Neodron, Ltd.

Patent Trials and Appeals Board

Sep 15, 2020

IPR2020-00282 (P.T.A.B. Sep. 15, 2020)

Trials@uspto.gov Paper 13
571-272-7822 Entered: September 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD. and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,
v.
NEODRON LTD.,
Patent Owner.

IPR2020-00282
Patent 7,821,502 B2

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(c)–(d)
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INTRODUCTION
Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
(“Samsung” collectively) filed a Petition (Paper 4, “Pet.”) under 35 U.S.C.
§§ 311–319 for inter partes review of claims 1–21 of U.S. Patent No.
7,821,502 B2 (Ex. 1001, “the ’502 patent”). Patent Owner Neodron Ltd.
(“Neodron”) filed a Preliminary Response (“Prelim. Resp.”). Paper 8. By
our authorization, Samsung filed a Reply limited to addressing issues that
Neodron raised as to the requirement under 37 C.F.R. § 104(b)(3) to specify
“[h]ow the challenged claim is to be construed.” (Paper 9, “Reply”).
Neodron filed a similarly limited Sur-Reply. Paper 10. On June 11, 2020, we
denied the Petition on the ground that Samsung did not demonstrate a
reasonable likelihood of prevailing in proving that at least one challenged
claim of the ’502 patent is unpatentable. Paper 11 (“Decision” or “Dec.”),
19.
Samsung has filed a Request for Rehearing (Paper 12, “Req.”). When
a party requests rehearing on a decision on whether to institute inter partes
review, we “review the decision for an abuse of discretion.” 37 C.F.R.
§ 42.71(c) (2019). There is an abuse of discretion if we have made “a clear
error of judgment in weighing relevant factors or in basing [our] decision on
an error of law or on clearly erroneous factual findings.” Bayer CropScience
AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017)
(quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d
1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of
showing a decision should be modified lies with the party challenging the
decision,” and “[t]he request must specifically identify all matters the party
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believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).
Samsung requests rehearing on two grounds: (1) that we
misapprehended the meaning of “row wrap-around connections” and mis-
applied that interpretation in our obviousness analysis as to Barkan1 alone,
and (2) that we “misapprehended or overlooked the evidence supporting
Dr. Wolfe’s opinions concerning the motivation to combine Barkan and
Tagg.”2 Req. 1.
We have considered Samsung’s arguments, and they do not persuade
us of any abuse of discretion in our Decision. Therefore, the Request for
Rehearing is denied.
DISCUSSION
A. WHETHER WE ABUSED OUR DISCRETION IN CONSTRUING “ROW
WRAP-AROUND CONNECTIONS” AND APPLYING THAT TERM TO BARKAN
Limitation 1C of the ’502 patent recites “wherein row sensing
electrodes of sensing cells at opposing ends of at least one of the rows are
electrically coupled to one another by respective row wrap-around
connections made outside of the sensing area.” Ex. 1001, 12:23–26
(emphasis added).
As we noted in our Decision, the Petition did not propose an explicit
construction for any term in the challenged claims, including “row wrap-
around connections.” See Dec. 9 (citing Pet. 10–11 & n.2). However,

1 Barkan et al., US 3,757,322, issued Sept. 4, 1973 (Ex. 1004, “Barkan”).
2 Tagg et al., US 2003/0067451 A1, published Apr. 10, 2003 (Ex. 1007,
“Tagg”).
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Samsung argued that Figure 23 of Barkan disclosed this limitation, and
provided an annotated version of Barkan’s Figure 23, which we reproduce
below:

Pet. 26. Figure 23 is a fragmentary plan view of a portion of touch-sensitive
overlay 152. Ex. 1004, 10:14–17, 27:1–2. Overlay 152 includes an array of
transparent contact areas 154, each of which “is composed of two
electrically and physically discrete contact sub-areas 156, 158” designated as
X and Y contact sub-areas, respectively. Id. at 27:5–6, 27:50–52. According
to Barkan, “[a]ll of the X contact sub-areas in any given X row are
connected by a transparent electrically conductive lead 160,” and the Y
columns are similarly connected by transparent vertical lead 162. Id. at
27:53–57. Leads 160 and 162 “extend to the periphery of the transparent
electrically non-conductive substrate or supporting panel 164.” Id. at 27:58–
59.
In the above annotated version of Figure 23, Samsung has added a red
dashed box including all visible sensing cells 154, and most of connecting
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conductive leads 160 and 162, but excluding the uppermost row lead 160
(which Samsung has highlighted in yellow) and the right-most column lead
162. In its Petition, Samsung argued that a person of ordinary skill in the art
would have understood that yellow-highlighted lead 160 is a “wrap-around
connection” because it “connects the X contact areas on the left and right
ends of the uppermost row,” which Samsung highlighted in green. Pet. 27.
We did not find this argument persuasive, because “Samsung’s
application of limitation [1C] to Barkan fails to clearly assign any meaning
to the term ‘wrap-around connection’ that distinguishes that limitation from
the requirement in limitation [1B] that ‘the row sensing electrodes of sensing
cells in the same row [are] electrically coupled together.’” Pet. 15 (quoting
Ex. 1001, 12:20–22) (citing Stumbo v. Eastman Outdoors, Inc., 508 F.3d
1358, 1362 (Fed. Cir. 2007) (stating that construing a claim term in a way
that would render other terms superfluous is “a methodology of claim
construction that this court has denounced”)).
In its Request for Rehearing, Samsung makes two arguments
regarding our treatment of the term “row wrap-around connection”: (1) that
we incorrectly accepted Neodron’s interpretation of the term, Req. 3–9; and
(2) that the plain and ordinary meaning of limitation 1C does not require a
connection distinct from the row connections of limitation 1B, id. at 9–12.
For the reasons below, we do not find either argument persuasive in showing
an abuse of discretion.
1. Construction of “Row Wrap-Around Connections”
First, Samsung argues it has “consistently asserted that ‘row wrap-
around connections’ should be accorded its plain and ordinary meaning, i.e.,
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connections that wrapped around other electrodes in the row.” Req. 3 (citing
Pet. 10–11, 25–30).
We disagree. Nowhere in the cited passages in the Petition does
Samsung argue that we should construe the term “row wrap-around
connections” according to the explicit construction that Samsung now
suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather,
Samsung argued that “Petitioners do not believe any term requires explicit
construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms
in the challenged claims should be construed according to their plain and
ordinary meaning. See Reply 1, 4–5. However, apart from arguing that
Samsung had proposed construing limitation 1C in the co-pending district
court proceeding according to its plain and ordinary meaning,3 Samsung did
not propose any specific construction for the phrase “row wrap-around
connection,” or point to any evidence as to what the ordinary and customary
meaning of that phrase was to a person of ordinary skill in the art. Therefore,
we decline to adopt Samsung’s new proposed construction on rehearing.
Next, Samsung argues that its newly proposed construction is “[i]n
stark contrast” to Neodron’s argument “that the ‘row wrap-around
connections’ had to wrap around the sensing area (a limitation found
nowhere in the plain language of claim 1).” Req. 5 (citing Prelim. Resp. 12).
Because Samsung’s new construction was not on the preliminary
record when we made our Decision, we do not find this argument persuasive
in showing an abuse of discretion.

3 In the co-pending litigation, Samsung’s proposed construction for
limitation 1C is simply a verbatim copy of limitation 1C. See Reply 1;
Ex. 1009, 45.
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Also, our Decision did not rely on construing the term “row wrap-
around connections” to require the connections to wrap around the sensing
area. Instead, we agreed with Neodron that Samsung’s approach in applying
claim 1 to Barkan fails to give any meaning to the term “wrap-around.” See
Dec. 14–15 (citing Prelim. Resp. 8); see also Prelim. Resp. 11–12 (citing In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be
considered in judging the patentability of that claim against the prior art.”)).
We simply agreed with Neodron that Samsung failed to adequately explain
what the connection wraps around, or how “row wrap-around connections”
are any different from the row connections recited in limitation 1B. See Pet.
15.
In the Request for Rehearing, Samsung specifically suggests, for the
first time, that it is the middle electrode that lead 160 wraps around: “[T]he
yellow-highlighted lead 160 . . . extends from the top of the row electrode at
the left end of [the] upper row, wraps around the row electrode at the middle
of the upper row, and then connects to the top of the electrode at the right
end of the row.” Req. 11 (emphasis added) (citing Pet. 26). Because
Samsung has not persuasively shown that it made this argument in the
Petition, it is untimely and we do not consider it on rehearing.
Next, Samsung now argues that in the co-pending district court
litigation, Neodron has changed its position and “agrees that the element 1C
‘row wrap-around connections’ need only wrap around the other electrodes
in the row.” Req. 6–7 (citing Ex. 1009, 6). Samsung cites a Joint Claim
Construction Statement from the co-pending litigation, dated after our
Decision, arguing that “[g]ood cause exists to consider this exhibit, as it
demonstrates an about face concerning Patent Owner’s construction . . . ,
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which Patent Owner previously presented in an inconsistent manner in this
proceeding.” Id. at 7 n.1.
We do not find good cause to admit and consider the Joint Claim
Construction Statement on rehearing, because our Decision was based on
Samsung’s lack of specificity in explaining why or how Barkan’s row
connections are “wrap-around connections.” Neodron’s alleged change of
position in the co-pending litigation was not part of the record at the time of
our Decision, so it is not a matter that we could have misapprehended or
overlooked. Submission of the document would also be problematic because
under our rules, Neodron is not provided with a right to respond to any new
evidence submitted with a request for rehearing. See 37 C.F.R. § 42.71(d).
Next, Samsung argues that “each of the leads 160 in Figure 23 of
Barkan is a ‘row wrap-around connection’ because they each electrically
couple the row sensing electrodes of the end sensing cells in each row and
wrap around the other electrodes in the row.” Req. 7 (emphasis added)
(citing Pet. 25–27; Reply 4–5). In other words, Samsung argues that “every
one of these traces 160, 162 is a wrap-around connection because each one
wraps around other electrodes in the respective row or column.” Id.
But this reflects a shift from the arguments that Samsung made in the
Petition. There, Samsung argued that the uppermost lead 160, highlighted in
yellow, was a “wrap around connection” because “the highlighted lead
connecting these X contact sub-areas connects the X contact areas on the left
and right ends of the upper most row.” Pet. 27; see also Reply 4 (“For
[limitation 1C], the petition identifies the uppermost ‘lead 160’ in Figure 23
of Barkan, which is an electrical conductor that connects the X contact sub-
areas . . . at opposite ends of the uppermost row . . . .”). Because Samsung
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does not demonstrate that its new argument about “each of the leads” was
part of its Petition, we do not consider it on rehearing.
Next, Samsung argues that “[n]othing in the Petition’s application of
Barkan to claim 1 renders any part of claim 1 superfluous.” Req. 8. But in
making this argument, Samsung relies on its new interpretation in which
each lead 160, not just the uppermost one, is a “row wrap-around
connection.” See id. at 8–9. Since this is a new interpretation that Samsung
did not express in the Petition, this argument does not persuade us that we
abused our discretion.
2. Interplay Between Limitations 1B and 1C
Limitation [1B] recites a substrate where “the row sensing electrodes
of sensing cells in the same row [are] electrically coupled together.”
Ex. 1001, 12:20–22. As part of the rationale in our Decision, we determined
that “Samsung’s application of limitation [1C] to Barkan fails to clearly
assign any meaning to the term ‘wrap-around connection’ that distinguishes
that limitation from the requirement in limitation [1B] that “the row sensing
electrodes of sensing cells in the same row [are] electrically coupled
together.” Dec. 15 (quoting Ex. 1001, 12:20–22) (citing Stumbo v. Eastman
Outdoors, 508 F.3d at 1362).
Samsung argues that we misapprehended the evidence by
“interpret[ing] elements 1B and 1C to require separate and distinct
connections.” Req. 9. According to Samsung, “[n]othing in the plain
language of the claims requires that the coupling recited by element 1B and
the coupling of element 1C be achieved by distinct connections.” Id.
Samsung contends that our interpretation of the claim “is inconsistent with
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all disclosed embodiments of the ’502 Patent.” Id.; see also id. at 10–12
(citing Ex. 1001, 6:53–59, Figs. 3, 7, 8; Ex. 1004, 23; Pet. 24–30).
Samsung’s arguments do not address the rationale of our Decision.
We did not deny institution because Barkan’s row connections
corresponding to the connections in limitations 1B and 1C were not separate
and distinct. Rather, we determined that Samsung’s interpretation of
Barkan’s Figure 23 in which lead 160 is a “row wrap-around connection”
does not give sufficient meaning to the term “wrap-around” that
distinguishes a “wrap-around connection” from any other connection,
including the connections in limitation 1B. Dec. 15. Thus, Samsung’s
interpretation in the Petition rendered the term “wrap-around” superfluous.
See id. (citing Stumbo v. Eastman Outdoors, 508 F.3d at 1362).
Samsung’s new interpretation of Barkan, which identifies every lead
160 and not just the uppermost one as a “row wrap-around connection,” does
not help in this regard. Samsung still has not adequately explained, either on
the original record or in its Request for Rehearing, how a “wrap-around”
connection is different from a connection that is not “wrap-around,” or how
leads 160 “wrap around” each of the rows in Barkan’s Figure 23.
Samsung also argues that we “adopted an interpretation that is
inconsistent with all the disclosed embodiments of the ’502 Patent.” Req. 9.
In particular, Samsung points to Figure 3 of the ’502 patent, which we
reproduce below with Samsung’s annotations:
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Req. 10. Figure 3 is a schematic plan view of two-dimensional touch-
sensitive capacitive position sensor 22. Ex. 1001, 5:37–38. Sensor 22 has an
arrangement of electrodes 26, which are divided into four columns (X1–X4)
and five rows (Y1–Y5) of sensing cells 28. Id. at 5:58–60.
According to Samsung, in row Y2, “the row sensing electrodes in the
middle two columns X2 (highlighted red) and X3 (highlighted green) are not
electrically coupled to each other by any connections other than the row
wrap-around connections 38 (highlighted yellow).” Req. 10 (citing Ex. 1001,
6:53–59, Fig. 3). So Samsung argues that in Figure 3, “a single row wrap-
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around connection 38 serves to provide the coupling required by both
elements 1B and 1C.” Id. (citing Ex. 1001, 6:53–59, Fig. 3).
First, Samsung has not pointed to any place in the record where it has
previously made this argument, so it is untimely on rehearing. See 37 C.F.R.
§ 42.71(d) (2019).
Second, as mentioned above, we did not deny institution because
Barkan’s row connections corresponding to the connections in limitations
1B and 1C were not separate and distinct. Rather, we determined that
Samsung did not adequately explain why Barkan’s leads 160 are “row wrap-
around connections.”
Samsung’s new argument with respect to Figure 3 does not help in
that regard. As Neodron pointed out in its Preliminary Response, during
prosecution of the ’502 patent, the Examiner rejected claim 1 over Mabusth4
which, analogously to Barkan, has a conductor for each column that
connects adjacent electrodes in that column to each other and then, on one
side, to an external connection. See Prelim. Resp. 10 (citing Ex. 1008, 85).
The applicant overcame the rejection by arguing that the cited figure in
Mabusth “shows only one end of a column of electrode plates . . . coupled to
something other than an adjacent electrode plate.” Id. (emphasis omitted)
(quoting Ex. 1008, 85). Thus, the applicant argued that “Mabusth does not
show or teach electrodes of sensing cells at opposing ends of a row (or
column) connected using a wrap-around connection, in contrast to the . . .
elements of independent claim 1.” Id. (quoting Ex. 1008, 59).

4 Mabusth, US 4,550,221, issued Oct. 29, 1985 (Ex. 2003)
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Like the column-connecting leads in Mabusth—but unlike row wrap-
around connections 38 in Figure 3 of the ’502 patent—Barkan’s row-
connecting leads 160 simply connect together all the adjacent sensor cells in
the row, and then to an external connection, without any detours while
traversing each adjacent sensor cell along the row. The prosecution history
of the ’502 patent suggests that such connections are not “wrap-around
connections.”
For the above reasons, Patent Owner does not persuade us that we
misapprehended the meaning of “row wrap-around connections” or that we
clearly erred in applying the limitation to the teachings in Barkan.
B. WHETHER WE MISAPPREHENDED OR OVERLOOKED THE
EVIDENCE SUPPORTING DR. WOLFE’S OPINIONS CONCERNING THE
MOTIVATION TO COMBINE BARKAN AND TAGG
In the Petition, Samsung argued that Tagg discloses row wrap-around
connections and that it would have been obvious to incorporate those
connections into Barkan’s panel design. See Pet. 21, 28–30. Samsung argued
that there was a motivation to combine the references because “these
connections would be beneficial in minimizing RC delay, and would thereby
enable the use of lengthier columns and rows of electrodes.” Id. at 21 (citing
Ex. 1002 ¶ 51 (declaration of Dr. Wolfe)).
We determined that Samsung had not provided sufficient evidence of
its proposed motivation to combine the two references. See Dec. 16
(“[N]either Samsung nor Dr. Wolfe supports this conclusion with any
evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l,
Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In
particular, we found that “Dr. Wolfe does not explain how or why the
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combination of Barkan and Tagg would minimize RC delay or allow for the
use of lengthier columns and rows of electrodes, or cite to any facts, data, or
authorities to support that opinion.” Dec. 17. We stated that “there is no
evidence in the record suggesting that RC delay was a recognized problem
. . . or that a person of ordinary skill in the art would have understood that a
connection to both sides of a row of electrodes would be a solution to that
problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as
to how a person of ordinary skill in the art would have modified Barkan’s
leads 160 to incorporate external connections such as those in Tagg.” Id.
(citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir.
2017)).
Samsung argues that we “overlooked Dr. Wolfe’s extensive
knowledge and experience in the field of capacitive position sensors.”
Req. 12–13 (citing Ex. 1002 ¶¶ 3–16). We did not overlook Dr. Wolfe’s
knowledge or background. Our Decision was not based on any deficiency in
his expertise or credibility, but on the lack of a sufficiently specific
explanation in his declaration and in the Petition.
To bolster Dr. Wolfe’s testimony, Samsung cites what it characterizes
as applicant’s admitted prior art in the ’502 patent. See Req. 13–14 (citing
Ex. 1001, 7:20–26, 7:35–37). Samsung also cites Binstead,5 which according
to Samsung is prior art mentioned in the ’502 patent. Id. at 14 (citing
Ex. 1001, 1:49–56).
But Samsung does not point to any instance, in its Petition, in which
Samsung referred to Binstead or the other passages of the ’502 patent as part

5 Binstead, US 5,844,506, issued Dec. 1, 1998 (Ex. 1010, “Binstead”).
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of its theory of obviousness. Moreover, whatever the content of Binstead and
these passages are, their appearance in the ’502 patent does not take the
place of Samsung articulating a specific rationale in the Petition, based on
that evidence, for why a person of ordinary skill in the art would have
combined the separate teachings of Barkan and Tagg. See Magnum Oil, 829
F.3d at 1380.
We conclude that we did not misapprehend or overlook the evidence
supporting Dr. Wolfe’s opinions concerning the motivation to combine
Barkan and Tagg. And Samsung has not persuasively shown any abuse of
discretion in our Decision.
ORDER
In consideration of the foregoing, it is hereby
ORDERED that Patent Owner’s Rehearing Request is denied.
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For PETITIONER:
Marc Pensabene
Nicholas J. Whilt
O’MELVENY & MYERS LLP
mpensabene@omm.com
nwhilt@omm.com

James M. Heintz
Robert Buergi
DLA PIPER LLP
jim.heintz@dlapiper.com
robert.buergi@dlapiper.com

For PATENT OWNER:
Kent Shum
Neil A. Rubin
RUSS AUGUST & KABAT
kshum@raklaw.com
nrubin@raklaw.com