's express teaching to incorporate the peripheral sensor design of Ishii into Bird's own system.

Ground 2: Obviousness over Bird, Ishii, and Geva - Claims 3-8, 11, and 15 are obvious over Bird and Ishii in further view of Geva.

• Prior Art Relied Upon: Bird (Patent 5,959,617), Ishii (EP Patent Publication No. EP0572182), and Geva (GB Published Patent Application GB 2299856).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Bird-Ishii combination to address dependent claims requiring the sensing and use of light intensity. The Bird-Ishii combination provides the base system with a light pen and peripheral sensors. Geva was introduced for its teachings on using a peripheral light sensor array to measure light intensity distribution across an input area to determine an object's position. Petitioner argued that adding Geva's intensity measurement techniques to the Bird-Ishii system would render obvious the limitations related to providing an output indication of intensity and using that intensity to determine position, shape, and size.
  • Motivation to Combine: A POSITA would combine Geva's teachings with the Bird-Ishii system to achieve the known benefits of using light intensity for more accurate position detection. Bird's express direction to use a peripheral sensor system like Ishii's would lead a POSITA to consider other similar peripheral systems, like Geva, to improve functionality.
  • Expectation of Success: The combination involved applying a known sensing technique (intensity measurement from Geva) to a known type of device (the optical stylus system of Bird-Ishii), which would have been a predictable implementation for a POSITA.

Ground 3: Obviousness over Geaghan and Ishii - Claims 1-12 and 15-22 are obvious over Geaghan in view of Ishii.

• Prior Art Relied Upon: Geaghan (Application # 2005/0110781) and Ishii (EP Patent Publication No. EP0572182).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Geaghan as an alternative primary reference that discloses a user input device with a light-emitting stylus that emits a conical beam. Geaghan teaches that when the stylus is held at an angle, it forms an elliptical spot on a sensor array, and the properties of this ellipse (e.g., length-to-width ratio) are used to determine the stylus's tilt angle and orientation. As in Ground 1, Ishii was cited for its disclosure of peripheral light sensors positioned outside the main input area, satisfying the key "positioned outside" limitation.
  • Motivation to Combine: A POSITA would have been motivated to combine Geaghan's stylus system with Ishii's peripheral sensor arrangement as a simple design choice. Ishii itself suggests its design helps solve problems related to device thickness, weight, and power consumption, providing a clear reason to incorporate its sensor layout into a system like Geaghan's.
  • Expectation of Success: Combining the known sensor configuration from Ishii with the stylus system of Geaghan would have been a straightforward and predictable design modification for a POSITA seeking to create a thinner, more efficient device.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that add Kameyama (Japanese Published Patent Application JPH05-265637) to the Bird/Ishii and Geaghan/Ishii combinations to explicitly teach circuitry operative to calculate orientation from elliptical eccentricity.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued the challenged claims are not entitled to the 2003 priority date of the parent PCT application and are instead limited to a 2004 U.S. filing date. This contention was critical for establishing Geaghan (filed in late 2003) as §102(e) prior art. Petitioner asserted the priority application lacks written description support for two key limitations added during U.S. prosecution:
  • A sensor array that is both "positioned outside" the input area and operative to sense the radiation pattern on the input area.
  • A conical beam producing an elliptical pattern whose eccentricity is a function of the input object's orientation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §325(d) and the Fintiv factors.
  • §325(d): Petitioner contended that denial was improper because the Examiner committed material error during prosecution. Specifically, the Examiner allegedly overlooked Bird's express teaching to incorporate Ishii's peripheral sensors and Bird's clear disclosure that changing a pen's orientation alters the eccentricity of the resulting elliptical spot—the very limitations added to overcome the Examiner's rejections.
  • Fintiv Factors: Petitioner argued the factors weighed strongly against denial because the parallel district court case was in its earliest stages with no trial date set, minimal investment by the court and parties, and a stipulation from Petitioner not to pursue in district court any obviousness ground including the primary references (Bird or Geaghan).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of Patent 7,952,570 as unpatentable under §103.