Denying-in-Part Institution on Incorporation by Reference Grounds IPR2015-01739


Takeaway: In determining that a Petition had incorporated by reference 10 pages from other documents, the Board declined to consider the last 10 pages of the Petition, which resulted in granting institution of some grounds of unpatentability, but the incomplete analysis for some additional grounds resulted in those grounds not being instituted.

In its Decision, the Board granted institution of inter partes review of each of the challenged claims 1-25 of the ’811 patent, because the Board determined Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of each of those claims. The ’811 patent “is directed to methods and devices for detecting a position-based attribute of a finger, stylus, or other object with a touchpad or other sensor having a touch-sensitive region that includes a plurality of electrodes.”

The Board began with claim interpretation, stating that the claims are given their broadest reasonable construction in light of the specification, and that only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Accordingly, the Board only discussed two terms. With regard to the term “distinct digital codes,” the Board noted that Petitioner urged that no special construction is necessary and Patent Owner did not offer a construction, before construing the term as “digital codes that are different from one another. “ With regard to the term “mathematically independent,” Petitioner contended that the term means “substantially orthogonal based on the definition of “substantially orthogonal” provided in the specification. However, the Board noted that the definition of “substantially orthogonal” in the specification appears to be mapped to “meaningful independent results,” while “orthogonal” appears to be mapped to “independent results.” Accordingly, the Board construed “mathematically independent” as “orthogonal.”

The Board then discussed the first two obviousness grounds, and determined that Petitioner had sufficiently articulated reasoning with rational underpinnings to combine the teachings of Smith, Mulligan, Chen, and Jaeger to show a reasonable likelihood that it would prevail in establishing unpatentability of claims 1-25.

The Board then discussed the remaining two obviousness grounds. The Board explained that the rules governing the conduct of an inter partes review proceeding were to promote fairness and efficiency, including the sixty page limit and the prohibition against incorporating arguments from one document into another. In this case, the Board determined that Petitioner “used incorporation by reference to obtain for itself seven additional pages from Exhibit 1017, and three additional pages from paragraphs 31-35 of the Declaration of Dr. Smith.” The Board further determined that those ten pages contain essential material. For example, “[p]aragraphs 31-35 of Dr. Smith’s Declaration present and discuss the level of ordinary skill in the art,” while the Petition “merely states ‘[s]ee Smith Decl. at 31-35[,]’ in the section labeled ‘C. LEVEL OF ORDINARY SKILL IN THE ART.’” The Board noted that if the ten extra pages were “taken from the Petition, starting from the end, Petitioner would not have a complete analysis under this alleged ground of obviousness, even for one claim.”

Using its discretion, the Board decided to not consider pages 51-60 of the Petition to ensure that petition did not include more than sixty pages. With those pages not considered, the analysis for the second two obviousness grounds were incomplete, and thus the Board declined to institute those grounds.

Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2015-01739
Paper 8: Decision Granting Institution of Inter Partes Review
Dated: February 16, 2016
patent 8,558,811 B2
Before: Jameson Lee, Bart A. Gerstenblith, and Charles J. Boudreau
Written by: Lee
Related Proceedings: Synaptics Inc. v. Goodix Technology Inc., No. 5:15-cv-01742 (N.D. Cal.); In the Matter of Certain Touchscreen Controllers and Products Containing the Same, Inv. No. 337-TA-957 (ITC)