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 – 01148
`Patent 7,498,749
`
`EXHIBIT 1011
`
`
`DECLARATION OF MARK N. HORENSTEIN, PH.D., P.E.
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`1
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`IPR2015 – 01148
`Exhibit 1011 (Horenstein Declaration)
`U.S. Patent No. 7,498,749
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`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
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`MICROSOFT EXHIBIT 1011
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`

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`
`IPR2015 – 01148
`Exhibit 1011 (Horenstein Declaration)
`U.S. Patent No. 7,498,749
`
`
`
`TABLE OF CONTENTS
`
`Introduction & Qualifications .......................................................................... 5 
`I. 
`II.  Materials Reviewed ......................................................................................... 8 
`III.  The Law ........................................................................................................... 9 
`A. 
`Obviousness Analysis ........................................................................ 9 
`B. 
`Level of Ordinary Skill in the Art.................................................... 10 
`C. 
`Objective Considerations ................................................................. 11 
`D. 
`Claim Construction .......................................................................... 11 
`IV.  Level of Ordinary Skill in the Art ................................................................. 12 
`V. 
`Claim Construction ........................................................................................ 13 
`A. 
`“non-mains” (claims 7 & 15) ........................................................... 14 
`VI.  Obviousness – Overview ............................................................................... 14 
`VII.  Obviousness - Description of Prior-Art Jahagirdar Patent ............................ 15 
`VIII.  Obviousness – Description of Prior-Art Touch Sensor References .............. 21 
`A. 
`Schultz ........................................................................................................... 21 
`B. 
`Touch Sensors in the Prior Art Generally ..................................................... 23 
`IX.  Summary of Obviousness Opinions .............................................................. 26 
`Independent Claim 1 would have been obvious over Jahagirdar in
`X. 
`combination with Schultz .............................................................................. 27 
`A. ..... Jahagirdar taught the limitations of claim 1’s preamble, “An electronic
`unit for use with a product comprising connections for a power source and at
`least one energy consuming load, said unit comprising:” ............................. 27 
`Recitation [a] of claim 1: Jahagirdar combined with Schultz renders obvious
`“a microchip connected to a user interface switch structure, said structure
`2
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`B. 
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`IPR2015 – 01148
`Exhibit 1011 (Horenstein Declaration)
`U.S. Patent No. 7,498,749
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`C. 
`
`D. 
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`comprising at least one switch, being a touch sensor type switch that
`includes a sense pad” ..................................................................................... 28 
`Recitation [b] of claim 1: Jahagirdar taught “visible indicator… [that
`provided] an indicator activation function when a signal is received through
`said user interface switch, wherein the indicator is active when the load is
`not activated by the user” .............................................................................. 38 
`Recitation [c] of claim 1: Jahagirdar taught the microchip… implement[ing]
`the touch sensor … and …automatic delayed deactivation…indicat[ing]
`conditions of the product… [or] a touch sensor…[that is] integral” ............. 41 
`XI.  Dependent Claim 2 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 44 
`XII.  Dependent Claim 5 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 45 
`XIII.  Dependent Claim 6 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 46 
`XIV.  Dependent Claim 7 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 47 
`XV.  Dependent Claim 14 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 48 
`XVI.  Dependent Claim 15 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 50 
`XVII. Independent Claim 21 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 51 
`Jahagirdar taught the limitations of claim 21’s preamble, “A method of
`implementing a user interface for a product comprising connections for a
`power supply and at least one energy consuming load,” .............................. 51 
`3
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`A. 
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`B. 
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`IPR2015 – 01148
`Exhibit 1011 (Horenstein Declaration)
`U.S. Patent No. 7,498,749
`
`
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`C. 
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`Limitation [a] of Claim 21: Jahagirdar combined with Schultz renders
`obvious “using at least a touch sensor user interface switch and a visible
`indicator,” ...................................................................................................... 53 
`Limitation [b] of Claim 21: Jahagirdar taught “activating the indicator in
`response to a user interface switch activation signal . . . when the load is not
`activated by the user . . . performing an automatic delayed deactivation of a
`function . . .” .................................................................................................. 61 
`XVIII.Dependent Claim 23 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 64 
`XIX.  The Challenged Claims Would Have Been Obvious Under the Construction
`of “Energy Consuming Load” Advanced by Apple ...................................... 65 
`
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`4
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`
`I.
`
` Introduction & Qualifications
`
`I, Mark N. Horenstein, declare as follows:
`
`1.
`
`I understand that Microsoft Corporation (“Microsoft”) and Nokia Inc.
`
`(“Nokia”) are petitioning the Patent Office for an inter partes review of claims 1,
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`2, 5-7, 14, 15, 21, and 23 of U.S. Patent No. 7,498,749 (“’749 patent”). I have
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`been retained by the Petitioners, Microsoft and Nokia, to offer technical opinions
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`relating to the ’749 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
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`Electrical and Computer Engineering at Boston University, where I have been a
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`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
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`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
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`Professor (1979-1985).
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`3.
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`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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`
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`Electric Power Systems Engineering Laboratory. I also hold an M.S. degree in
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`Electrical Engineering from the University of California at Berkeley (1975), and
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`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
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`Professional Engineer (Electrical) in the Commonwealth of Massachusetts. In
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`2013, I was named an International Fellow by the Industrial Electrostatics Group
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`of the European Federation of Chemical Engineering (EFCE).
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`5. My primary areas of research are in applied electromagnetics,
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`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-
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`wave communication and image processing, and methods for making self-
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`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
`
`Education, 5th ed. 2015). I have authored book chapters in two reference books
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`related to electromagnetics, and I have authored or co-authored over 50 journal
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`articles on a variety of topics in my fields of expertise, and approximately 100
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`conference papers. I have advised five Ph.D. students performing research in these
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`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.
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`7.
`
`I have taught approximately ten different courses (numerous times) in
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`the above subject areas over the past 34 years, to over 3,000 undergraduate and
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`graduate students. The subject matter of these courses includes circuits and
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`electronics, static and dynamic electromagnetics, antennas, waveguides, rf
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`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
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`sensors, MEMS sensors, and infrared detection systems as part of various research
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`projects. I also developed the curriculum for a graduate course in power
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`electronics in the Department of Electrical and Computer Engineering at Boston
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`University, which includes detailed lectures and extensive laboratory experiments.
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`9. My curriculum vitae, enclosed as Attachment B, contains a more
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`detailed description of my background.
`
`10.
`
`I am being compensated at a consulting rate of $275 per hour for my
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`technical analysis in this matter.
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`
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`II. Materials Reviewed
`11.
`In forming my opinions, I have reviewed the following:
`
`a. U.S. Patent No. 7,498,749 (filed Oct. 30, 2007) (“’749 patent”) (Ex.
`
`1001);
`
`b. Prosecution history for the ’749 patent (“’749 prosecution history”)
`
`(Ex. 1002);
`
`c. U.S. Patent No. 6,249,089 (filed Oct. 9, 1998) (“’089 Patent”) (Ex.
`
`1003);
`
`d. U.S. Patent No. 6,125,286 (filed June 5, 1997) (“Jahagirdar”) (Ex.
`
`1004);
`
`e. U.S. Patent No. 4,053,789 (filed Aug. 27, 1976) (“Schultz”) (Ex.
`
`1005);
`
`f. U.S. Patent No. 5,329,577 (filed Dec. 29, 1992) (“Norimatsu”) (Ex.
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`1006);
`
`g. William Buxton et al., Issues and Techniques in Touch-Sensitive
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`Tablet Input, 85 PROC. SIGGRAPH CONF. ON COMPUTER GRAPHICS
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`AND INTERACTIVE TECHS. 215, 215-24 (1985) (“Buxton”) (Ex. 1007);
`
`h. U.S. Patent No. 4,963,793 (filed Mar. 8, 1988) (“DePauli”) (Ex.
`
`1008); and
`
`i. U.S. Patent No. 4,764,708 (filed Dec. 8, 1986) (“Roudeski”) (Ex.
`
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`1009).
`
`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
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`to be correct and applicable for purposes of my analysis. I set forth those
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`principles below.
`
`A. Obviousness Analysis
`13.
`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 at the time the invention was made to a
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`person having ordinary skill in the art.
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`14.
`
`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
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`ordinary skill will be able to fit the teachings of multiple patents together like
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`pieces of a puzzle. I understand that the obviousness analysis is flexible, taking
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`into account the interrelated teachings of several patents, the effects of demands
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`known to the design community or present in the marketplace, and the background
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`knowledge of a person of ordinary skill in the art. I understand that the
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`combination of familiar elements according to known methods is likely to be
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`obvious when it does no more than yield predictable results.
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`15.
`
`I have been instructed that an obviousness inquiry requires a four-step
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`analysis involving the so called Graham factors:
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`(1) determining the scope and content of the prior art;
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`(2) ascertaining the differences between the prior art and the claims at
`
`issue;
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`(3) resolving the level of ordinary skill in the pertinent art; and
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`(4) evaluating objective considerations.
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`16. Once these determinations have been made, I understand that one
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`must decide, in view of the evidence regarding these four factors, whether or not
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`the invention, considered as a whole, would have been obvious to one having
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`ordinary skill in the relevant art at the time that the alleged invention was made.
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`17.
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`I am told that one must keep in mind that it is not permissible to use
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`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.
`
`B.
`Level of Ordinary Skill in the Art
`18. To determine the level of ordinary skill in field of art, I’ve been
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`instructed that there are no exhaustive factors that may be considered, and I’ve
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`been instructed to consider the following, to the extent that I can, in opining on the
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`level of ordinary skill in the field of art pertaining to the ’749 patent:
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`(1) The educational level of the inventor;
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`(2) Types of problems encountered in the art;
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`(3) Prior art solutions to those problems;
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`(4) Rapidity with which innovations are made;
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`(5) Sophistication of the technology; and
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`(6) Educational level of active workers in the field.
`
`C. Objective Considerations
`19. Regarding the fourth step in the four-step process for assessing
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`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
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`felt but unsolved need, failure of others, commercial success, unexpected results
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`created by the claimed invention, unexpected properties of the claimed invention,
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`licenses showing industry respect for the invention, and skepticism of skilled
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`artisans before the invention was made. I have no reason to believe that any of
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`these factors apply to the challenged claims of the ’749 patent.
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`D. Claim Construction
`20.
`I understand that in an inter partes review at the patent office, claims
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`are to be given their broadest reasonable interpretation in light of the specification
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`as would be read by a person of ordinary skill in the relevant art.
`
`IV. Level of Ordinary Skill in the Art
`21.
`In reviewing and evaluating the ’749 patent to determine the level of
`
`ordinary skill in the art, I have arrived at my opinion that the “art” found in the
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`’749 patent pertains primarily to electronic circuitry. The art also includes some
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`degree of what the patent calls an “MMI” (man-machine interface), although only
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`at a rudimentary level necessary to appreciate the different types of inputs one
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`might use for the type of devices discussed in the ’749 patent.
`
`22. The discussions in the ’749 patent about microchips and their role in
`
`controlling remote switches are topics that would have been well known to a
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`student midway through a bachelor’s degree curriculum in electrical or computer
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`engineering (EE or CE) in the 2007 time frame (the year of filing of the ’749
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`patent) and also the 1998/1999 time frame (the earliest claimed priority dates for
`
`the ’749 patent). In either time frame, these topics would have been routine and
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`well within the scope of a student at this level of education. Likewise, timers,
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`control circuits, and solid-state switches (e.g., transistors), and especially
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`flashlights-- all relevant to the ’749 patent-- were features of minimal electronic
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`sophistication that would have been routine subject matter for an upper-class EE or
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`CE student.
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`23. A few of the concepts described in the ’749 specification, for example
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`those of series-connected microchips and floating grounds, may have required the
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`skilled person to have had some additional experience beyond an undergraduate
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`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 a B.S. in
`
`electrical engineering or commensurate degree such as computer engineering, or
`
`alternatively, some coursework comparable in the area of circuit design, in
`
`combination with a year or two of practical experience with products containing
`
`electronic circuitry.
`
`V. Claim Construction
`24. As I state above, I understand that in IPR proceedings, the claim terms
`
`in the ’749 patent are to be given their broadest reasonable interpretation as would
`
`be understood by a person of ordinary skill in the art at the time of invention.
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`Under this standard, it is my opinion that, aside from the terms otherwise 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. I understand that the ’749 patent
`
`application was filed in 2007, but claims priority to applications filed as early as
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`1998 and 1999. My views on the meaning of the terms of the Challenged Claims
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`are the same regardless of the timeframe considered.
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`A.
`25.
`
`“non-mains” (claims 7 & 15)
`
`In my opinion, the term “non-mains” would be understood by a
`
`person of ordinary skill in the art at the time of the invention to mean “not from the
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`AC utility wiring system of a building.”
`
`26. The term “non-mains” presents some ambiguity, because this term
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`does not appear in the specification. However, in relation to electrical systems, the
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`term “mains” refers to the AC utility wiring system of a building. This usage is
`
`prevalent in countries that are current or former members of the United Kingdom.
`
`Given that the inventor Bruwer resided in South Africa (ZA) at the time of patent
`
`issue, this meaning of “non-mains” makes sense. Read in the context of claims 7
`
`and 15, a power source that is “non-mains” relates to a power source that is not
`
`from the AC utility wiring system of a building. For example, a battery is a type of
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`power source that is separate from the AC utility wiring system of a building.
`
`VI. Obviousness – Overview
`27.
`In my opinion, for the reasons set forth below, the Challenged Claims
`
`of the ’749 patent would have been obvious to one of ordinary skill in the art in
`
`1998, the earliest possible effective filing date of the ’749 patent. I reached this
`
`conclusion primarily in view of Jahagirdar (Ex. 1004), which teaches, among other
`
`things, microchip-controlled user interfaces, but also in view of well-known
`
`principles of touch sensing. These principles are embodied in several references,
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`including computer and telephone prior art, that I will also discuss. By way of
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`summary, it is my opinion that the Challenged Claims are obvious in view of
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`Jahagirdar and known proximity sensor technology, e.g., Schultz (Ex. 1005), as
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`discussed below.
`
`28.
`
`In following the analytical framework for obviousness that has been
`
`explained to me, I will first discuss the scope and content of the prior art, then
`
`analyze each claim to show where the limitations of the claim are present in the
`
`prior art. I will also discuss why one of skill would have been motivated to
`
`combine the prior art accordingly. I have already set forth above the level of skill
`
`for a person skilled in the art in the time frame of the ’749 patent. See supra
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`Section IV.
`
`VII. Obviousness - Description of Prior-Art Jahagirdar Patent
`29.
`Jahagirdar is a U.S. Patent entitled “Communication Device Having
`
`Multiple Displays and Method of Operating the Same,” that was filed on June 5,
`
`1997. Ex. 1004 (Jahagirdar) at [22], [54]. I understand that Jahagirdar is prior art
`
`to the ’749 patent. Jahagirdar was directed generally to the field of electronic
`
`circuitry applied to MMIs, and in particular to a mobile phone that has a
`
`microchip-controlled user interface and mechanical push-button switches. See id.
`
`at col. 3 ll. 59-67.
`
`30.
`
`Jahagirdar described that its electrical circuitry 500 could be used with
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`a product, such as a mobile station 102 (a portable communication device). Id. at
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`col. 1 l. 63-col. 2 l. 6, col. 3 ll. 30-31, figs. 1-2.
`
`31. Electrical circuitry 500 included a connection for a power source
`
`(battery 128): “[m]obile station 102 also includes a removable battery 128.” Id. at
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`col. 3 l. 33. Further, electrical circuitry 500 also included a connection for an
`
`energy consuming load (display element 520). Id. at col. 4 ll. 27-30. As shown in
`
`Figures 1 and 2 below, the energy consuming load (display element 520) provided
`
`visual information in display area 132: “[d]isplay elements 516 and 520 provide
`
`visual information in display areas 130 and 132, respectively.” Id. at col. 4 ll. 40-
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`41.
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`With reference again to Figure 5 below, electrical circuitry 500 included a
`
`microchip (controller 504) and an electronic circuit (key circuit 513). Id. at col. 3
`
`ll. 60-64. Specifically, Jahagirdar explained that “[e]lectrical circuitry 500
`
`includes . . . a key circuit 513.” Id.
`
`
`
`32.
`
`Jahagirdar described that the “key circuit 513 provides signals to
`
`controller [504] in response to actuations of the plurality of keys 144.” Id. at col. 4
`
`ll. 19-20. Jahagirdar’s user interface switch structure included this plurality of
`
`keys 144. Id. at col. 3 ll. 30-31. As shown in Figures 1 and 2 above, the keys 144
`
`were located on the outer housing of the mobile station 102. Id. at figs. 1-2. These
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`
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`keys could be used to control various functions of the mobile station 102 such as
`
`answering or terminating a call, forwarding a call to voicemail, or displaying
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`information on one of the display areas. Id. at col. 6 ll. 40-45, col. 7 ll. 5-11, col. 7
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`ll. 16-20.
`
`33.
`
`Jahagirdar’s electrical circuitry 500 included a visible indicator
`
`(display element 516). Id. at col. 3 ll. 60-62, col. 4 ll. 27-30. Specifically, display
`
`element 516 could provide an indicator activation function such as displaying
`
`visual information in display area 130. Id. at col. 5 ll. 54-57. Further, Jahagirdar
`
`disclosed that its display element 516 was controlled by the microchip (controller
`
`504) to provide its indicator activation function when a signal was received from
`
`key 150 (of keys 144 which were part of Jahagirdar’s user interface switch). Id. In
`
`relation to Figure 8A, shown below, Jahagirdar disclosed “[i]f controller 504
`
`detects an actuation of key 150 (step 814), controller 504 sends display data to
`
`driver 514, which sends display data to display element 516. For [sic] displaying
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`new visual information in display area 130.” Id. at col. 5 ll. 54-57.
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`34.
`
`Jahagirdar also disclosed that its indicator (display element 516) was
`
`active when the load (display element 520) was not activated by the user. Id. at
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`col. 5 ll. 35-37. Specifically, in relation again to Figure 8A, above, Jahagirdar
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`
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`disclosed that prior to the key actuation detection (step 814) and the step of
`
`displaying a visible indicator (step 816), display element 520 was turned off at step
`
`806. See id. Jahagirdar described that “[i]f power was previously enabled for
`
`driver 518 and display element 520, controller 504 disables power thereto (step
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`806).” Id. Because the load (display element 520) was already off at step 806, the
`
`indicator could be active when the load was not activated by the user. Further,
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`Jahagirdar’s controller 504 at least partially implemented the plurality of keys 144:
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`“key circuit 513 provides signals to controller [504] in response to actuations of the
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`plurality of keys 144.” Id. at col. 4 ll. 19-20.
`
`35. Additionally, Jahagirdar disclosed that its user interface had an
`
`automatic delayed deactivation of a function a predetermined period after the
`
`function was activated with an activation command received from its keys. With
`
`reference again to Figure 8A above, after “controller 504 sends display data to
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`driver 514, which sends display data to display element 516” at step 816,
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`“[c]ontroller 504 sets a timer related to the new display information (step 818)” in
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`order to automatically deactivate the visible indicator, display element 516, a
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`predetermined period of time after it was activated. Id. at col. 5 ll. 55-65.
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`Jahagirdar also disclosed that its visible indicator (display element 516), in
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`response to the controller 504 receiving a signal, could be activated to indicate
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`conditions of the product. Id. at col. 5 ll. 59-61. The visible indicator showed a
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`state of the product or a condition of the product. For example, Jahagirdar
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`described that display element 516 displayed visual information such as “status
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`information, and may include date and time information, battery status information
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`such as a battery level indication and/or a low battery warning indication.” Id. at
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`col. 5 ll. 59-61. This status information showed a state or condition of the product.
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`Also, with reference to Figures 1 and 2 below, Jahagirdar disclosed that keys 144
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`were integral with housing 105. Id. at col. 2 l. 13, figs. 1-2.
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`VIII. Obviousness – Description of Prior-Art Touch Sensor References
`A.
`Schultz
`36. Schultz is a U.S. patent entitled “Touch Actuated System Responsive
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`to a Combination of Resistance and Capacitance.” Ex. 1005 (Schultz) at [54]. It
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`issued on October 11, 1977. Id. at [45]. I understand that Schultz is prior art to the
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`’749 patent. As is the case with the ’749 patent and Jahagirdar, Schultz was
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`directed to the field of electronic circuitry applied to MMIs, and in particular,
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`Schultz described “a reliable touch actuated system.” Id. at col. 1 ll. 27-31.
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`37. With reference to Figure 3 from Schultz, reprinted below, Schultz
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`described a touch sensor type switch that included a sense pad: touch responsive
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`area 67. Id. at col. 4 ll. 47-48. When “an element, such as the human finger, across
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`the conductors 34 and 35 [corresponding to touch responsive area 67] causes the
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`voltage on conductor 36 to change state and be inverted by the inverter 41[, t]his
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`inversion by inverter 41 combined with the pulse output 11 causes the flip-flop 43
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`to change state and activate the load 52.” Id. at col. 4 ll. 30-35.
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`38. Schultz further described that its design was an improvement over
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`prior-art switches because it minimized inadvertent actuation. Id. at col. 1 ll. 20-
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`21. “With the present system, a more reliable touch sensing mechanism is
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`provided than is available by mere capacitive proximity type touch devices or
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`purely resistive touch type devices.” Id. at col. 1 ll. 64-67. Specifically, “[t]he
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`mere application of a short circuit between the conductors 34 and 35 does not
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`provide the necessary charging delay of capacitor 60 and voltage which are
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`necessary to actuate the present system. The inherent body capacitance 60 of an
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`animal is required.” Id. at col. 4 ll. 35-40. I note that Schultz included humans
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`among the “animals” that could interact with the sensor: “[t]here are numerous
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`types of electrical control systems that are responsive to the touch of animals, such
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`as humans, pets or domestic animals.” Id. at col. 1 ll. 7-9.
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`39. Schultz described that its touch sensor had an advantage over
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`“[c]onventional electric switches which require movements [and] are susceptible to
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`contamination and mechanical failures.” Id. at col. 1 ll. 17-19. Schultz further
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`explained that its touch sensor “has no moving parts and is therefor not subject
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`to…contamination and spurious types of operation.” Id. at col. 1 l. 68-col. 2 l. 1.
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`B.
`Touch Sensors in the Prior Art Generally
`40. By 1998, touch sensing was old technology with widely recognized
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`functionality. Touch sensors similar to those described in Schultz also had known
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`applications in telephones, such as Jahagirdar’s mobile phone.
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`41. For example, Norimatsu, a U.S. patent entitled “Telephone Having
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`Touch Sensor for Responding to a Call,” issued on July 12, 1994. Ex. 1006
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`(Norimatsu) at [45], [54]. Figure 4 of Norimatsu, shown below, depicted a
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`telephone handset 40 that included a touch sensor portion 191. Id. at col. 4 l. 1.
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`42. Norimatsu described that “[t]he sensor portion, or mesh, 191 is
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`attached to part of the handset surface, which part is so selected that the user can
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`most conveniently touch thereon.” Id. at col. 4 ll. 9-12. Further, “when the user
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`touches the sensor portion 191, the amplifier 194 produces a high-level signal
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`which is sent to the controller 15 as a detection signal.” Id. at col. 3 ll. 61-63.
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`“[I]n response to the detection signal, the controller 15 determines that the user has
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`responded to a call and then stops the transmission of the signaling tone.” Id. at
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`col. 3 ll. 65-68.
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`43. Norimatsu described the convenience of such touch sensors for the
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`user: “[a]nother object of the present invention is to provide a telephone in which
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`the user can easily respond to a call by simply touching the telephone.” Id. at col.
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`1 ll. 34-36.
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`44. Other benefits of touch sensing had long been recognized in the field.
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`For example, in the 1985 publication of “Issues and Techniques in Touch-Sensitive
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`Tablet Input,” written by William Buxton et al., the authors highlighted that the
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`“simple construction, [of touch sensors] with no moving parts, leads to reliable and
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`long-lived operation.” Ex. 1007 (Buxton) at p. 216.
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`45. Further, references which were cited in the prosecution of the ’749
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`patent provided similar indications of the benefits of touch sensing. For example,
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`DePauli, which was entitled “Delayed Response Touch Switch Controller” and
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`issued on October 16, 1990, described that “[t]ouch control switching systems,
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`especially for controlling illumination devices, have proven appealing due to their
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`added convenience and aesthetics.” Ex. 1008 (DePauli) at [45], [54], col. 1 ll. 22-
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`24.
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`46. Further, Roudeski, which was entitled “Touch Control Lamp Socket
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`Interior” and issued on August 16, 1988, taught that “[t]ouch controls are quick
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`and convenient, and especially ideal for pre-schoolers and physically disabled
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`persons, such as arthritics, who find it difficult, in view of their limited dexterity,
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`to operate conventional light switches.” Ex. 1009 (Roudeski) at [45], [54], col. 1
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`ll. 16-20.
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`IX. Summary of Obviousness Opinions
`47. For the reasons expressed throughout this declaration, it is my opinion
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`that the limitations of the Challenged Claims can be found in Jahagirdar and in the
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`touch sensor prior art, for example in Schultz. And as I explain, it would have
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`been obvious to a pe