UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner
`v .
`CYPRESS SEMICONDUCTOR CORPORATION
`Patent Owner
`
`Case IPR2014-01343
`Patent 8,519,973
`
`PATENT OWNER CYPRESS SEMICONDUCTOR CORP.
`RESPONSE
`
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`Case IPR2014-01343
`U.S. Patent No. 8,519,973
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`TABLE OF CONTENTS
`INTRODUCTION ...........................................................................................1
`
`OVERVIEW OF U.S. PATENT NO. 8,519,973 ............................................1
`
`I.
`
`II.
`
`A.
`
`B.
`
`C.
`
`Background of the Dispute....................................................................1
`
`Capacitive Touch Technology ..............................................................2
`
`Prosecution History...............................................................................7
`
`III.
`
`STATEMENT OF RELIEF REQUESTED ....................................................8
`
`A.
`
`Person Of Ordinary Skill In The Art.....................................................8
`
`IV. CLAIM CONSTRUCTION ............................................................................8
`
`A.
`
`How the claims are to be interpreted.....................................................8
`
`V.
`
`CLAIMS 1–8, 11, 12, and 14–20 ARE NOT OBVIOUS OVER BOIE
`AND BISSET ..................................................................................................9
`
`A.
`
`B.
`
`C.
`
`Overview of Boie ..................................................................................9
`
`Overview of Bisset ..............................................................................13
`
`Claim 1 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................19
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Petitioner Fails To Show That Boie Teaches A “Touch
`Screen Device” As In Claim 1..................................................20
`
`Petitioner Fails To Show That Bisset Teaches A “Touch
`Screen Device” As In Claim 1..................................................22
`
`Bisset Teaches Away From Use Of A “Touch Screen
`Device”......................................................................................23
`
`Bisset Does Not Teach Using Capacitance Variations.............25
`
`Petitioner Failed To Demonstrate Motivation To
`Combine Bisset with Boie ........................................................26
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`a.
`
`Dr. Wright’s Declaration Testimony Is Conclusory
`And Devoid Of Any Analysis ........................................27
`
`i.
`
`Dr. Wright Did Not Explain How Using
`Bisset’s Alleged Determination Of
`Capacitance Variations Would Provide Finer
`Resolution.............................................................31
`
`b.
`
`Dr. Wright’s Deposition Testimony Confirms That
`Resolution Is Determined by Factors Other Than
`Determining “Capacitance Variations” ..........................31
`
`D.
`
`Neither Boie Nor Bisset Teach The Subject Matter Of Claim 2 ........36
`
`1.
`
`2.
`
`Dr. Wright’s Declaration Testimony Is Conclusory.................44
`
`Dr. Wright’s Declaration Testimony Is Also Irrelevant ...........46
`
`Petitioner Does Not Even Attempt To Demonstrate Where
`Bisset Teaches The Limitations Of Claim 2 .......................................47
`
`Claim 3 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................48
`
`Claim 4 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................48
`
`Claim 5 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................48
`
`Claim 6 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................49
`
`Claim 7 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................49
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 8 ................................................................................................50
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 11 ..............................................................................................50
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`M. Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 12 ..............................................................................................51
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`N.
`
`O.
`
`P.
`
`Q.
`
`R.
`
`S.
`
`T.
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 14 ..............................................................................................51
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 15 ..............................................................................................51
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 16 ..............................................................................................51
`
`Claim 17 Is Not Rendered Obvious By The Combination Of
`Boie And Bisset...................................................................................52
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 18 ..............................................................................................52
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 19 ..............................................................................................52
`
`Neither Boie Nor Bisset Teach The Limitations Recited In
`Claim 20 ..............................................................................................53
`
`VI. CONCLUSION..............................................................................................54
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`TABLE OF AUTHORITIES
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312 (Fed. Cir.
`2012).............................................................................................................. 27, 44
`BAE Sys. Info. & Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, Case No.
`IPR2013-00175, (Paper 45, June 19, 2014)...........................................................9
`Graham v. John Deere Co., 383 U.S. 1 (1966) .......................................................26
`
`Hodosh v. Block Drug Co., Inc., 786 F.2d 1136 (Fed. Cir. 1986)...........................25
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004)..........................9
`In re Grasselli, 713 F.2d 731 (Fed. Cir. 1983)........................................................25
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ..............................................................27
`LinkedIn Corp. v. AvMarkets Inc., Case No. CBM2013-00025, (Paper 30,
`November 10, 2014) ..............................................................................................9
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, Case No. IPR2014-
`01562, Paper No. 11 (P.T.A.B., April 16, 2015) .................................................47
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).................9
`Synopsys Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 (P.T.A.B. Feb.
`22, 2013) ................................................................................................. 20, 21, 23
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012) .........9
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) .........25
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`Statutes
`
`35 U.S.C. § 103(a) .....................................................................................................1
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................8
`
`37 C.F.R. § 42.120 .....................................................................................................1
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`EXHIBITS
`
`Reference Name
`U.S. Patent No. 8,004,497 to XiaoPing (filed on May 18,
`2006) (issued on Aug. 23, 2011)
`Petition To Institute an Inter Partes Review of U.S. Patent
`No. 8,004,497 (Case No. IPR2014-01342)
`U.S. Patent No. 8,059,015 to Hua & XiaoPing (filed on May
`25, 2006) (issued on Nov. 15, 2011)
`Petition To Institute an Inter Partes Review of U.S. Patent
`No. 8,059,015 (Case No. IPR2014-01302)
`Liberty Mutual Ins. Comp. v. Progressive Ins. Comp.,
`CBM2012-00003 (Paper 7, October 25, 2012)
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00075 (Paper
`15, June 13, 2013)
`Scentair Techs. v. Prolitec, Inc., IPR2013-00179 (Paper 18,
`August 23, 2013)
`Larose Indus., LLC v. Capriola Corp., IPR2013-00120,
`(Paper 20, July 22, 2013)
`Sony Corp. v. Yissum Research Development Co. of the
`Hebrew Univ. of Jerusalem, IPR2013-00219 (Paper 33,
`November 21, 2013)
`Patent and Trademark Office, Office Patent Trial Practice
`Guide (published in Fed. Reg. Vol. 77, No. 157, August 14,
`2012)
`Zoll Lifecor Corp. v. Koninklijke Philips Elecs. N.V.,
`IPR2013-00616 (Paper 14, January 13, 2014)
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133
`(Paper 53, February 26, 2014)
`112th Congress, 1st Session, Issue 157 Cong. Rec. S1350
`(daily ed. March 8, 2011) (statement of Sen. Leahy)
`Figure 7 of U.S. Patent No. 5,463,388, as annotated by Dr.
`Wright during his April 30, 2015 deposition
`Figure 7 of U.S. Patent No. 5,463,388, as annotated by Dr.
`Wright during his April 30, 2015 deposition
`Figure 7 of U.S. Patent No. 5,463,388, as annotated by Dr.
`Wright during his April 30, 2015 deposition
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
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`Exhibit No.
`2017
`
`2018
`2019
`2020
`
`Reference Name
`Transcript of Deposition of Dr. Phillip Wright, taken April
`30, 2015
`EP0574213
`U.S. Patent No. 4,806,709
`Declaration of Robert Dezmelyk
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`U.S. Patent No. 8,519,973
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`Pursuant to 37 C.F.R. § 42.120, the patent owner, Cypress Semiconductor
`
`Corp. (“Cypress” or “Patent Owner”), hereby submits the following response to
`
`LG Electronics, Inc., LG Electronics USA, Inc. and LG Electronics Mobilecomm
`
`U.S.A., Inc.’s (“LG” or “Petitioner”) Petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 8,519,973 (“the `973 patent”).
`
`I.
`
`INTRODUCTION
`The Board instituted trial based on Petitioner’s allegations that claims 1–8,
`
`11, 12, and 14–20 of the `973 patent are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over Boie (Ex 1002) and Bisset (Ex. 1008). The Board should deny
`
`Petitioner’s challenge because it is supported in large part by nothing more than
`
`conclusory statements by its expert, Dr. Wright, who failed to provide any analysis
`
`to support critical aspects of his testimony. Dr. Wright’s failure to support his
`
`conclusions with analysis dooms the petition. Petitioner’s allegations are also
`
`undermined the Petitioner’s misunderstanding of the teachings of the references
`
`and by Petitioner’s failure to recognize that that Bisset teaches away from a
`
`combination with Boie. Because of each of these defects, the Board must find that
`
`the instituted grounds were not correct, and that each of these claims is patentable.
`
`II. OVERVIEW OF U.S. PATENT NO. 8,519,973
`A.
`Background of the Dispute
`The Petition was filed by LG as a result of a suit lodged by Cypress against
`
`LG in the Northern District of California to address LG’ infringement of Cypress’s
`
`patents after protracted licensing negotiations failed.
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`Cypress, based in San Jose, California, has been a pioneer and market
`
`innovator in semiconductor technology for over thirty years. Cypress is the world
`
`leader in capacitive user interfaces. These interfaces are used in millions of
`
`devices around the world in everything from smart phones to microwave oven
`
`panels to allow a user to intelligently communicate with the device through touch
`
`gestures. Cypress’ capacitive user interfaces solutions include CapSense® touch
`
`sensing, TrueTouch® touch screens, and trackpad solutions for notebook PCs and
`
`peripheral devices. Cypress has made extensive and continuous investments in
`
`research and development to create its industry-leading products, efforts that have
`
`been essential to its success, and in turn, Cypress’s customers’ success.
`
`Capacitive Touch Technology
`B.
`The `973 patent is directed to touch and touch screen technology. Touch
`
`screen technology is increasingly becoming the preferred user interaction method
`
`for many consumer devices, especially mobile smart phones and tablets. The
`
`technology allows a user to interact with a device’s display using many different
`
`kinds of touch gestures such as simple touch/select and more complex interactions
`
`such as long touch, swipe, drag, double touch and pinch. Ex. 2020, ¶21.
`
`Capacitive touch controls rely on the human body’s conductivity and its
`
`ability to store electrical charge, in order to determine where and how a finger is
`
`interacting with the touch device. In other words, because the presence of fingers
`
`on, or in the proximity to, a touch device changes the electrical characteristics of
`
`the touch sensors in a known way, a determination can be made as to the presence
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`of the user’s finger based on those changed electrical characteristics. See Ex.
`
`2020, ¶22.
`
`Capacitance is a physical property that represents the ability of physical
`
`objects to store an electrical charge. Capacitance is a function of the relative shape
`
`and placement of conductors, and a physical property, the
`
`dielectric constant, of the material or materials between the
`
`conductors. For simple geometries, such as a pair of
`
`conductive plates separated by a fixed distance, the
`
`capacitance can be readily calculated. A “capacitor” is a
`
`device capable of storing electrical charge. A capacitor has two “plates” separated
`
`by a dielectric material. As an approximation, the capacitance between objects can
`
`be represented as a circuit formed from discrete capacitors. Ex. 1001, 8:34-38. As
`
`illustrated in Figure 3A of the `973 patent, when a finger, or other conductive
`
`object is in the vicinity of electrodes that form the two plates (301 and 302) of a
`
`capacitor, it effectively becomes part of the capacitor and thus the ability of the
`
`capacitor to store charge will increase due to the conductivity of the finger. For the
`
`electrode designs shown in the `973 patent, the capacitance will increase as the
`finger moves over the pair of plates. Id., 8:38-46. Position and action of the finger
`
`is determined by measuring over time the capacitance variation relative to the
`
`electrodes or plates. Activation of the capacitive switch is determined by
`
`measuring the change in the finger capacitance, Cf as the finger approaches the
`sensor. Id., 8:50-55. See Ex. 2020, ¶23.
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`To receive and process user inputs, the invention in the `973 patent uses
`
`capacitive sensing elements made from electrodes. The `973 patent discloses a
`
`number of arrangements of the electrodes, but focuses on ways in which a smaller
`
`number of electrodes, and their corresponding capacitance sensors, can be used to
`
`recognize the activation of a larger number of button areas. See Ex. 2020, ¶24.
`
`As shown in Figure 6A and 6B, 3 button areas are defined, (601), (602), and
`
`(603) but only two capacitance sensors are used, (201(1)) and (201(2)). The
`
`electrodes are designed and placed relative to the button areas so that a user’s
`
`finger placed on the outer button areas (601) and
`
`(602) is closely coupled to only one of the
`
`capacitance sensors. When the user’s finger is
`
`placed on button (602) it is coupled to portions
`
`of the electrodes connected to both capacitance
`
`sensors. In the example shown in Figure 6B the
`
`buttons are evenly spaced and aligned in a row,
`
`with each of the outer electrodes at the outer
`
`ends of the row. However the `973 patent discloses that the sensor element or
`
`elements which have the shared portions, such as (602) can be located in other
`
`positions with respect to the other two sensor elements, (601) and (602) in this
`
`example. Ex. 1001, 22:43-48. See Ex. 2020, ¶25.
`
`There are various ways in which a
`
`variation in the capacitance of a capacitor
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`(i.e., the ability of the capacitor to store electrical charge) can be measured. One
`
`way is described by Figure 3B of the `973 patent and is known as a capacitive
`
`switch relaxation oscillator. The change in voltage across a capacitor over a fixed
`
`interval of time is equal to the current flowing into the capacitor divided by the
`
`capacitance. A relaxation oscillator measures capacitance indirectly by feeding a
`
`fixed electrical charge per unit time (current) into the capacitor and measuring how
`
`long it takes for the capacitor to charge to a reference voltage. The time required to
`
`charge the capacitor to the reference voltage increases if the capacitance increases
`
`because, due to increased capacitance, the capacitor is able to store more of the
`
`charge (current) before it reaches the reference voltage. The relaxation oscillator
`
`removes the charge from the capacitor once the reference voltage is reached and
`
`repeats the measurement cycle. Ex. 1001, 9:11-26. The amount that the
`
`oscillator’s frequency decreases can be used to determine the presence of a finger
`
`in close proximity to the electrodes of the sensing capacitor. Id., 8:52-54, 12:12-
`16. See Ex. 2020, ¶26.
`
`The ability to more accurately and precisely identify a particular button
`
`selected by a user with a finger, i.e., a conductive object, using smaller number of
`
`capacitors or sensor areas allows for the more flexible and efficient placement of
`
`buttons on the user’s touch screen, and reduces the number of interconnect traces
`
`required. Rather than requiring a one-to-one ratio of sensor areas to buttons, more
`
`buttons than sensor areas can be utilized since the relative location of a finger can
`be determined using measurements from multiple different sensing areas. See Ex.
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`2020, ¶27.
`
`Figure 6B of the `973 patent illustrates this concept. Fig. 6B, reprinted here,
`
`shows a user interface with three touch sensor
`
`buttons (601, 602 and 603) that uses only two
`
`capacitors or sensor areas (613 and 614). When a
`
`user’s finger is placed on button (601), the
`
`relaxation oscillator in the processing device (210)
`
`will generate a different count or frequency, with
`
`that change representing the change in capacitance.
`
`The processing device (210) will detect a large increase in capacitance on sensing
`
`area (613) relative to the essentially unchanged capacitance of sensing area (614)
`
`and therefore determine that the finger is placed on button (601). When a user’s
`
`finger is placed on button (603), the relaxation oscillator in the processing device
`
`(210) will generate a different count or frequency, and the processing device will
`
`detect a large increase in capacitance on sensing area (614) relative to the
`
`essentially unchanged capacitance of sensing area (613) and therefore determine
`
`that the finger is placed on button (603). When a user’s finger is placed on button
`
`(602), which is rendered on both sensing area (613) and (614) the relaxation
`
`oscillator in the processing device (210) will read a relatively equal capacitance
`
`change on both sensing area (613) and sensing area (614) and therefore determine
`that the finger is placed on button (602). Ex. 1001, 18:33-48. See Ex. 2020, ¶28.
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`Prosecution History
`C.
`The application that would eventually issue as the `973 patent was filed on
`
`April 9, 2012, and was a continuation of an application that would issue as U.S.
`
`Patent No. 8,004,497 (“the `497 patent”). The `497 patent is currently the subject
`of an Inter Partes Review proceeding, Case No. IPR2014-01342. On May 31,
`
`2012, a preliminary amendment was filed that amended the Abstract, cancelled all
`
`then pending claims, and added new claims, which were numbered as claims 21-
`
`40. Ex. 1011, p. 154-61.
`On September 19, 2012, a non-final office action was issued. Id. at 176-83.
`
`The September 19, 2012 office action entered the amendments made in the May
`
`31, 2012 preliminary amendment, and rejected claims 21-25 and 27-39 for
`obviousness-type double patenting. Id. On November 16, 2012, Patent Owner
`
`responded to the May 31, 2012 office action and also filed a Terminal Disclaimer.
`Id. at 193-201, 207-10. On December 21, 2012, a Notice of Allowance was
`mailed. Id. at 214-23.
`
`Rather than paying the issue fee, on January 15, 2013, Patent Owner filed an
`RCE along with an Information Disclosure Statement. Id. at 230-37. On April 22,
`
`2013, a new Notice of Allowance was mailed, along with a listing of additional
`
`prior art considered by the Examiner. Id. at 254-68. On May 17, 2013, Patent
`Owner filed an RCE along with a new Information Disclosure Statement. Id. at
`
`269-326. Among the references submitted with this May 17, 2013 IDS were Boie
`
`(Ex. 1002) and EP0574213 (Ex. 2018), which is the European counterpart to the
`parent of Bisset (Ex. 1008). Id. at 310, 321. On June 24, 2013, a Notice of
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`Allowance was mailed along with an indication that the Examiner considered the
`
`references cited in the May 17, 2013 IDS, including both Boie and Bisset’s EP
`publication. Id. at 346-77. The `973 patent subsequently issued on August 27,
`2013. Ex. 1001. The `973 patent has a priority date of May 18, 2006. Id.
`
`III.
`
`STATEMENT OF RELIEF REQUESTED
`Patent Owner respectfully requests that the Board confirm the patentability
`
`of claims 1–8, 11, 12, and 14–20 of the `973 patent.
`
`Person Of Ordinary Skill In The Art
`A.
`A person of ordinary skill in the art in the field of the `973 patent would
`
`have had a Bachelor of Science in Electrical Engineering, or an equivalent
`
`technical degree, and two years of experience in the field of touch input devices, or
`
`a Masters or other advanced degree in Electrical Engineering, and one year of
`
`experience or research in the field of touch input devices. Ex. Ex. 2020, ¶20.
`
`IV. CLAIM CONSTRUCTION
`A.
`How the claims are to be interpreted
`A claim in an unexpired patent is to be given its “broadest reasonable
`
`interpretation in light of the specification in which it appears.” 37 C.F.R.
`§ 42.100(b).1 Claim terms are given their plain and ordinary meaning as would be
`
`1
`
`Because the claim construction standard in an IPR is different than that used
`
`in litigation, Petitioners expressly reserve the right
`
`to present different
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`understood by a person of ordinary skill in the art at the time of the invention and
`
`in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d
`1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this
`
`general rule: 1) when a patentee sets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavows the full scope of a claim term
`either in the specification or during prosecution.” Thorner v. Sony Computer
`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). LinkedIn Corp. v.
`
`AvMarkets Inc., Case No. CBM2013-00025, (Paper 30, November 10, 2014), 2014
`Pat. App. LEXIS 7747 at *10; BAE Sys. Info. & Elec. Sys. Integration, Inc. v.
`Cheetah Omni, LLC, Case No. IPR2013-00175, (Paper 45, June 19, 2014), 2014
`
`Pat. App. LEXIS 4134 at *5, *6.
`
`V.
`
`CLAIMS 1–8, 11, 12, and 14–20 ARE NOT OBVIOUS OVER BOIE
`AND BISSET
`
`Overview of Boie
`A.
`Boie (Ex. 1002) discloses a method for calculating the location of a finger
`
`touch on either a cursor control touchpad or a keypad. The location of the finger
`
`touch is calculated using the “centroid” of the measured capacitance values on a
`
`capacitive touch sensor which has a rectangular array of sensing electrodes. A
`
`person having ordinary skill in the art would know that a centroid is the “center of
`gravity or first moment” of the capacitance distribution. See Ex. 1002, 2:64-3:2.
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`constructions of terms in the related litigation. See In re Am. Acad. of Sci. Tech.
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`Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
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`Fig. 1 of Boie shows a histogram of the capacitance measurements taken at each
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`sensor in four-by-four array of sensors. Ex. 1002, 2:61-64 (“Histogram 110 shows
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`the capacitances for electrodes 101 in array 100 with respect to finger 102. Such
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`capacitances are a two- dimensional sampling of the distribution of capacitance
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`between array 100 and finger 102.”). The location labeled as point 111 in Fig. 1 is
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`finger contact location, and is calculated from capacitance measurements of the
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`individual sensors:
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`Ex. 2020, ¶29.
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`The point marked 111 is the centroid, and is the location of the finger on the
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`sensor array. Ex. 1002, 2:64-3:2 (“The centroid (center of gravity or first moment)
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`111 of such distribution will correspond to the position of finger 102, or some
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`other object touching array 100, if suitable sampling criteria are met; that is, by
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`choosing electrodes of sufficiently small size when compared to the extent of the
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`distribution. Such criteria are discussed in the Blonder et al. patent referred to
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`above.”). The centroid based position calculation disclosed by Boie requires that
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`the electrodes be arranged in a rectangular array, or a one dimensional linear array.
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`Ex. 1002, 2:50-60. See Ex. 2020, ¶30.
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`Boie discloses two applications for its sensor. The first is a cursor controller
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`that can replace devices such computer mice. Ex. 1002, 1:43-50 (“Input devices
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`such as mice, joysticks and trackballs can be cumbersome because of their size and
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`shape and, particularly with mice, the room needed for use. These drawbacks are
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`more apparent with respect to portable computers, such as the so-called ‘notebook’
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`computers. It is deskable [sic: desirable], therefore, to furnish such control
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`capabilities in an input device that can be incorporated in a small space, but
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`without sacrificing ease of use.”). The second application for the sensor described
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`in Boie is a keyboard. In the keyboard embodiment, keys, e.g., “1,” “Enter,” etc.,
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`are overlaid on the capacitive sensor array. Ex. 1002, 6:61:-64 (“FIG. 7 is a
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`diagram showing how an array 100 can be used as a keyboard in accordance with
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`the invention. Again, array 100 is shown as a 4x4 matrix of electrodes, but with a
`keyboard pattern overlay superimposed on the matrix.”). See Ex. 2020, ¶31.
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`In either the cursor controller or keyboard embodiments, the location of a
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`finger is calculated by computing the centroid from the capacitance values at each
`electrode in its sensing array. See Boie at 3:5-15 and 5:25-56. By calculating a
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`centroid, Boie is determining the X and Y positions of the finger on the sensor
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`array. Ex. 1002, 3:5-8 (“The x and y coordinates of the centroid can be
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`determined by directly measuring the capacitance at each electrode 101 and
`calculating such x and y coordinates from such measured capacitances. Thus,
`for the 4x4 array 100, sixteen capacitance measurements would be needed.”).2
`Indeed, regardless of the application, Boie’s sensor always calculates the x and y
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`location of the centroid, which is seen in Figs. 6 and 8. Fig. 6 is a flowchart
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`showing how Boie operates as a touchpad, while Fig. 8 shows how Boie operates
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`as a keyboard:
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`Ex. 2020, ¶32.
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`Boie’s method of determining the location of the user’s touch cannot
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`determine a position accurately unless the user’s finger has capacitive coupling to
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`2 Unless indicated, any bolding, underlining, etc. of text is added by Patent Owner.
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`multiple sensing electrodes in the array. Boie notes that “[t]o avoid spurious
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`operation, it may be desirable to require that two or more measurements exceed the
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`preset threshold.” Ex. 1002, 5:43-45. When only a single electrode is active,
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`Boie’s position determination algorithm can only determine the predetermined
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`coordinates of the electrode itself, regardless of the changing position of the user’s
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`finger relative to the electrode. Thus, the position and/or size of the electrodes in
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`Boie’s design cannot be altered to match other design constraints, such as the
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`desired location of buttons. See Ex. 2020, ¶33.
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`As implicitly acknowledged by Petitioner, Boie does not disclose selecting
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`which key is activated by comparing whether capacitance variations caused by the
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`user’s finger are greater than a reference value for some electrodes, and less than
`the reference value for others. See also Ex. 2020, ¶34. In addition, physically,
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`Boie’s device is formed from a multi-layer printed circuit board, and would not be
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`usable as a touch screen sensor. Ex. 1002, 3:30-36. See Ex. 2020, ¶35.
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`Overview of Bisset
`B.
`Bisset discloses a handheld computing device which has a display on the
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`front surface of the device, and a touch pad on the back surface of the device. One
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`side of the device has a display screen 306 while the opposing side of the device
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`has a touch pad 312. Ex. 1008, Abstract (“A handheld computing device
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`comprises a thin enclosure having two opposing major faces. A display screen is
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`disposed on a first one of the major opposing faces of the enclosure and a touch-
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`sensitive object position detector input device is disposed on a second one of the
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`major opposing faces of the enclosure.”). This arrangement can be seen in, for
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`example, Bisset’s Fig. 17, which shows a user viewing the display 306 while using
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`the touch pad found on the opposing side of the device:
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`See also Ex. 2008, 24:4-14 (“FIG. 17 shows the usage ergonomics of the handheld
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`computing device 300. In this example the user is shown holding the handheld
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`computing device 300 in his/her left hand. The user may employ the index finger
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`of the left hand to operate the ‘mouse click’ button 308 while grasping the rest of
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`the handheld computing device 300 between the other fingers and the thumb of the
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`left hand. The right hand and its index finger is then used on the back side as a
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`pointer to a position on the LCD display 306. In the preferred embodiment, the
`position of the finger is indicated on LCD display 306 by a cursor icon 324.”). See
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`Ex. 2020, ¶36.
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`Bisset’s device uses a physical button (308) to select items displayed on the
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`LCD display. Bisset also discloses that “the mouse click switch 308 may be
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`optional, since its “click” function may be emulated by a gesture, such as a finger
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`tap on touch pad surface 312” Ex. 1008, 22:49-51. Bisset mentions using his
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`touch pad along with a keypad, (Ex. 1008, 22:1-6), but does not disclose its use as
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`a keypad. Since Bisset’s touch pad is intended for use on the back side of a device,
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`where the user cannot see the location they are touching, it would not function as a
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`keypad. Moreover, as a pointing device it has the same limitation, since the
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`pointing is indirect the user needs to use a separate input, either the click switch or
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`a finger gesture such as a tap to indicate their choice of a target displayed on the
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`screen. Bisset teaches that the touch pad itself is not used to directly activate button
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`areas. Instead either a physical switch (308) or a tap gesture is used once the
`cursor on the LCD display is moved to a desired item displayed on the screen. See
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`Ex. 2020, ¶37.
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`Bisset’s touch pad is, like Boie’s, formed from traces on a printed circuit
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`substrate, and is not transparent, and therefore unsuitable for use as a touchscreen.
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`See Ex. 1008, 23:49-54 (“Those of ordinary skill in the art will note that the touch
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`pad surface 312 comprises a special printed circuit trace configuration of printed
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`circuit substrate 322 and not an additional device which must be mounted
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`thereo