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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`MICROSOFT CORPORATION and MICROSOFT MOBILE INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
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`Case IPR2015-01149
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S RESPONSE, 37 C.F.R. §42.120
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`MICROSOFT CORPORATION and MICROSOFT MOBILE INC.,
`Petitioners
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01149
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S RESPONSE, 37 C.F.R. §42.120
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`INTRODUCTION
`INTRODUCTION
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`ii
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`2
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES
`TABLE OF AUTHORITIES
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`I.
`I.
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`THE COMBINATION OF JAHAGIRDAR IN VIEW OF SCHULTZ DOES
`II.
`THE COMBINATION OF JAI-IAGIRDAR IN VIEW OF SCHULTZ DOES
`II.
`NOT TEACH THE LOCATION INDICATION FUNCTION OF THE LUMINOUS
`NOT TEACH TI-IE LOCATION INDICATION FUNCTION OF THE LUMINOUS
`VISIBLE LOCATION INDICATOR OF CLAIM 1
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`4
`VISIBLE LOCATION INDICATOR OF CLAIIVI 1
`4
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`III. ONE OF ORDINARY SKILL IN THE ART WOULD NOT COMBINE
`III.
`ONE OF ORDINARY SKILL IN THE ART WOULD NOT COMBINE
`JAHAGIRDAR AND SCHULTZ
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`14
`JAHAGIRDAR AND SCHULTZ
`14
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`IV. THE COMBINATION OF JAHAGIRDAR WITH SCHULTZ
`IV.
`THE COMBINATION OF JAI-IAGIRDAR WITH SCHULTZ
`DOES NOT TEACH AN ACTIVATION STEP WHEN THE LOAD IS NOT
`DOES NOT TEACH AN ACTIVATION STEP WHEN THE LOAD IS NOT
`ACTIVATED
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`ACTIVATED
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`V.
`THE COMBINATION OF JAHAGIRDAR WITH SCHULTZ DOES NOT
`V.
`THE COMBINATION OF JAI-IAGIRDAR WITH SCHULTZ DOES NOT
`TEACH THE ACTIVATION BEING ONLY FOR A PERIOD OF TIME
`26
`TEACH THE ACTIVATION BEING ONLY FOR A PERIOD OF THVIE
`26
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`VI. CONCLUSION
`VI.
`CONCLUSION
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`23
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`30
`30
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`TABLE OF AUTHORITES
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`IPR2015-01149
`Patent No 7,329,970
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`CASES
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`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006)
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`Digital-Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc.,
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`672 F.3d 1270, 1275 (Fed. Cir. 2012)
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`DyStar Textilfarben GmbH v. Patrick Co.,
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`464 F.3d 1356, 1361 (Fed. Cir. 2006)
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`Ex Parte Schmidt, 2016 WL 738218 * 2-3 (PTAB)
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`In re Caldwell, 319 F. 2d 254, 256 (CCPA 1963)
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`In re Gurley, 7 F.3d 551, 553 (Fed. Cir. 1993)
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`5
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`24
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`5, 23
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`Phillips v. AWH Corp.,
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`415 F. 3d 1303, 1321 (Fed. Cir. 2005) (rehearing en banc)
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`ii
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`IPR2015-01149
`Patent No 7,329,970
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`I.
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`INTRODUCTION
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`Petitioners challenge claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of U.S.
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`Patent No. 7,329,970 (hereinafter “the ‘970 Patent) as obvious 35 USC §103(a)
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`over a combination of two (2) references, U.S. Patent No. 6,125,286, (hereinafter
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`referred to “Jahagirdar”) taken in view of U.S. Patent No. 4,053,789, (hereinafter
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`referred to as “Schultz”). Patent Owner Global Touch Solutions, LLC (hereinafter
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`referred to “PO”) opposes that Petition, and responds herein to the Petition on four
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`separate bases.
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`First, the combination of references does not disclose or suggest a luminous
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`visible location indicator as recited in claim 1. Petitioners and Dr. Horenstein
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`appear to ignore the location indicating function of the luminous visible location
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`indicator. However, each operation of display element 516 of Jahagirdar (the
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`alleged luminous visible location indicator) requires a touching of the mobile
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`station 102 such that the location of the mobile station 102 is necessarily known by
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`the user. The indicated location may be, for example, a location of the device or a
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`location of an area for touch input. In order for a location to be indicated, however,
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`the location must be at least partially unknown. And, if a user is touching the
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`device, the user necessarily knows the location of the device.
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`Second, the combination of references is not one that would be made by
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`those of skill in the art. Indeed, the motivation for combination that is advanced by
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`Petitioners and their expert – reduction of inadvertent actuation – is in fact
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`exacerbated by the proposed substitution. Because virtually any touch of an animal
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`(human or pet) actuates the touch switch, causing it to send a signal, and because
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`the flip phone of the principal reference requires switches to be on the exterior of
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`the phone – simply picking up the phone to use it guarantees the occurrence of
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`inadvertent actuation. If in fact one wishes to minimize contamination and similar
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`factors addressed by Petitioners’ expert Horenstein, other solutions, such as
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`membrane switches, were known to those of skill in the art as suitable substitutes.
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`The combination of art is one made in hindsight, propelled by the clear description
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`in the ‘‘970 Patent of the value of a marriage of technologies not previously made.
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`Third, even if one accepts the combination at face value, the requirements of
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`independent Claims 1 and 52 are not met. Claims 1 and 52 provide a requirement
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`that a visible indicator be provided that is activated in response to a microchip
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`receiving a user interface switch signal when the load is not activated by the user. In
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`claim 1, this feature is provided as an alternative requirement, and such alternative
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`requirement is selected in dependent claims 3-5, 10-14, and 19.
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`Patent No. 7,329,970 B2
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`What Petitioners and the Decision to Institute identify as activation is
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`actuation – sending new information to a function or device already activated. The
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`function Petitioners identify, the data display of the edge display of Jahagirdar, was
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`not activated in the sequence identified by Petitioners.
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`Finally, Jahagirdar simply does not disclose that the display element 516 (the
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`alleged location indicator) is activated only for a period of time. Instead, the display
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`element 516 is only operated through the manual opening and closing of the flip
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`phone mobile station 102 of Jahagirdar. Neither Jahagirdar nor Schultz, whether
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`taken alone or in combination, discloses or suggests any other turning on or turning
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`off of the display element 516. Instead of the display element 516 being active for a
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`period of time, the display element 516 is operable by the user.
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`PO relies on the Declaration of Morley submitted herewith, Ex. 2006, and
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`the references cited therein.
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`II. THE COMBINATION OF JAHAGIRDAR IN VIEW OF SCHULTZ
`DOES NOT TEACH THE LOCATION INDICATION FUNCTION OF THE
`LUMINOUS VISIBLE LOCATION INDICATOR OF CLAIM 1
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`Independent claim 1 recites that the microchip of the electronic module
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`controls “a luminous visible location indicator that is not the load.” Dependent
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`claims 3-5, 10-14, 19, 48, 49, and 51 depend upon and incorporate the luminous
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`visible location indicator of independent claim 1.
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`To give each word of the claim meaning, a luminous visible location
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`indicator is required to be visible and luminous and to indicate a location.
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`Petitioner appears to have simply ignored that the luminous visible location
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`indicator is a luminous visible location indicator, or Petitioner may merely have
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`incorrectly assumed that anything luminous indicates a location.
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`Any interpretation that ignores the location indicating function of the
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`luminous visible
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`location
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`indicator
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`renders claim
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`terms superfluous
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`in
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`contravention of long-standing doctrines of claim construction. See, e.g., Digital-
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`Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir.
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`2012), citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006), and
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`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (claim language
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`should not be rendered superfluous).
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`Figure 11 of the ‘970 Patent, provided below, illustrates an embodiment in
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`which luminous visible location indicator is controlled by the microchip to indicate
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`a location. Ex. 1001 at 9:49-50.
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`The location indicator device 1104 may be realized as an LED that is
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`illuminated in this embodiment when the microchip 1113 sets the pin connected to
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`the line 1114, which is also connected to the switch 1111, to a high output state.
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`Id. at 9:52-57. In other embodiments, the pin controlling the indicator 1104 may be
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`a different pin than the pin connected to the switch 1111. Id. at 9:50-52. Microchip
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`1113 can activate the LED 1104 for a short time, for example, every 100
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`milliseconds or every 10 seconds. Id. at 9:60-63. This indication will enable fast
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`location of the device in the dark, e.g. in times of emergency. Id. at 9:63-66. As
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`indicated in still other embodiments, the microchip 201 may be programmed to
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`operate the load 105 to indicate an emergency situation, for example, by generating
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`an S.O.S. signal. Id. at 7:44-51. .Accordingly, the microchip 1113 can control the
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`luminous visible location indicator 1104 to be activated independently of
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`activating or operating the load 105. Ex. 2006 at ¶17.
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`Petitioner has not explained how the display element 516 of Jahagirdar
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`indicates a location when the housing portion or flap (114 of FIG. 1) of mobile
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`station 102 is manually operated to move from an open position to a closed
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`position to activate the external display element 516. In other words, for the
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`display element 516 (luminous visible location indicator) to activate to be visible
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`and illuminated, the location of the mobile station 102 of Jahagirdar is
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`necessarily known by the user physically touching and closing the flip phone. Ex.
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`2006 at ¶68. As such, the location of the mobile station is not indicated by the
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`display element 516. Id. Specifically, if a user is touching the mobile station, the
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`user necessarily knows the location of the mobile station such that there is no
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`unknown location to be indicated. Id.
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`In each mention of “location” in the Petition, Petitioners merely conclude or
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`assume that a light that illuminates indicates a location without consideration for
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`the actual operation of the alleged luminous visible location indicator of
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`Jahagirdar. The Petition states “By displaying information on display element 516,
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`display element 516 would illuminate to provide the location of display element
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`516, thus providing the luminous visible location indicator.” Pet. at 29. Similarly,
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`Dr. Horenstein’s Declaration states “By displaying information on display element
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`516, display element 516 would illuminate to provide the location of display
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`element 516, thus providing the luminous visible location indicator.” Horenstein at
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`¶35. Such conclusory statements are insufficient to demonstrate the Jahagirdar and
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`Schultz disclose or suggest the claimed location indication functions of the
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`luminous visible location indicator.
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`Petitioner’s citation to the illumination of the display element 516 as
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`indicating the location of the display element 516 is incorrect and also fails to
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`demonstrate that Jahagirdar discloses the luminous visible location indicator as
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`recited in claim 1 because Jahagirdar specifically separates the illumination of the
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`display element 516 (the backlight 522) from the display of information on the
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`display element 516. Ex. 2006 at ¶70. And, each of the illumination of the
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`backlight, and the activation of the display element, and the cited display of
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`information on the display element requires a touching of the mobile station 102.
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`Ex. 1004, FIG. 8A, operations 802, 808, and 814; Ex. 2006 at ¶70.
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`For example, operation 804 sends information to be displayed on display
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`element 516 while operation 810 toggles the on/off state of the backlight 522 in
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`response to actuation of key 146 in operation 808. Ex. 1004 at 5:32-35 and 5:46-
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`53. In response to the actuation of key 146, “controller 504 turns on backlight 522
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`if backlight 522 is off, and turns off backlight 522 if backlight 522 is on” separate
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`from the display of information on the display element 516. Ex. 1004 at 5:48-40.
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`Further, if the “backlight 522 is turned on from step 810, controller 504 sets a timer
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`(step 812) to turn off backlight 522 after an expiration of a predetermined time
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`period (see steps 822 and 824)” which, again, is separate from the display of
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`information on the display element 516. Ex. 1004 at 5:50-53; Ex. 2006 at ¶71.
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`Moreover, because the backlight 522 is turned off after an expiration of the
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`first timer in operation 822 and 824, the display element 516 could not indicate a
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`location of the display element 516 or the mobile station 102. Ex. 2006 at ¶72.
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`When the backlight 522 is toggled on, the location of the display element 516 and
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`the mobile station 102 is necessarily known because the toggling operation 810
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`requires a user to touch the mobile station 102 to actuate the backlight key 146 in
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`operation 808. Ex 1004 at 5:45-53; Ex. 2006 at ¶¶68 and 71. The user, therefore,
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`necessarily knows the location of the mobile station 102 for at least a period of
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`time. In view of Jahagirdar’s stated desire to conserve power of the mobile station
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`102, the expiration of the predetermined time period of the first timer in operation
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`822 would be relatively short such that, by the time the user forgets the location of
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`the mobile station 102, the predetermined time period would likely have expired
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`resulting in the backlight 522 being no longer lit, and the luminous visible location
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`indicator being no longer luminous or able to communicate the location of the
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`display element 516 or the mobile station 102 to the unfortunate user. Ex. 2006 at
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`¶72.
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`The Petition notes that Jahagirdar discloses that the display element 516
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`“may comprise any suitable display or displays such as a light emitting diode
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`(LED) display or a liquid crystal display (LCD). In addition to having illuminating
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`segments or pixels, such displays may include illuminating icons.” Pet. at 29
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`(quoting Ex. 1004 at 5:43-46); Ex. 1012 at ¶60.
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`If display element 516 is a self-emissive LED display device that illuminates
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`without the backlight 522 upon display of information, then the application of
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`FIGS. 8A and 8B of Jahagirdar as Petitioner asserts does not make sense because
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`FIGS. 8A and 8B specifically disclose illumination of a backlight 522 in operations
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`808, 810, and 812, separate from the display of information on the display element
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`516. Ex. 1004 at 5:46-53.
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`However, in an alternative embodiment, Jahagirdar discloses a mobile
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`station 902 having a display area 914 including a single line LED display. Ex.
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`1004 at 7:61-67. And, Jahagirdar discloses that the “[m]obile station 902 operates
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`similarly or in the same way as mobile station 102 as described in relation to the
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`flowchart of FIGS. 8A and 8B.” Ex. 1004 at 8:1-4. One having ordinary skill in the
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`art would not have merely substituted the self-emissive LED display for the
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`display element 516 without more because the mere substitution would result in
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`the display always drawing power to emit light when the flip phone mobile station
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`102 is closed. Ex. 2006 at ¶76.
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`FIGS. 8A and 8B illustrate that the display element 516 (luminous visible
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`location indicator) is turned on in operation 802 after the phone is closed in
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`operation 800. Ex. 1004 at 5:26-30. The display element 516 remains on
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`throughout the operations of the flowchart until the display element 516 is turned
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`off in operation 838 after the flip phone mobile station 102 is opened in operation
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`832 to answer a received call. Ex. 1004 at FIGS. 8A and 8B. The display element
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`516 is turned on again in operation 842 after the flip phone mobile station 102 is
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`again closed. Ex. 1004 at 6:49-59. Jahagirdar discloses no other turning on and off
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`of the display element 516.
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`When the display element 516 is the preferred single line LCD, the display
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`element 516 may remain on or activated while the flip phone mobile station 102 is
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`closed because the LCD will only draw power when the display is refreshed, i.e.,
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`when new data is displayed. Ex. 2006 at ¶76. And, to conserve power, the
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`backlight 522 is separately controlled by toggling the key 146. Ex. 2006 at ¶¶70
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`and 71. Further, the desire to conserve power explains why the backlight 522 is
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`turned off in operation 824 upon expiration of the first timer in operation 822 while
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`the display element 516 receives new information for display (is refreshed) in
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`operation 827 in response to the expiration of the second timer in operation 826
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`and is not turned off. Ex. 2006 at ¶76. One having ordinary skill in the art would
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`have implemented the self-emissive LED display device to turn off upon the
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`expiration of a timer to prevent the continuous draw of power for illumination –
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`similar to the turning off of the backlight 522 upon expiration of the first timer. Id.
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`Therefore, even if Jahagirdar is implemented using a self-emissive LED
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`display, one having ordinary skill in the art would have required that the constantly
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`power drawing LED display be turned off according to a timer so as to conserve
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`power consistent with the objectives of Jahagirdar. Id. And, because the LED
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`display is turned off after a touching to turn on the LED display, the location of the
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`display element or mobile station cannot be indicated by the LED display. Ex.
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`2006 at 77.
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`Moreover, the alleged motivation to combine Jahagirdar and Schultz relies
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`on an expected decrease of accidental actuations of the keys 144 of Jahagirdar.
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`Petition at p. 33-34. Such emphasized decreased accidental actuation supports the
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`expressed idea that the user necessarily knows the location of the mobile station
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`102 upon actuation of the keys. Instead of mere accidental actuation, Petitioner is
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`asserting that the combination of Jahagirdar and Schultz would require a more
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`intentional touching for operation of the mobile station 102. Intentional operation
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`of the mobile station 102 would necessarily require the user to know the location
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`of the mobile station 102 such that the location of the mobile station 102 is not
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`capable of being indicated.
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`Therefore, the alleged illumination of the display element according to the
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`display of information is faulty in that Jahagirdar specifically separates the
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`operation of the backlight 522 from the display of information on the display
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`elements by the toggling of the backlight in response to actuation of key 146 as
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`described above with respect to operations 808, 810, and 812 as illustrated in FIG.
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`8A. And, any LED display implemented in the mobile station 102 of Jahagirdar
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`would have been turned off upon the expiration of a timer so as to conserve power,
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`a stated objective of Jahagirdar. Ex. 2006 at ¶¶76 and 77.
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`Because the activation of the display element 516 and the backlight 522
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`requires touching of the device, and because the expiration of the timer would
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`result in the backlight 522 or self-emissive LED display turning off within a
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`predetermined time period, the display element 516 would not be capable of
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`indicating a location as required by claim 1.
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`IPR2015-01149
`Patent No. 7,329,970 B2
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`III. ONE OF ORDINARY SKILL IN THE ART WOULD NOT COMBINE
`JAHAGIRDAR AND SCHULTZ
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`Jahagirdar is directed to what is now referred to as a flip phone. In such a
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`phone, ordinarily, the keys of the keypad used to provide data (telephone number
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`to dial, input data, etc.) are accessed by “flipping” the covering phone of the flap
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`up. Ex. 2006 at ¶53. The specific feature identified as an improvement in
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`Jahagirdar is the provision of a secondary visible display at the “top” edge or ring
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`of the phone (where the top can be flipped) so that information can be read without
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`opening the phone. Id. Information like the number of a calling party is provided in
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`this display, when active. Id.
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`The reference specifically sets forth that the “keys” – the switches to input
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`data – are pushbutton keys. They are deliberately arranged to mimic a telephone
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`keypad of the time (1998) and provide functions in addition to the standard 1–9
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`indications. Ex. 2006 at ¶¶56 and 58. Thus, the selection of pushbutton keys for
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`the flip phone of Jahagirdar was not simply a random choice, or illustration by the
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`simplest route. It was a deliberate selection made to mimic existing technology
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`consumers would be comfortable and familiar with.
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`Jahagirdar does not suggest the subject matter of the challenged Claims in
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`part because those claims require a touch sensor. For such switches, Petitioners
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`rely on Schultz. Schultz nowhere refers to or discusses phone or cellular
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`communications of any type. Ex. 2006 at ¶59. Indeed, Schultz does not identify
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`any product of any type to benefit from the touch sensor described. The switch
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`itself is designed to be activated by many different kinds of animals, for instance, a
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`dog or a cat. 6:58–60. Accordingly, Schultz deliberately leaves the size and
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`configuration of the touch sensors undisclosed.(“[T]he exact configuration and
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`utilization of the present invention is left to the skill of those working in the art.”)
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`Ex. 1005 at 6:60–62.
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`Accordingly there is no information that would allow one of skill in the art
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`to determine what type of architecture the switch of Schultz would require, how
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`much space, what kind of arrangements would be required. The switch is,
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`however, designed to be activated by something as broad as an animal’s nose and
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`thus placement and arrangement cannot be too precise, and the presentation of
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`multiple switches in a compact area seems unlikely – it would be hard for an
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`animal to selectively activate only the specific touch sensor out of several adjacent
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`ones. Ex. 2006 at ¶¶ 60 and 61.
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`
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`Petitioner suggests, and the Decision of the Board agrees, that one of skill in
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`the art provided the flip phone of Jahagirdar would combine that disclosure with
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`the touch sensor switches of Schultz. Respectfully, this is hindsight reconstruction.
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`There are a variety of reasons NOT to combine the two references. As noted,
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`nothing in Schultz or Jahagirdar suggests this combination.
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`The Decision to Institute observes, at page 6, that Petitioners urge that one of
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`skill in the art would combine the disclosure of Jahagirdar and Schultz for the
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`following reasons:
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`1) Minimize accidental actuation;
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`2) eliminate problems of contamination and mechanical failure associated
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`with switches having moving parts; and
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`3) to enhance convenience and aesthetics.
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`The Board’s Decision does not comment on these rationales, but appears to adopt
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`them at pages 9 and 10. With respect, one of skill in the art would not draw these
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`conclusions.
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`The first basis for combination is that this would reduce accidental actuation.
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`In fact, the very opposite is the case – adopting the touch sensors of Schultz in
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`place of the keys of Jahagirdar, to the extent possible, would exacerbate the
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`problem of accidental actuation. Bear in mind that the phone of Jahagirdar has
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`keys 144 on its side. See FIG. 2 and 3:31-32. (“Mobile station 102 also includes a
`
`plurality of keys 144 disposed on surface 128. Here, the plurality of keys 144
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`include a key 146, a key 148 and a key 150.”) To operate the phone (mobile station
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`16
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`102) at all, the user must grasp the phone and change the position of the flap to
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`“open” the phone. Ex. 2006 at ¶78. While Schultz does identify certain accidental
`
`actuations reduced, they have no application to the phone of Jahagirdar. Schultz,
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`1:64 to 2:4, states:
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`
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`A more reliable touch sensing mechanism is provided than is available
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`by mere capacitive proximity type devices. The present arrangement has no
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`moving parts and is therefor not subject to contamination and spurious types
`
`of operation that might be present in systems that rely only on one electrical
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`condition being present before the system will operate. (emphasis added).
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`Schultz is distinguishing his touch sensor touch switch from prior art “proximity
`
`switches” which can be triggered by capacitance alone, rather than both
`
`capacitance and a change in resistance. 1:21-22. Since Jahagadir does not
`
`employ this type of switch, no improvement will be observed. There is simply
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`no motivation provided for adopting the touch sensor of Schultz for the
`
`pushbutton of Jahagirdar.
`
`
`
`Indeed, there is strong disincentive to make such a change. Inevitably,
`
`when grabbing the phone, since the touch of an animal is sufficient to trigger the
`
`touch sensor of Schultz, the operator will actuate keys 144 if they are converted to
`
`the Schultz touch sensors, since the touch of an animal, including a human,
`
`provides both resistance change and capacitance change. Ex. 2006 at ¶¶ 78-80. The
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`17
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`combination of art advanced by Petitioners would increase, not decrease,
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`accidental or inadvertent actuation. Ex. 2006 at ¶¶81-83. In contrast, the
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`pushbutton keys of Jahagirdar are not subject to inadvertent activation. For one, a
`
`key that requires both physical contact and physical manipulation (pushing) would
`
`undoubtedly be less prone to inadvertent actuation than a touch sensor that only
`
`requires physical contact without further physical manipulation. This is
`
`particularly relevant in the flip phone of Jahagirdar, illustrated in FIGS. 1 and 2
`
`and reproduced below (with Petitioner's annotations):
`
`Paper 1 at p. 34.
`
`As can be seen above, the keys 144 (alleged to correspond to the claimed
`
`touch sensor) are located on a side edge of the device precisely where a user's hand
`
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`18
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`would contact the phone when carrying or talking on it. Ex. 2006 at ¶78. The
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`location of these keys is not arbitrary, but deliberately located on the side edge so
`
`as to be conveniently accessible to the user both when the phone is flipped open
`
`(FIG. 1) and flipped close (FIG. 2). To this day, phones are still developed with
`
`push-button switches similarly situated on the side edge because this is an edge
`
`that is easily and conveniently accessible by a user's hand when holding the phone.
`
`Ex. 2006 at ¶86. Unlike with a push-button switch that requires an additional step
`
`of physical manipulation, implementing a touch sensor here would result in
`
`frequent inadvertent actuation whenever the user is using, or even just holding, the
`
`phone. Ex. 2006 at ¶¶78-81. This is precisely why, to this day, one would be
`
`hard-pressed to find any phone (let alone a flip phone) with a touch sensor
`
`similarly situated on the side edge.
`
`
`
`The problem is further exacerbated by the recognition that substituting the
`
`switches of Schultz for the pushbutton keys of Jahagadir, because it requires the
`
`placement of 12 or more switches in close proximity, in order to mimic the
`
`arrangement of a (then) conventional phone, plus additional function keys. While,
`
`as noted, Schultz presents absolutely no information on the size or arrangement
`
`made possible by these switches, placing multiple switches side-by-side each of
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`which is activated by the touch of a finger or an animals nose guarantees multiple
`
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`19
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`inadvertent actuations. Ex. 2006 at ¶82. Further, some functionality would be lost –
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`including the ability to activate the keys with a stylus, thimble or similar substitute.
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`Ex. 2006 at ¶82.
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`
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`Petitioners also urge that adopting the sensor switches of Schultz would
`
`improve aesthetics and convenience. Neither Schultz, nor Jahagadir, nor any other
`
`authority offers support for this. Multiple inadvertent actuations is hardly
`
`“convenient.” Since no one actually knows what the switches of Schultz look like, it
`
`is not clear how such a personal and subjective quality is being measured. But as
`
`noted, Ex. 2006 at ¶¶56-58, the phone of Jahagirdar is deliberately styled to resemble
`
`a conventional non-mobile phone keypad. To the extent replacing the pushbutton
`
`switches of Jahagirdar with the sensor switches of Schultz move saway form that
`
`goal, the aesthetics are lost, not gained.
`
`
`
`The final basis for motivation offered is “eliminate the problems of
`
`contamination and mechanical failures associated with switches that have moving
`
`parts.” Decision, p. 9. It is not altogether clear how use of the Schultz switches,
`
`which contemplate actuation by non-human animals, reduces contamination and
`
`mechanical failure. Experience suggests that pushbutton switches of this type rarely
`
`fail in this mode. Ex. 2006 at ¶83. The ‘970 Patent reinforces that impression,
`
`observing that other known switch types exist. The ‘970 Patent observes at 8:4-10
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`20
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`membrane switches achieve the goals of avoiding contamination and mechanical
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`failure. Why would one of skill in the art turn to the more sensitive sensors of
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`Schultz, when the ‘‘970 Patent clearly suggests a superior answer – membrane
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`switches. Ex. 2006 at 83.
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`
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`Indeed, artisans were well aware of membrane switches at the time the
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`invention of the ‘970 Patent was made (1989). Both the advantages of these switches,
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`and cost effective methods of making and using them were well established. Ex.
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`2006 at ¶¶84-85, and Exhibits 2002, 2003 and 2004. Further, the fact is that
`
`notwithstanding the alleged advantages of the touch sensors of Schultz as recounted
`
`by Petitioners and their expert Horenstein, it is membrane switches, not touch
`
`sensitive switches as taught by Schultz, that have been adopted in the mobile phone
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`industry. Ex. 2006 at ¶86. Petitioners are in a better position to provide this tribunal
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`commentary on the mobile phone business than almost any other party in the world.
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`If in fact these touch sensitive switches had been adopted, it would have been
`
`reported. Instead, cell phones and the like employ membrane switches – Petitioners
`
`do not say otherwise.
`
`
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`The adoption of the touch sensors of Schultz for the phone of Jahagirdar
`
`provides a number of disadvantages, including exacerbating inadvertent actuation
`
`and loss of function. There is no apparent benefit in aesthetics, and providing closely
`
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`21
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`adjacent touch sensors in 1989 in the area of a flip phone surface without inducing
`
`more inadvertent actuation is challenge, particularly because the art relied upon
`
`provides neither size nor appearance information. As the ‘970 Patent makes clear, if
`
`one of skill in the art really wanted to address the problems of contamination and
`
`mechanical failure presented by pushbutton keys, that artisan would have adopted the
`
`solution of membrane switches, not the touch sensors of Schultz. This is in fact what
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`happened. Ex. 2006 at ¶86.
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`
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`The combination of Jahagadir with Schultz is not only not suggested by the
`
`art, it is taught away from. Such a combination of art is one made in hindsight, and
`
`not in accordance with our law. Clearly, the problems attendant adoption of the
`
`sensors of Schultz in place of the pushbutton keys of Jahagirdar suggests that
`
`adoption would be unlikely to be productive of the asserted goals (limiting accidental
`
`actuation, aesthetics, and reducing contamination and mechanical failure). In the face
`
`of a much more attractive alternative which the art did in fact adopt – membrane
`
`switches – one of skill in the art would have concluded that the Schultz touch sensors
`
`would be unlikely to provide the solution needed. Such a rejection is contrary to our
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`law. In re Gurley, 7 F.3d 551, 553 (Fed. Cir. 1993).
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`The teaching away need not prohibit the use, in this case, of the touch sensors
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`of Schultz – simply indi
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