Filed on behalf of:
`
`Microsoft Corporation and Nokia Inc.
`
`By: Daniel J. Goettle
`
`John F. Murphy
`
`Sarah C. Dukmen
`
`Baker & Hostetler LLP
`
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`MICROSOFT CORPORATION and NOKIA INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`
`
`___________________________________
`
`IPR2015-01023
`Patent 8,035,623
`___________________________________
`
`
`
`MICROSOFT EXHIBIT 1021
`DECLARATION OF MARK N. HORENSTEIN, PH.D., P.E.
`
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`
`

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`
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`
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`
`
`TABLE OF CONTENTS
`
`Introduction & Qualifications .......................................................................... 4 
`I. 
`II.  Materials Reviewed ......................................................................................... 7 
`III.  The Law ........................................................................................................... 9 
`A.  Anticipation Analysis ...................................................................................... 9 
`B.  Obviousness Analysis ...................................................................................... 9 
`C.  Level of Ordinary Skill in the Art ................................................................. 11 
`D.  Objective Considerations ............................................................................... 12 
`E.  Claim Construction ........................................................................................ 12 
`F.  Earliest Filing Date and Written Description ................................................ 12 
`IV.  Level of Ordinary Skill in the Art ................................................................. 14 
`V. 
`Claim Construction ........................................................................................ 15 
`A.  “detecting a proximity event through an object approaching the touch sensor
`switch” (claim 24 from which claim 31 ultimately depends) ....................... 16 
`B.  “the step of operating a display in response to a proximity event” and “said
`display” (claim 30 from which claim 31 depends) ........................................ 17 
`VI.  Written Description of the Challenged Claims ............................................. 17 
`A.  The Parent Applications ................................................................................ 18 
`B.  The Challenged Claims Lack Written Description in the Parent Applications
` ....................................................................................................................... 18 
`VII.  Anticipation and Obviousness – Overview ................................................... 22 
`VIII.  General Description of Prior-Art Proximity Sensing .................................... 23 
`IX.  Description of Hinckley ................................................................................. 27 
`X.  Hinckley Anticipates Claim 24 ...................................................................... 30 
`A.  Hinckley Disclosed Claim 24’s Preamble, “A method of using a touch
`sensor circuit that forms a user interface switch as part of a product” .......... 31 
`B.  Hinckley Disclosed Limitation [a] of Claim 24: “a microchip and a touch
`sensor switch . . . used in the implementation of the user interface switch” . 32 
`C.  Hinckley Disclosed Limitation [b] of Claim 24: “detecting a proximity event
`through an object approaching the touch sensor switch” .............................. 32 
`D.  Hinckley Disclosed Limitation [c] of Claim 24: “displaying information
`regarding the modes and/or functions associated with the switch in response
`to the detection of the proximity event” ........................................................ 33 
`
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`

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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`
`
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`XI.  Hinckley Anticipates Dependent Claim 30 ................................................... 37 
`A.  Hinckley Disclosed Claim 30, Namely “wherein multiple touch sensor
`switches are used and the step of operating a display in response to a
`proximity event further comprises displaying information on said display
`that guides the user towards a next likely switch selection to be made
`through physical contact.” ............................................................................. 37 
`XII.  Dependent Claim 31 Would Have Been Obvious Over Hinckley ................ 39 
`A.  Hinckley Disclosed the Limitations of Claim 31, Namely the “Step of
`Automatically De-activating a Function . . . From the User Interface
`Switch.”.......................................................................................................... 39 
`The Combination of Claim 31 Would Have Been Obvious. ......................... 41 
`
`
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`B. 
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
` Introduction & Qualifications
`
`I, Mark N. Horenstein, declare as follows:
`
`
`I.
`
`1.
`
`I understand that Microsoft Corporation (“Microsoft”) and Nokia Inc.
`
`(“Nokia”) are petitioning the Patent Office for an inter partes review of claims 24,
`
`30, and 31 of U.S. Patent No. 8,035,623 (“’623 patent”). I have been retained by
`
`the Petitioners, Microsoft and Nokia, to offer technical opinions relating to the
`
`’623 patent and certain prior art references relating to its subject matter. I
`
`understand that an inter partes (“between the parties”) review begins with a
`
`petition for review made by third parties like Microsoft and Nokia and responded
`
`to by the owner of the patent.
`
`2.
`
`I am a Professor of Electrical Engineering in the Department of
`
`Electrical and Computer Engineering at Boston University, where I have been a
`
`faculty member since 1979. I also have held various other positions at Boston
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`University, including the Associate Dean for Graduate Programs and Research for
`
`the College of Engineering (1999-2007), Associate Chair for Undergraduate
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`Programs for the ECE Department (1990 – 1998 and 2012 – present), as well as
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`appointments at the rank of Associate Professor (1985-2000) and Assistant
`
`Professor (1979-1985).
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`3.
`
`I have a Ph.D. in Electrical Engineering from the Massachusetts
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`Institute of Technology (MIT), which I earned in 1978 while working in the
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
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`Electric Power Systems Engineering Laboratory. I also hold an M.S. degree in
`
`Electrical Engineering from the University of California at Berkeley (1975), and
`
`an S.B. degree in Electrical Engineering from MIT (1973).
`
`4.
`
`I have a number of professional affiliations: I am a Senior Member of
`
`the Institute of Electrical and Electronic Engineers (IEEE), the Editor-in-Chief of
`
`the Journal of Electrostatics, an ESD Engineer certified by the National
`
`Association of Telecommunications and Radio Engineers, and a Registered
`
`Professional Engineer (Electrical) in the Commonwealth of Massachusetts. In
`
`2013, I was named an International Fellow by the Industrial Electrostatics Group
`
`of the European Federation of Chemical Engineering (EFCE).
`
`5. My primary areas of research are in applied electromagnetics,
`
`electronic circuits, electrostatics, and micro-electromechanical systems (MEMS).
`
`These disciplines include the topics of capacitive and photonic (e.g., infrared)
`
`sensors, micro-actuators and accelerometers, deformable MEMS mirrors for light-
`
`wave communication and image processing, and methods for making self-
`
`cleaning solar panels.
`
`6.
`
`I am the author of two textbooks, Microelectronic Circuits and
`
`Devices (Prentice-Hall, 2d. ed. 1996) and Design Concepts for Engineers (Pearson
`
`
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`- 5 -
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`Education, 5th ed. 2015). I have authored book chapters in two reference books
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
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`related to electromagnetics, and I have authored or co-authored over 50 journal
`
`articles on a variety of topics in my fields of expertise, and approximately 100
`
`conference papers. I have advised five Ph.D. students performing research in these
`
`fields; they have gone on to hold various positions in both industry and academia.
`
`I am a named inventor on five patents relating to the areas of my expertise.
`
`7.
`
`I have taught approximately ten different courses (numerous times) in
`
`the above subject areas over the past 34 years, to over 3,000 undergraduate and
`
`graduate students. The subject matter of these courses includes circuits and
`
`electronics, static and dynamic electromagnetics, antennas, waveguides, rf
`
`communications, robotics, and engineering design. I have been named “Teacher
`
`of the Year” in Engineering at Boston University three times.
`
`8.
`
`In the area of sensors and detectors, I have designed several capacitive
`
`sensors, MEMS sensors, and infrared detection systems as part of various research
`
`projects. I also developed the curriculum for a graduate course in power
`
`electronics in the Department of Electrical and Computer Engineering at Boston
`
`University, which includes detailed lectures and extensive laboratory experiments.
`
`9. My curriculum vita, enclosed as Attachment A, contains a more
`
`detailed description of my background.
`
`
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
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`10.
`
`I am being compensated at a consulting rate of $275 per hour for my
`
`
`
`technical analysis in this matter.
`
`II. Materials Reviewed
`11.
`In forming my opinions, I have reviewed the following:
`
`a. U.S. Patent No. 8,035,623 (filed Aug. 3, 2010) (“’623 patent”) (Ex.
`
`1001);
`
`b. Prosecution history for the ’623 patent (“’623 prosecution history”)
`
`(Ex. 1002);
`
`c. Highlighted ’623 patent (“Showing the New Matter”) (Ex. 1003);
`
`d. International Patent Pub. No. WO 00/22890 (filed Oct. 8, 1999)
`
`(published Apr. 20, 2000) (“Bruwer”) (Ex. 1004);
`
`e. U.S. Patent Pub. No. 2001/0011995 (filed Mar. 13, 2001)
`
`(“Hinckley”) (Ex. 1005);
`
`f. Thomas G. Zimmerman et al., Applying Electric Field Sensing to
`
`Human-Computer Interfaces, 95 PROC. SIGCHI CONF. ON HUM.
`
`FACTORS IN COMPUTING SYS. 280, 280-87 (1995) (“Zimmerman”)
`
`(Ex. 1006);
`
`g. Ken Hinckley & Mike Sinclair, Touch-Sensing Input Devices, 99
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`PROC. SIGCHI CONF. ON HUM. FACTORS IN COMPUTING SYS. 223,
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
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`223-30 (1999) (“Hinckley & Sinclair”) (Ex. 1007);
`
`h. FIFTY YEARS OLD: THE PROXIMITY SWITCH,
`
`http://www.controlengeurope.com/article/20839/Fifty-years-old--the-
`
`proximity-switch.aspx (last visited Jan. 29, 2015) (“Fifty years old”)
`
`(Ex. 1008);
`
`i. LARRY K. BAXTER, CAPACITIVE SENSORS: DESIGN AND APPLICATIONS
`
`66-82 (1997) (“Baxter Text”) (Ex. 1009);
`
`j. U.S. Patent No. 6,680,677 (filed Oct. 6, 2000) (“Tiphane”) (Ex.
`
`1010);
`
`k. U.S. Patent No. 3,761,736 (filed Apr. 10, 1972) (“Edge”) (Ex. 1011);
`
`l. U.S. Patent No. 5,716,129 (filed July 31, 1995) (“Kunen”) (Ex. 1012);
`
`m. U.S. Patent No. 6,249,089 (filed Oct. 9, 1998) (“’089 Patent) (Ex.
`
`1013);
`
`n. Excerpt from Prosecution History for the ’089 patent (“’089
`
`prosecution history excerpt”) (Ex. 1014);
`
`o. U.S. Patent No. 6,984,900 (filed July 2, 2001) (“’900 Patent”) (Ex.
`
`1015);
`
`p. Excerpt from Prosecution History for the ’900 patent (“’900
`
`prosecution history excerpt”) (Ex. 1016);
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`
`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`q. U.S. Patent No. 7,265,494 (filed Oct. 12, 2004) (“’494 patent”) (Ex.
`
`1017);
`
`r. Prosecution history for the ’494 patent (“’494 prosecution history
`
`excerpt”) (Ex. 1018);
`
`s. U.S. Patent No. 7,772,781 (filed Apr. 13, 2007) (“’781 patent”) (Ex.
`
`1019); and
`
`t. Prosecution history for the ’781 patent (“’781 prosecution history”)
`
`(Ex. 1020);
`
`III. The Law
`12.
`I am not an attorney and do not purport to provide any expert opinions
`
`on the law. I have, however, been advised of certain basic legal principles
`
`applicable to the analysis set forth in this report. I have assumed these principles
`
`to be correct and applicable for the purposes of my analysis. I set forth these
`
`principles below.
`
`A. Anticipation Analysis
`13.
`I understand that a patent claim is invalid as anticipated if a prior-art
`
`reference discloses each claim limitation, and the prior-art elements are arranged or
`
`combined in the same way as they are in the claim.
`
`B. Obviousness Analysis
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`- 9 -
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`14.
`
`I understand that a patent claim is invalid as obvious if the differences
`
`
`
`between the patented subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious to a person having ordinary skill in the
`
`art at the time the invention was made..
`
`15.
`
`I further understand that a person of ordinary skill in the art is a
`
`person of ordinary creativity, not an automaton, and in many cases a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like
`
`pieces of a puzzle. I understand that the obviousness analysis is flexible, taking
`
`into account the interrelated teachings of several patents, the effects of demands
`
`known to the design community or present in the marketplace, and the background
`
`knowledge of a person of ordinary skill in the art. I understand that the
`
`combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results. I also understand that
`
`combining two embodiments disclosed adjacent to each other in a prior art patent
`
`does not require a leap of inventiveness.
`
`16.
`
`I have been instructed that an obviousness inquiry requires a four-step
`
`analysis involving the so-called Graham factors:
`
`(1) determining the scope and content of the prior art;
`
`(2) ascertaining the differences between the prior art and the claims at
`
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`issue;
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
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`(3) resolving the level of ordinary skill in the pertinent art; and
`
`(4) evaluating objective considerations.
`
`17. Once these determinations have been made, I understand that one
`
`must decide, in view of the evidence regarding these four factors, whether or not
`
`the invention, considered as a whole, would have been obvious to one having
`
`ordinary skill in the relevant art at the time that the alleged invention was made.
`
`18.
`
`I am told that one must keep in mind that it is not permissible to use
`
`hindsight in assessing whether or not the claimed invention is actually invalid for
`
`obviousness. One cannot look at the invention knowing what persons of ordinary
`
`skill in the art know today. Rather, one must place oneself in the shoes of a person
`
`having ordinary skill in the field of technology of the patent at the time the
`
`invention was made.
`
`C. Level of Ordinary Skill in the Art
`19. To determine the level of ordinary skill in field of art, I’ve been
`
`instructed that there are no exhaustive factors that may be considered, and I’ve
`
`been instructed to consider the following, to the extent that I can, in opining on the
`
`level of ordinary skill in the field of art pertaining to the ’623 patent:
`
`(1) The educational level of the inventor;
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`(2) Types of problems encountered in the art;
`
`(3) Prior art solutions to those problems;
`
`(4) Rapidity with which innovations are made;
`
`(5) Sophistication of the technology; and
`
`(6) Educational level of active workers in the field.
`
`D. Objective Considerations
`20. Regarding the fourth step in the four-step process for assessing
`
`obviousness, specifically the step involving “objective considerations,” I have been
`
`told that some of the factors that may be considered are those of copying, a long
`
`felt but unsolved need, failure of others, commercial success, unexpected results
`
`created by the claimed invention, unexpected properties of the claimed invention,
`
`licenses showing industry respect for the invention, and skepticism of skilled
`
`artisans before the invention was made. I have no reason to believe that any of
`
`these factors apply to the challenged claims of the ’623 patent.
`
`E. Claim Construction
`21.
`I understand that in an inter partes review at the patent office, claims
`
`are to be given their broadest reasonable interpretation in light of the specification
`
`as would be read by a person of ordinary skill in the relevant art.
`
`F.
`
`Earliest Filing Date and Written Description
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`22.
`
`I understand that, generally speaking, a patent application may be a
`
`
`
`continuation of an earlier-filed patent application, and in such situations, the
`
`continuation application may be entitled to the filing date of the earlier “parent”
`
`application. But I understand that in a continuation-in-part (“CIP”) patent
`
`application, claims are not necessarily entitled to the earliest filing date printed on
`
`the face of the patent. I understand that each claim of a CIP patent must be
`
`analyzed individually to determine if that claim has written description support in
`
`the earlier filed application(s). I understand that if a CIP claim lacks written
`
`description support in the earlier application(s), then that claim is entitled only to
`
`the later filing date of the CIP, and not the earlier filing date of the application(s).
`
`In a situation where a CIP patent claims priority to a chain of several earlier
`
`applications, a claim of the CIP would be entitled to the filing date of the earliest
`
`application in the chain that contains adequate written description support for that
`
`claim.
`
`23.
`
`I understand that a claim is determined to have written description
`
`support found in an earlier application only when the disclosure of the earlier
`
`application reasonably conveys to those skilled in the art that the inventor had
`
`possession of the claimed subject matter as of the earlier filing date. Complying
`
`with the written description requirement requires describing the invention in its
`
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`entirety, with all its claimed limitations.
`
`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`24.
`
` I understand that a disclosure that merely renders the claimed subject
`
`matter obvious based on suggestions, knowledge of future market forces, and the
`
`like do not show possession of the invention. Rather, the standard is higher, in that
`
`the specification must provide evidence or otherwise indicate that the inventor
`
`possessed the actual claimed invention at the claimed priority date.
`
`IV. Level of Ordinary Skill in the Art
`25.
`In reviewing and evaluating the ’623 patent to determine the level of
`
`ordinary skill in the art, I have arrived at my opinion that the “art” found in the
`
`’623 patent pertains primarily to electronic circuitry. The art also includes some
`
`degree of what the patent calls an “MMI” (man-machine interface), although only
`
`at a rudimentary level necessary to appreciate the different types of inputs one
`
`might use for the type of devices discussed in the ’623 patent.
`
`26. The discussions in the ’623 patent about microchips and their role in
`
`controlling remote switches are topics that would have been well known to a
`
`student midway through a bachelor’s degree curriculum in electrical or computer
`
`engineering (EE or CE) in the 2004 time frame (the year of filing of the ’494
`
`patent, parent to the ’781 patent, which is turn parent to the ’623 patent) and also
`
`the 1998 time frame (the year of the priority date claimed for this CIP patent.) In
`
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`either time frame, these topics would have been routine and well within the scope
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`of a student at this level of education. Likewise timers, control circuits, and solid-
`
`state switches (e.g., transistors), and especially flashlights-- all relevant to the ’623
`
`patent-- were features of minimal electronic sophistication that would have been
`
`routine subject matter for an upper-class electrical or computer engineering
`
`student.
`
`27. A few of the concepts disclosed in the ’623 specification, for example
`
`those of proximity sensing, series-connected microchips, and floating grounds,
`
`may have required the skilled person to have had some additional experience
`
`beyond an undergraduate EE or CE degree. Based on all these factors, it is thus my
`
`opinion that an artisan of ordinary skill in this area at the time of the invention
`
`would have had a B.S. in electrical engineering or commensurate degree such as
`
`computer engineering, or alternatively, some comparable coursework in the area of
`
`circuit design, in combination with a year or two of practical experience with
`
`products containing electronic circuitry.
`
`V. Claim Construction
`28. As I state above, I understand that in IPR proceedings, the claim terms
`
`in the ’623 patent are to be given their broadest reasonable interpretation as would
`
`be understood by a person of ordinary skill in the art in the time frame of the ’494
`
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`patent. Under this standard, it is my opinion that, aside from the terms otherwise
`
`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`construed below, the terms in the Challenged Claims should be given their
`
`broadest reasonable interpretation in light of the specification, as would be
`
`commonly understood by those of ordinary skill in the art.
`
`A.
`
`“detecting a proximity event through an object approaching the
`touch sensor switch” (claim 24 from which claim 31 ultimately
`depends)
`
`29.
`
`In my opinion, the phrase “detecting a proximity event through an
`
`object approaching the touch sensor switch” would be understood by a person of
`
`ordinary skill in the art at the time of the invention to mean “detecting an object
`
`that is proximate, but not in physical contact with, the touch sensor switch.”
`
`30. The ’623 patent refers to and differentiates between two kinds of
`
`“events”: “physical contact” events and “proximity” events. Ex. 1001 (’623
`
`patent) at [57] (“technology that differentiates between proximity and physical
`
`contact events”); id.at col. 1 ll. 26-29 (“The invention also relates [to] . . .
`
`technology that differentiates between proximity and physical contact events.”); id.
`
`at claim 1 (claiming a microchip that “differentiates between proximity and
`
`physical contact events”). In order to give meaning to the ’623 patent’s
`
`differentiation of these types of events, the step of detecting a proximity event
`
`would be understood to be an event that is different from a physical contact event
`
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`such that detection occurs when the object approaches, but does not make (or has
`
`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`not yet made) physical contact with the touch sensor switch.
`
`B.
`
`“the step of operating a display in response to a proximity event”
`and “said display” (claim 30 from which claim 31 depends)
`
`31.
`
`I note that claim 30 refers to “the” step of operating a display and
`
`“said” display. Id. at claim 30. While this antecedent reference presents some
`
`confusion as to which step and display the claim refers, I have been asked to
`
`assume that these terms, respectively, refer to “a” step of operating a display and
`
`“a” display.
`
`VI. Written Description of the Challenged Claims
`32. For purposes of determining the correct filing date, I have been asked
`
`to consider whether claim 24, from which claims 30 and 31 of the ’623 patent
`
`depend, has written description support in two patent applications that (as I
`
`understand) are parents of the ’623 patent. I have been informed that if the parent
`
`applications do not provide written description of certain claims of the ’623 patent,
`
`then the effective filing date of the ’623 patent is 2004. In my opinion, based on
`
`my analysis, none of the claims have written description support in either of the
`
`applications. Hence, the effective filing date of the ’623 patent is 2004. My
`
`reasons for this opinion are set forth below.
`
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`A. The Parent Applications
`33.
`I was asked to consider the written description question in view of the
`
`following two patent applications: U.S. Patent Application No. 09/806,860 (“’860
`
`application”) and U.S. Patent Application No. 09/169,395 (“’395 application”).
`
`The ’860 application became U.S. Patent No. 6,984,900. See Ex. 1015 (’900
`
`Patent) at [21], [10]. The ’395 application became U.S. Patent No. 6,249,089. See
`
`Ex. 1013 (’089 Patent) at [21], [10]. I note that the ’860 application was published
`
`on April 20, 2000 (Ex. 1004 (Bruwer) at [43]), and I analyze that publication
`
`below. For the analysis that follows, I will collectively refer to the ’860
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`application and the ’395 application as the “Parent Applications.” I note that the
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`specification of the ’494 patent is the same as that of both the ’781 patent and ’623
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`patents.
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`B.
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`The Challenged Claims Lack Written Description in the Parent
`Applications
`34. Claim 24, from which each of the remainder of the Challenged Claims
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`depends, requires “detecting a proximity event.” Ex. 1001 (’623 patent) at claim
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`24. In my opinion, the ’860 and ’395 patent applications do not provide written
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`description for the Challenged Claims, because they do not describe proximity
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`sensors or proximity sensing.
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`35. The word “proximity” did not appear anywhere in the ’860 and ’395
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`patent applications. Rather, the ’860 and ’395 patent applications discussed
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
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`exclusively touch sensors activated through physical touching or pressure, e.g.,
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`carbon coated membrane or touch-pad type switches: “[a]ccording to one aspect of
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`the invention, the MMI [man-machine interface] functions are controlled by very
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`low current signals, using touch pads, or carbon coated membrane type switches.”
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`Ex. 1016 (’900 prosecution history excerpt) at as-filed application p. 4 ll. 19-21;
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`Ex. 1014 (’089 prosecution history excerpt) at as-filed application pp. 5-6. I also
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`note that the ’860 and ’395 patent applications only used the word “hand” as an
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`adjective in hyphenated form, specifically to describe hand-held devices. In
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`contrast, the word “hand” is found as a noun numerous times in the new-material
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`section of the ’494, ’781, and ’623 patents, each time in reference to the approach
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`of a human hand to a proximity sensor:
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`a. "... a human hand being in the proximity of the sensor even if no
`physical contact between the sensor and the hand is made." (Ex.
`1001 (’623 patent) at col. 14 ll. 20-22 (emphasis added));
`
`a. "...indicating proximity of part of the body of the user, such as a
`hand..." (id. at col. 14 ll. 24-24 (emphasis added));
`
`b. “It is also possible in an embodiment to control the energy level,
`and hence the intensity of light or sound of the FITD [find-in-the-
`dark] indicator in some relationships to the proximity distance, say
`the closer the hand, the brighter or more intense is the FITD
`indicator.” (id. at col. 14 ll. 30-34 (emphasis added));
`
`c. “In simple terms the physical switch (pb) [push button] surface that
`- 19 -
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`

`

`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`a user must press, may glow (in the dark) when the user brings
`his/her hand close to the switch.” (id. at col. 14 ll. 57-59
`(emphasis added));
`
`
`
`
`
`d. "...the user can reset the auto-off timer by the wave of a hand past
`the sensor and an actuation of the pb switch is then not necessarily
`required to extend the period of operation. (id. at col. 15 ll. 30-33
`(emphasis added)).
`
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`None of these uses of the word “hand” as a noun appeared in the ’860 and ’395
`
`patent applications, and the phrase “hand-held” appeared only once in the ’860 and
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`’395 patent applications, in the Background of the Invention section.
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`36. By way of further contrasting the difference between the ’860 and
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`’395 patent applications and the ’623 patent, I found it helpful to examine the new
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`portions of the ’623 patent which expressly and extensively discuss proximity
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`sensing. Exhibit 1003 is a copy of the ’623 patent with highlighting added to show
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`those newer portions not present in the ’860 and ’395 patent applications, but later
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`added with the filing of the ’494 grandparent. (The ’494 patent is the immediate
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`parent of the ‘781 patent, which is in turn the immediate parent of the ’623 patent.)
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`See generally Ex. 1003 (Showing the New Matter). The ’623 patent uses the term
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`“capacitive sensor technology,” whereas the ’860 and ’395 patent applications did
`
`not discuss capacitive sensors anywhere at all. Ex. 1003 (Showing the New
`
`Matter) at col. 1 ll. 22-23. Capacitive sensors were (and are) a typical way of
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`- 20 -
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`providing proximity sensing. Several examples from the new material in the ’623
`
`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`patent include the following: “[t]he present invention relates to new intelligent
`
`electrical user interface structures that includes capacitive sensor technology,” id.
`
`at col. 1 ll. 21-23 (emphasis added); “user interfaces with capacitive sensing
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`technology . . . differentiates between proximity and physical contact events. . . ,”
`
`id. at col. 1 ll. 27-29; functionality “based on proximity and not necessarily
`
`physical touch or contact.” Id. at col. 13 ll. 40-41. The ’623 patent also describes
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`proximity specifically to the find-in-the-dark feature, namely the ability for the
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`disclosed LED to be activated in response to hand proximity, rather than by
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`physical touch. Id. at col. 14 ll. 23-27.
`
`37. With respect to the issue of written description, one excerpt from the
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`’623 patent that warrants particular attention is found at column 13, lines 40-43.
`
`Here the patent states that proximity sensing “is an inherent characteristic of some
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`touch sensor or touch pad technologies.” Id. at col. 13 ll. 40-43 (citing U.S. Patent
`
`Nos. 5,730,165 & 6,466,036). The referral to these prior-art patents does not
`
`change my opinion that the ’860 and ’395 patent applications lack written
`
`description of proximity sensing. Firstly, reference to these patents (or their
`
`contents) is not found anywhere in these applications. Moreover, although the
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`word “capacitor” appeared in the ’860 and ’395 patent applications, it was used
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`- 21 -
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`solely in the context of the electric circuit operation of the microchip. See, e.g.,
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`IPR2015-01023
`Exhibit 1021 (Horenstein Declaration)
`U.S. Patent No. 8,035,623
`
`Ex. 1013 (’089 Patent) at col. 8 ll. 58-59. It was never used in the context of
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`sensors, be they proximity or otherwise. A person of skill in the art reading the
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`’860 and ’395 patent applications in 1998 would not understand the inventors to be
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`in possession of proximity sensing, because the inventors made use exclusively of
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`the “touch” terminology; they never disclosed any sensors (such as capacitive
`
`sensors) that could detect proximity. Instead, the inventors disclosed only physical
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`touch sensors in the ’860 and ’395 patent applications.
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`VII. Anticipation and Obviousness – Overview
`38.
`In my opinion, for the reasons set forth below, Challenged Claims 24
`
`and 30 of the ’623 Patent are anticipated by Hinckley. Further, in my opinion, and
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`for the reasons set forth below, Challenged Claim 31 of the ’623 would have been
`
`obvious to one of skill in the art in view of Hinckley.
`
`39.
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`In following the analytical framework for anticipation and
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`obviousness that has been explained to me, I will first discuss the scope and
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`content of the prior art, then analyze each claim to show where the limitations of
`
`the claim are present in the prior art. Where applicable, I will also discuss why one
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`of skill would have been motivated to combine the