Samsung Electronics Co Ltd v. Power2B Inc

1. Case Identification

• Case #: IPR2022-00405
• Patent #: 8,547,364
• Filed: January 5, 2022
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): Power2B Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Electronic Input Device
• Brief Description: The ’364 patent describes an electronic input device, such as a touch screen computer, that uses a light-emitting stylus. The device includes a sensor array positioned at the periphery of an input area to detect an electromagnetic radiation pattern from the stylus to determine its position, orientation, shape, and size.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bird and Ishii - Claims 1-5, 8-11, 14-17, and 21 are obvious over Bird in view of Ishii

• Prior Art Relied Upon: Bird (Patent 5,959,617) and Ishii (EP0572182).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bird, an input system with a light pen and sensing array, teaches nearly all elements of the independent claims. However, to meet the limitation of a "sensor array positioned at the periphery," Petitioner asserted that Bird expressly teaches using peripheral light sensors as described in Ishii. Ishii discloses an optical input apparatus with waveguides that conduct light to photosensors located in the end portions (periphery) of a substrate. Petitioner also contended that Bird alone teaches the limitation of an "elliptical shape having an eccentricity that is a function of the orientation of the input object," explaining that Bird discloses that tilting the pen elongates the light spot, which geometrically changes its eccentricity.
  • Motivation to Combine: Petitioner argued a POSITA would combine the references because Bird explicitly and unambiguously 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 POSITA would have had a high expectation of success by simply following Bird's express instruction to substitute the peripheral light sensors of Ishii for the light sensing elements of Bird.

Ground 2: Obviousness over Geaghan and Ishii - Claims 1-11, 13-17, 20, and 21 are obvious over Geaghan in view of Ishii

• Prior Art Relied Upon: Geaghan (Application # 2005/0110781) and Ishii (EP0572182).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Geaghan, which discloses a light-emitting stylus and a user input device with a sensor array, teaches the core functionality of detecting a conical light beam from a stylus to determine its position, orientation, and the shape/size of the resulting light pattern. Like the Bird-based grounds, Petitioner relied on Ishii to teach the specific limitation of placing sensor arrays at the periphery of the input area, using waveguides. Geaghan was argued to teach sensing changes in the light pattern’s size, shape, and orientation as the stylus moves, including the formation of an elliptical spot when the stylus is at an angle.
  • Motivation to Combine: A POSITA would combine Geaghan with Ishii as a simple and predictable design choice. Ishii was presented as disclosing a known alternative display configuration with peripheral sensors that solves problems related to thickness, weight, and power consumption, making it an attractive and obvious component to integrate with a system like Geaghan's.
  • Expectation of Success: The combination involved applying a known sensor configuration (Ishii) to a similar light-pen system (Geaghan) to achieve predictable benefits, giving a POSITA a reasonable expectation of success.

Ground 3: Obviousness over Bird, Ishii, and Kameyama - Claim 12 is obvious over Bird and Ishii in further view of Kameyama

• Prior Art Relied Upon: Bird (Patent 5,959,617), Ishii (EP0572182), and Kameyama (Japanese Published Patent Application, JPH05-265637).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the Bird-Ishii combination to address dependent claim 12, which requires input circuitry operative to "calculate the orientation of the input object from the elliptical eccentricity." While Bird-Ishii was argued to teach that eccentricity is a function of orientation, Petitioner asserted that Kameyama provides the missing teaching of explicitly calculating it. Kameyama discloses a 3D pointing device that captures coordinate points of a light spot's boundary to determine the "position and posture data" of the light source using mathematical formulas.
  • Motivation to Combine: A POSITA, having combined Bird and Ishii, would look to solutions like Kameyama to improve the system. Kameyama provided a known method for deriving precise orientation data from a light spot, and a POSITA would be motivated to incorporate its calculation process to add valuable user interface features.
  • Expectation of Success: A POSITA would expect success in applying Kameyama's established calculation methods to the elliptical light spot data generated by the Bird-Ishii system to determine orientation.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Bird-Ishii in further view of Geva (for sensing light intensity) and Mulla (for zoom functions), as well as corresponding combinations based on Geaghan-Ishii in view of Kameyama, and Mulla.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued the ’364 patent is not entitled to its claimed priority date of June 9, 2003 (the PCT filing date), but instead only to December 6, 2004 (the first U.S. application filing date). Petitioner contended the priority applications lack written description support for two key limitations added during prosecution: (1) a sensor array positioned "at the periphery" that is also operative to indicate the pattern's position, size, shape, and orientation on the input area, and (2) an electromagnetic radiation pattern having an "elliptical shape with an eccentricity that is a function of the orientation of the input object." This argument, if successful, establishes Geaghan as valid prior art under §102(e).

5. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued against discretionary denial, asserting that the Examiner made material errors during prosecution. Specifically, the Examiner allegedly overlooked Bird's express teaching to use the peripheral sensors of Ishii, which addresses the key "peripheral sensor array" limitation added to overcome prior art. Second, the Examiner overlooked Bird's clear disclosure that tilting the pen creates an elliptical spot whose elongation (and thus eccentricity) is a function of the pen's orientation. Because these overlooked teachings render obvious the very limitations added to secure allowance, Petitioner argued denial is inappropriate.
• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court case was in its earliest stages with no trial date set, no substantive orders issued, and minimal investment by the parties. Petitioner also submitted a stipulation that it would not pursue in district court any obviousness ground that includes Bird or Geaghan as a primary reference, thereby minimizing overlap and promoting efficiency.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of the ’364 patent as unpatentable under §103.