Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: September 23, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01024
`Patent 7,772,781 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`SHAW, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`
`Microsoft Corporation and Microsoft Mobile, Inc. (collectively,
`
`“Petitioner”) filed a Petition for inter partes review of claims 1–3, 7, 8, 10,
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`GLOBAL EX. 2002
`Microsoft Corporation, et al. v. Global Touch Solutions, Inc.
`IPR2015-01023
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`

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`IPR2015-01024
`Patent 7,772,781 B2
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`17, and 22 (“the challenged claims”) of U.S. Patent No. 7,772,781 B2
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`(Ex. 1001, “the ’781 patent”). Paper 2 (“Pet.”). Patent Owner did not file a
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`Preliminary Response. Institution of an inter partes review is authorized by
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`statute when “the information presented in the petition . . . and any
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`response . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42(a). After considering the
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`Petition, we determine that Petitioner has not established a reasonable
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`likelihood of prevailing on any of the claims challenged in the Petition.
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`Accordingly, we do not institute an inter partes review.
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`A. Related Matters
`
`The parties identify the following district court proceedings in which
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`the ’781 patent has been asserted: Global Touch Solutions, LLC v. Microsoft
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`Corp., No. 3:15-cv-02750 (N.D. Cal.); and Global Touch Solutions, LLC v.
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`Motorola Mobility, LLC, No. 3:15-cv-02749 (N.D. Cal.). See Pet. 3; Paper
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`6, 2; Paper 10, 3. Petitioner also has filed two other petitions for inter
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`partes review of related U.S. Patent Nos. 7,265,494 and 8,035,623—
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`IPR2015-01023 and IPR2015-1025, respectively. Paper 10, 2.
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`B. The ’781 Patent
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`The ’781 patent is directed to an electronic circuit including a
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`microchip that differentiates between proximity and physical contact events.
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`Ex. 1001, Abstract. A touch sensor interface or switch allows the user to
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`operate and select functions and select or give a signal to the microchip
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`based on proximity and not necessarily physical touch or contact. Id. at
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`13:36–40. The signals may be used to select different functions or
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`operational modes. Id. at 13: 47–50. As an example, the microchip may use
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`IPR2015-01024
`Patent 7,772,781 B2
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`signals received from the touch sensor indicating proximity of part of the
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`body of the user, such as a hand, to activate a find-in-the-dark (FITD)
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`indicator in a way that is different from when no proximity detection occurs.
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`Id. at 14: 23–27. For example, the FITD indicator that is normally off or
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`flashing with a low duty cycle or activated in a low energy mode may be
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`activated in a constant on mode of a higher energy level. Id. at 14:27–30.
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`C. Illustrative Claim
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`Claim 1, the only independent claim among the challenged claims,
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`reads:
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`1. An interface unit for use with a power source to control a
`selection of functions, said interface unit comprising:
`(a) a switch, wherein the switch is not a serial element of a
`circuit conducting power from the power source to a product, and
`wherein the switch is a touch sensor structure that forms a user
`interface; and
`(b) a microchip having at least a first input coupled to the touch
`sensor;
`
`wherein the microchip is configured for controlling or
`providing information for selecting multiple operational modes
`of the product or a load in response to signals received through
`said first input;
`wherein the microchip, in response to the signals
`received from the touch sensor, distinguishes between
`proximity and physical contact events as detected by the touch
`sensor; and
`wherein the microchip selects different functions in
`response to the signals indicating the physical contact or the
`proximity detection.
`
`Id. at 17:2–20.
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`Patent 7,772,781 B2
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`D. Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1–3, 7, 8, 10, 17, and 22 of the
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`’781 patent are unpatentable under 35 U.S.C. § 103(a) over Bruwer1 and
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`Hinckley.2 Pet. 6–54. In its analysis, Petitioner relies on the declaration
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`testimony of Dr. Mark N. Horenstein. See Ex. 1019.
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`II. DISCUSSION
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`A. Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
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`Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). An inventor may provide a meaning for a term that is different from
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`its ordinary meaning by defining the term in the specification with
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
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`Petitioner proposes constructions for “not a serial element” and “a
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`first input.” Pet. 17–20. For purposes of this decision, we determine that
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`these claim terms do not require express constructions.
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`
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`1 Int’l Patent Pub. No. WO 00/22890, published April 20, 2000, (Ex. 1004,
`“Bruwer”).
`2 U.S. Pub. No. 2001/0011995 A1, published August 9, 2001, (Ex. 1005,
`“Hinckley”).
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`Patent 7,772,781 B2
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`B. Priority Date of the Challenged Claims
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`Petitioner asserts Bruwer and Hinckley qualify as prior art for the
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`challenged claims at least under 35 U.S.C. § 102(b) because the patent
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`applications of Bruwer and Hinckley were filed in the United States before
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`October 12, 2004, the earliest effective priority date of the challenged claims
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`of the ’781 patent. Pet. 5, 6. Specifically, Petitioner alleges the ’781 patent
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`is a continuation of U.S. Patent Application No. 10/961,373 (“the ’373
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`application”), which issued as U.S. Patent No. 7,265,494. Pet. 1. The ’373
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`application was a continuation-in-part (“CIP”) application that Petitioner
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`argues includes new matter compared to both the 1998 and 1999
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`applications3 from which it claims priority. Id. Petitioner alleges each of the
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`challenged claims recites subject matter that was added with the filing of the
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`CIP ’373 application in 2004.4 Id.; see Ex. 1019 ¶ 41. Thus, Petitioner
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`alleges, the effective filing date of the challenged claims is not 1998 or 1999,
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`but rather, 2004. See Ex. 1019 ¶ 41. Petitioner alleges that because Bruwer
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`was published in April 2000, more than four years earlier, and Hinckley was
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`published in 2001, more than three years earlier, both are prior art to each of
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`the challenged claims under 35 U.S.C. §102(b). See Pet. 5.
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`“Subject matter that arises for the first time in” a continuation-in-part
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`application “does not receive the benefit of the filing date of the parent
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`
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`3 Application No. PCT/ZA99/00107, filed Oct. 8, 1999, now U.S. Patent No.
`6,984,900 (“the 1999 application”); Application No. 09/169,385, filed Oct.
`9, 1998, now U.S. Patent No. 6,249,089 (“the 1998 application”).
`4 Exhibit 1003 is a copy of the ’781 patent with highlighting added by
`Petitioner to show those portions not included in the 1998 and 1999 patent
`applications, but later added with the filing of the ’373 application (which is
`the parent application to the ’781 patent).
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`Patent 7,772,781 B2
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`application.” Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291,
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`1302 (Fed. Cir. 1999).
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`On this record, we agree with Petitioner that each of the challenged
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`claims includes proximity-related limitations, but neither the 1998
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`application nor the 1999 application includes proximity-related disclosure.
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`In particular, claim 1, from which each of the other challenged claims
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`depend directly or indirectly, requires that “the microchip, in response to the
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`signals received from the touch sensor, distinguishes between proximity and
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`physical contact events” and that “the microchip selects different functions
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`in response to the signals indicating the physical contact or the proximity
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`detection.” Ex. 1001, 17:2–20. Instead, proximity sensing and sensors were
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`first disclosed with the 2004 filing of the ’373 application, which is the
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`parent of the application that issued as the ’781 patent. Ex. 1019 ¶¶ 35–38,
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`41.
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`On this record, we are persuaded that the first disclosure of proximity
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`sensing and sensors was with the filing of the ’373 application on October
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`12, 2004. Accordingly, based on this record, we find the effective filing date
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`for claims 1–3, 7, 8, 10, 17, and 22 of the ’781 patent is October 12, 2004.
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`C. Obviousness over Bruwer and Hinckley
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`Petitioner challenges claims 1–3, 7, 8, 10, 17, and 22 as obvious over
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`Bruwer and Hinckley. Pet. 6–54. With respect to “the microchip, in
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`response to the signals received from the touch sensor, distinguishes
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`between proximity and physical contact events,” required by claims 1–3, 7,
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`8, 10, 17, and 22, Petitioner points to Hinckley. Pet. 38–41. In particular,
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`Petitioner points to language in Hinckley stating:
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`Patent 7,772,781 B2
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`[I]f the user wishes to change the volume, the user may
`approach or touch the control knob 314 with his hand. Before
`the user activates the control knob 314 by turning the knob, a
`GUI for the volume control including the status of the volume
`in the form of a screen volume indicator can appear on screen
`as shown in FIG. 27. The user may then turn the control knob
`314 to adjust the volume.
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`Pet. 39, 40 (quoting Ex. 1005 ¶ 0133). Petitioner also points to Hinckley’s
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`disclosure that “one or more portions (e.g., top and side) of the control, such
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`as control knob 314, may be able to independently detect contact or user
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`proximity.” Pet. 39 (quoting Ex. 1005 ¶ 0134).
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`
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`Petitioner alleges Hinckley discloses capacitive sensors that are
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`configured to detect both contact and proximity events. Pet. 39. We agree
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`that Hinckley discloses detecting user proximity and user contact. See
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`Ex. 1005 ¶¶ 133, 134. However, neither the Petition, nor the testimony of
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`Dr. Horenstein that Petitioner cites, explains persuasively how these portions
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`of Hinckley disclose that a microchip of Hinckley “distinguishes between
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`proximity and physical contact events,” as required by claim 1 (emphasis
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`added). Paragraphs 133 and 134 of Hinckley describe how Hinckley’s
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`system may “detect contact or user proximity” (Ex. 1005 ¶ 134), but not that
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`its microchip detects/recognizes a difference between physical contact and
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`user proximity, such that the microchip’s output would be different for each
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`of the two types of input. Rather, Hinckley’s system may allow a user to, in
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`one instance, “approach or touch the control knob.” Ex. 1005 ¶ 133.
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`“Before the user activates the control knob 314 by turning the knob, a GUI
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`for the volume control . . . can appear on screen . . . . The user may then
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`turn the control knob 314 to adjust the volume or move a pointer (e.g., caret
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`or arrow).” Id.
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`Therefore, we disagree with Petitioner’s allegation that “Hinckley
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`disclosed a touch sensor that provides both proximity and physical contact
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`detection and two different responses depending on whether the user’s hand
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`is near the sensor, or if the user’s hand is actually touching the sensor.” Pet.
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`39. Paragraph 133 of Hinckley describes a different response, but the
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`response does not depend on proximity as opposed to touch of the sensor, as
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`Petitioner alleges. Instead, the response is based on either (1) “contact or
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`user proximity” or (2) “turning the knob” for the volume control. Ex. 1005 ¶
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`133.
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`Moreover, although Petitioner quotes Hinckley as stating “[i]n still
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`farther exemplary embodiments, one or more portions (e.g., top and side) of
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`the control, such as control knob 314, may be able to independently detect
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`contact or user proximity,” (Pet. 39 quoting Ex. 1005 ¶ 134), this quote from
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`Hinckley is incomplete. Hinckley actually discloses:
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`In still farther exemplary embodiments, one or more portions
`(e.g., top and side) of the control, such as control knob 314,
`may be able to independently detect contact or user proximity
`and generate unique messages for the host computer based on
`which portion of the control is being touched.
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`Ex. 1005 ¶ 134 (emphasis added). Thus, this portion of Hinckley does not
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`disclose distinguishing between user proximity and contact.
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`For these reasons, Petitioner has not shown that Hinckley teaches
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`“distinguish[ing] between proximity and physical contact events,” as recited
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`in claim 1 of the ’781 patent. Nor does Petitioner contend that Bruwer
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`teaches distinguishing between proximity and physical contact events as
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`recited in the claims. See Pet. 39 (“Bruwer was silent regarding proximity
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`sensing and, specifically, a microchip that, in response to signals received
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`from the touch sensor, distinguishes between proximity and physical contact
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`Patent 7,772,781 B2
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`events as detected by the touch sensor.”). Additionally, Petitioner does not
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`point to persuasive testimony from Dr. Horenstein explaining how a
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`microchip of Hinckley distinguishes between proximity and physical contact
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`events. Accordingly, the information presented does not show a reasonable
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`likelihood that Petitioner would prevail in demonstrating that claim 1, or
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`claims 2, 3, 7, 8, 10, 17, and 22, which depend directly or indirectly from
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`claim 1, would have been obvious over Bruwer and Hinckley.
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`III. CONCLUSION
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`For the foregoing reasons, we determine that Petitioner has not shown
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`a reasonable likelihood that it would prevail in demonstrating that any of the
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`challenged claims of the ’781 patent are unpatentable on at least one
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`challenged ground.
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`
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`Accordingly, it is:
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`IV. ORDER
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`
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`ORDERED that an inter partes review of U.S. Patent No.
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`7,772,781 B2 is not instituted based on this Petition.
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`10
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`IPR2015-01024
`Patent 7,772,781 B2
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`FOR PETITIONER:
`
`Daniel Goettle
`dgoettle@bakerlaw.com
`
`John Murphy
`johnmurphy@bakerlaw.com
`
`Sarah Dukmen
`MSFT-GT@bakerlaw.com
`
`
`FOR PATENT OWNER:
`
`William Mandir
`wmandir@sughrue.com
`
`Peter Park
`pspark@sughrue.com