`
`IPR2015 – 01149
`Exhibit 1012 (Horenstein Declaration)
`U.S. Patent No. 7,329,970
`
`
`
`
`Filed on behalf of:
`
`Microsoft Corporation and Nokia Inc.
`
`By: Daniel J. Goettle
`
`John F. Murphy
`
`Sarah C. Dukmen
`
`Baker & Hostetler LLP
`
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`Microsoft Corporation and Nokia Inc.,
`Petitioner
`v.
`Global Touch Solutions, LLC,
`Patent Owner
`______________
`IPR2015 – 01149
`Patent 7,329,970
`
`EXHIBIT 1012
`
`
`DECLARATION OF MARK N. HORENSTEIN, PH.D., P.E.
`
`
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`1
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`MICROSOFT EXHIBIT 1012
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`IPR2015 – 01149
`Exhibit 1012 (Horenstein Declaration)
`U.S. Patent No. 7,329,970
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`TABLE OF CONTENTS
`
`I.
`
`Introduction & Qualifications .......................................................................... 6
`
`II. Materials Reviewed ......................................................................................... 9
`
`III. The Law ......................................................................................................... 10
`
` A. Obviousness Analysis ............................................................................... 10
`
` B. Level of Ordinary Skill in the Art ............................................................. 11
`
`
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`
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` C. Objective Considerations .......................................................................... 12
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`IV. Level of Ordinary Skill in the Art ................................................................. 12
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`V.
`
`Claim Construction ........................................................................................ 14
`
`
`
` A. “does not form a serial link” (claim 1 from which claims 3-5, 10-14, 19,
`48, 49, and 51 ultimately depend) and “is not a serial link” (claim 52). ....... 14
`
` B. “not connected to a mains supply” (claim 1 from which claims 3-5, 10-
`14, 19, 48, 49, and 51 ultimately depend) ..................................................... 15
`
`VI. Obviousness – Overview ............................................................................... 16
`
`VII. Obviousness - Description of Prior-Art Jahagirdar Patent ............................ 17
`
`VIII. Obviousness – Description of Prior-Art Touch Sensor References .............. 23
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`
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` A. Schultz .................................................................................................... 23
`
` B. Touch Sensors in the Prior Art Generally .............................................. 25
`
`IX. Summary of Obviousness Opinions .............................................................. 27
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`X.
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`IPR2015 – 01149
`Exhibit 1012 (Horenstein Declaration)
`U.S. Patent No. 7,329,970
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`Independent Claim 1 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 28
`
` A. Jahagirdar taught the limitations of claim 1’s preamble, “An electronic
`module for use with a product comprising an energy consuming load and a
`power source or a connection to a power source, said module comprising a
`microchip, and a switch;” .............................................................................. 28
`
` B. Recitation [a] of claim 1: Jahagirdar described “said switch being a user
`interface and does not form a serial link in a circuit that transfers power from
`the power source to power the load” ............................................................. 30
`
` C. Recitation [b] of claim 1: Jahagirdar taught “and said microchip
`controlling a luminous visible location indicator that is not the load” .......... 31
`
` D. Recitation [c] of claim 1: Jahagirdar taught “a) wherein the visible
`indicator at least indicates a condition of the product upon receiving a signal
`from the user interface switch, and wherein the switch is a touch sensor type
`switch;” .......................................................................................................... 33
`
` E. Recitation [d] of claim 1: Jahagirdar taught “b) wherein the visible
`indicator is activated at least to indicate an activation signal from the switch
`when the load is not activated;” ..................................................................... 42
`
` F. Recitation [e] of claim 1: Jahagirdar taught “and c) wherein the visible
`indicator is also used to indicate a power level of the power source when the
`load is switched off and the product is not connected to a mains supply.” ... 44
`
`XI. Dependent Claim 3 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 47
`
`XII. Dependent Claim 4 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 48
`
`XIII. Dependent Claim 5 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 49
`
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`3
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`IPR2015 – 01149
`Exhibit 1012 (Horenstein Declaration)
`U.S. Patent No. 7,329,970
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`XIV. Dependent Claim 10 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 52
`
`XV. Dependent Claim 11 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 53
`
`XVI. Dependent Claim 12 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 53
`
`XVII. Dependent Claim 13 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 54
`
`XVIII.Dependent Claim 14 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 55
`
`XIX. Dependent Claim 19 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 56
`
`XX. Dependent Claim 48 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 58
`
`XXI. Dependent Claim 49 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 59
`
`XXII. Dependent Claim 51 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 60
`
`XXIII.Independent Claim 52 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 61
`
` A. Jahagirdar taught the limitations of claim 52’s preamble, “A method of
`operating a product which includes a visible luminous indicator, an energy
`consuming load and a power source for powering the load, the method
`including the steps of” ................................................................................... 61
`
` B. Recitation [a] of claim 52: Jahagirdar described “operating a user
`interface switch, that is a touch sensor type switch which is not a serial link
`
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`IPR2015 – 01149
`Exhibit 1012 (Horenstein Declaration)
`U.S. Patent No. 7,329,970
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`in a circuit from the power source to the load to power the load, to control
`the operation of a microchip,” ....................................................................... 63
`
` C. Recitation [b] of claim 52: Jahagirdar described “using the microchip to
`control the connection of the power source to the load and the activation of
`the indicator,” ................................................................................................ 66
`
` D. Recitation [c] of claim 52: Jahagirdar described “activate the indicator to
`show at least one of the following when the load is not activated: a condition
`of the product, an activation of the switch, and a power level of the power
`source.” .......................................................................................................... 67
`
`XXIV. The Challenged Claims Would Have Been Obvious Under the Construction
`of “Energy Consuming Load” Advanced by Apple ...................................... 70
`
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`5
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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,
`
`3-5, 10-14, 19, 48, 49, 51, and 52 of U.S. Patent No. 7,329,970 (“’970 patent”). I
`
`have been retained by the Petitioners, Microsoft and Nokia, to offer technical
`
`opinions relating to the ’970 patent and certain prior-art references relating to its
`
`subject matter. I understand that an inter partes (“between the parties”) review
`
`begins with a petition for review made by third parties like Microsoft and Nokia
`
`and responded to by the owner of the patent.
`
`2.
`
`I am a Professor of Electrical Engineering in the Department of
`
`Electrical and Computer Engineering at Boston University, where I have been a
`
`faculty member since 1979. I also have held various other positions at Boston
`
`University, including the Associate Dean for Graduate Programs and Research for
`
`the College of Engineering (1999-2007), Associate Chair for Undergraduate
`
`Programs for the ECE Department (1990 – 1998 and 2012 – present), as well as
`
`appointments at the rank of Associate Professor (1985-2000) and Assistant
`
`Professor (1979-1985).
`
`3.
`
`I have a Ph.D. in Electrical Engineering from the Massachusetts
`
`Institute of Technology (MIT), which I earned in 1978 while working in the
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`Electric Power Systems Engineering Laboratory. I also hold an M.S. degree in
`
`Electrical Engineering from the University of California at Berkeley (1975), and
`
`an S.B. degree in Electrical Engineering from MIT (1973).
`
`4.
`
`I have a number of professional affiliations: I am a Senior Member of
`
`the Institute of Electrical and Electronic Engineers (IEEE), the Editor-in-Chief of
`
`the Journal of Electrostatics, an ESD Engineer certified by the National
`
`Association of Telecommunications and Radio Engineers, and a Registered
`
`Professional Engineer (Electrical) in the Commonwealth of Massachusetts. In
`
`2013, I was named an International Fellow by the Industrial Electrostatics Group
`
`of the European Federation of Chemical Engineering (EFCE).
`
`5. My primary areas of research are in applied electromagnetics,
`
`electronic circuits, electrostatics, and micro-electromechanical systems (MEMS).
`
`These disciplines include the topics of capacitive and photonic (e.g., infrared)
`
`sensors, micro-actuators and accelerometers, deformable MEMS mirrors for light-
`
`wave communication and image processing, and methods for making self-
`
`cleaning solar panels.
`
`6.
`
`I am the author of two textbooks, Microelectronic Circuits and
`
`Devices (Prentice-Hall, 2d. ed. 1996) and Design Concepts for Engineers (Pearson
`
`Education, 5th ed. 2015). I have authored book chapters in two reference books
`
`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
`
`conference papers. I have advised five Ph.D. students performing research in these
`
`fields; they have gone on to hold various positions in both industry and academia.
`
`I am a named inventor on five patents relating to the areas of my expertise.
`
`7.
`
`I have taught approximately ten different courses (numerous times) in
`
`the above subject areas over the past 34 years, to over 3,000 undergraduate and
`
`graduate students. The subject matter of these courses includes circuits and
`
`electronics, static and dynamic electromagnetics, antennas, waveguides, rf
`
`communications, robotics, and engineering design. I have been named “Teacher
`
`of the Year” in Engineering at Boston University three times.
`
`8.
`
`In the area of sensors and detectors, I have designed several capacitive
`
`sensors, MEMS sensors, and infrared detection systems as part of various research
`
`projects. I also developed the curriculum for a graduate course in power
`
`electronics in the Department of Electrical and Computer Engineering at Boston
`
`University, which includes detailed lectures and extensive laboratory experiments.
`
`9. My curriculum vitae, enclosed as Attachment B, contains a more
`
`detailed description of my background.
`
`10.
`
`I am being compensated at a consulting rate of $275 per hour for my
`
`technical analysis in this matter.
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`II. Materials Reviewed
`11.
`In forming my opinions, I have reviewed the following:
`
`a. U.S. Patent No. 7,329,970 (filed July 6, 2006) (“’970 patent”) (Ex.
`
`1001);
`
`b. Prosecution history for the ’970 patent (“’970 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.
`
`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
`
`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
`
`to be correct and applicable for purposes of my analysis. I set forth those
`
`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
`
`person having ordinary skill in the art.
`
`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
`
`ordinary skill will be able to fit the teachings of multiple patents together like
`
`pieces of a puzzle. I understand that the obviousness analysis is flexible, taking
`
`into account the interrelated teachings of several patents, the effects of demands
`
`known to the design community or present in the marketplace, and the background
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`knowledge of a person of ordinary skill in the art. I understand that the
`
`combination of familiar elements according to known methods is likely to be
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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
`
`analysis involving the so called Graham factors:
`
`(1) determining the scope and content of the prior art;
`
`(2) ascertaining the differences between the prior art and the claims at
`
`issue;
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`(3) resolving the level of ordinary skill in the pertinent art; and
`
`(4) evaluating objective considerations.
`
`16. Once these determinations have been made, I understand that one
`
`must decide, in view of the evidence regarding these four factors, whether or not
`
`the invention, considered as a whole, would have been obvious to one having
`
`ordinary skill in the relevant art at the time that the alleged invention was made.
`
`17.
`
`I am told that one must keep in mind that it is not permissible to use
`
`hindsight in assessing whether or not the claimed invention is actually invalid for
`
`obviousness. One cannot look at the invention knowing what persons of ordinary
`
`skill in the art know today. Rather, one must place oneself in the shoes of a person
`
`having ordinary skill in the field of technology of the patent at the time the
`
`invention was made.
`
`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
`
`level of ordinary skill in the field of art pertaining to the ’970 patent:
`
`(1) The educational level of the inventor;
`
`(2) Types of problems encountered in the art;
`
`(3) Prior art solutions to those problems;
`
`(4) Rapidity with which innovations are made;
`
`(5) Sophistication of the technology; and
`
`(6) Educational level of active workers in the field.
`
`C. Objective Considerations
`19. Regarding the fourth step in the four-step process for assessing
`
`obviousness, specifically the step involving “objective considerations,” I have been
`
`told that some of the factors that may be considered are those of copying, a long
`
`felt but unsolved need, failure of others, commercial success, unexpected results
`
`created by the claimed invention, unexpected properties of the claimed invention,
`
`licenses showing industry respect for the invention, and skepticism of skilled
`
`artisans before the invention was made. I have no reason to believe that any of
`
`these factors apply to the challenged claims of the ’970 patent.
`
`IV. Level of Ordinary Skill in the Art
`20.
`In reviewing and evaluating the ’970 patent to determine the level of
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`ordinary skill in the art, I have arrived at my opinion that the “art” found in the
`
`’970 patent pertains primarily to electronic circuitry. The art also includes some
`
`degree of what the patent calls an “MMI” (man-machine interface), although only
`
`at a rudimentary level necessary to appreciate the different types of inputs one
`
`might use for the type of devices discussed in the ’970 patent.
`
`21. The discussions in the ’970 patent about microchips and their role in
`
`controlling remote switches are topics that would have been well known to a
`
`student midway through a bachelor’s degree curriculum in electrical or computer
`
`engineering (EE or CE) in the 2006 time frame (the year of filing of the ’970
`
`patent) and also the 1998/1999 time frame (the earliest claimed priority dates for
`
`the ’970 patent). In either time frame, these topics would have been routine and
`
`well within the scope of a student at this level of education. Likewise, timers,
`
`control circuits, and solid-state switches (e.g., transistors), and especially
`
`flashlights-- all relevant to the ’970 patent-- were features of minimal electronic
`
`sophistication that would have been routine subject matter for an upper-class EE or
`
`CE student.
`
`22. A few of the concepts described in the ’970 specification, for example
`
`those of series-connected microchips and floating grounds, may have required the
`
`skilled person to have had some additional experience beyond an undergraduate
`
`EE or CE degree. Based on all these factors, it is thus my opinion that an artisan of
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`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
`23. As I state above, I understand that in IPR proceedings, the claim terms
`
`in the ’970 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.
`
`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 ’970 patent
`
`application was filed in 2006, but claims priority to applications filed as early as
`
`1998 and 1999. My views on the meaning of the terms of the Challenged Claims
`
`are the same regardless of the timeframe considered.
`
`A.
`
`24.
`
`“does not form a serial link” (claim 1 from which claims 3-5, 10-
`14, 19, 48, 49, and 51 ultimately depend) and “is not a serial link”
`(claim 52).
`In my opinion, the terms “does not form a serial link” and “is not a
`
`serial link” would be understood by a person of ordinary skill in the art at the time
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`of the invention to mean “is not in electrical series.”
`
`25. The ’970 patent provided an illustration of “not in electrical series” in
`
`Figure 3 below, with respect to switch 102 relative to power source 101 and load
`
`105 (circled in green below):
`
`
`
`
`
`26. Aside from claims 1 and 52, the specification uses the phrase “serial
`
`link” only once. Ex. 1001 (’970 patent) at [57], claims 1 & 52. The Abstract states
`
`that “[t]he input does not form a serial link between the power source and the
`
`load,” which is consistent with “is not in electrical series.” Id. at [57]. These
`
`statements are consistent with my opinion.
`
`B.
`
`27.
`
`“not connected to a mains supply” (claim 1 from which claims 3-5,
`10-14, 19, 48, 49, and 51 ultimately depend)
`In my opinion, the term “not connected to a mains supply” would be
`
`understood by a person of ordinary skill in the art at the time of the invention to
`
`mean “not connected to the AC utility wiring system of a building.”
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`28. The term “not connected to a mains supply” presents some ambiguity,
`
`because this term does not appear in the specification. However, in relation to
`
`electrical systems, the term “mains” refers to the 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 “not connected to a mains supply” makes sense.
`
`Read in the context of claim 1, a product that is “not connected to a mains supply”
`
`relates to one that is not connected to the AC utility wiring system of a building.
`
`For example, a battery is separate from the wiring system of a building.
`
`VI. Obviousness – Overview
`29.
`In my opinion, for the reasons set forth below, the Challenged Claims
`
`of the ’970 patent would have been obvious to one of ordinary skill in the art in
`
`1998, the earliest possible effective filing date of the ’970 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,
`
`including computer and telephone prior art, that I will also discuss. By way of
`
`summary, it is my opinion that the Challenged Claims are obvious in view of
`
`Jahagirdar and known proximity sensor technology, e.g., Schultz (Ex. 1005), as
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`discussed below.
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`30.
`
`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 ’970 patent. See supra
`
`Section IV.
`
`VII. Obviousness - Description of Prior-Art Jahagirdar Patent
`31.
`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 ’970 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.
`
`32.
`
`Jahagirdar disclosed an electronic module (electrical circuitry 500,
`
`shown below in Figure 5) used with a product: mobile station 102 (a portable
`
`communication device, shown in Figures 1 and 2, also below). Id. at col. 3 ll. 59-
`
`60, figs. 1-2. Mobile station 102 included an energy consuming load (display
`
`element 520, also shown below in Figure 5). Id. at col. 4 ll. 27-30. Display
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`components 506 such as the load (display element 520) and display element 516
`
`“provide visual information in display areas 130 and 132 [shown in Figures 1 and
`
`2 below], respectively.” Id. at col. 4 ll. 40-41.
`
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`33. Mobile station 102 had a power source (battery 128): “[m]obile
`
`station 102 also included a removable battery 128.” Id. at col. 3 l. 33. Jahagirdar’s
`
`electronic module (electrical circuitry 500) also included a microchip (controller
`
`504) and a switch (any of keys 144). Id. at col. 3 ll. 60-62, col. 4 ll. 19-20. In that
`
`regard, Jahagirdar explained that “controller 504 . . . is disposed in housing portion
`
`112 on a printed circuit board (PCB).” Ex. 1004 (Jahagirdar) at col. 3 ll. 64-67.
`
`Jahagirdar further explained that “[e]lectrical circuitry 500 includes . . . a key
`
`circuit 513.” Id. at col. 3 ll. 60-64.
`
`34.
`
`Jahagirdar’s plurality of keys 144 formed a user interface: “[K]ey
`
`circuit 513 provides signals to controller [504] in response to actuations of the
`
`plurality of keys 144.” Id. at col. 4 ll. 19-20. Additionally, as shown above in
`
`Figure 5, Jahagirdar’s keys 144 were not in electrical series in a circuit that
`
`transferred power from the power source (battery 128) to power the load (display
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`element 520). Id. at fig. 5. Instead, Figure 5 showed that keys 144 and key circuit
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`513 were separated from controller 504 and display element 520 such that
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`“controller 504 controls power to driver 518 and display element 520 through a
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`line 530.” Ex. 1004 (Jahagirdar) at col. 4 ll. 33-34.
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`35. Referring to Figure 5 above, Jahagirdar’s microchip (controller 504)
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`controlled a luminous visible location indicator (display element 516). Specifically,
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`Jahagirdar disclosed that its display element 516 (luminous visible location
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`indicator) “may comprise any suitable display or displays such as a light emitting
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`diode (LED) display or a liquid crystal display (LCD). In addition to having
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`illuminating segments or pixels, such displays may include illuminating icons.” Id.
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`at col. 4 ll. 43-46. By displaying information on display element 516, display
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`element 516 would illuminate to provide the location of display element 516, thus
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`providing the luminous visible location indicator.
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`36. Referring to Figure 8A below, Jahagirdar taught that its microchip
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`controlled its visible indicator, i.e., “[i]f controller 504 detects an actuation of key
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`150 (step 814), controller 504 sends display data to driver 514, which sends display
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`data to display element 516. For [sic] displaying new visual information in display
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`area 130.” Id. at col. 5 ll. 54-57. This new visual information indicated a
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`condition of the mobile station 102 (the product). Specifically, Jahagirdar
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`disclosed “[t]he new visual information includes information different from or in
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`addition to the status information, and may include date and time information,
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`battery status information such as a battery level indication and/or a low battery
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`warning indication, communication status information such as an ‘in use’
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`indication and/or a roam indication, or any combinations of the above.” Id. at col.
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`5 ll. 57-64. Thus, Jahagirdar also disclosed that its visible indicator (display
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`element 516) could be activated to at least indicate an activation signal received
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`from its switch (e.g., key 150 of keys 144 which were part of Jahagirdar’s user
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`interface).
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`37.
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`Jahagirdar also clarified that its luminous visible location indicator
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`(display element 516) was not the load (which is identified above as display
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`element 520). See id. at fig. 5 (labeling Display 1 as 516 and Display 2 as 520).
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`Jahagirdar also disclosed that display element 516 could be activated to indicate an
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`activation signal from its switch (keys 144) while operation of its load (display
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`element 520) was not activated. See Ex. 1004 (Jahagirdar) at col. 5 ll. 35-37.
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`Referring again to Figure 8A above, Jahagirdar disclosed that prior to the key
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`actuation detection (step 814) and the step of displaying a visible indicator (step
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`816), display element 520 was turned off at step 806. Id. Jahagirdar described that
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`“[i]f power was previously enabled for driver 518 and display element 520,
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`controller 504 disables power thereto (step 806).” Id. Because display element
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`520 (the load) was already off at step 806, activation of the visible indicator at step
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`816 did not activate the load. Indeed, Jahagirdar nowhere discussed activating or
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`affecting any other aspect of the product at the step 816 of activating the visible
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`indicator.
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`38.
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`Jahagirdar also disclosed displaying, e.g., the power level of the
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`power source, on the visible indicator (display element 516) when the load (display
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`element 520) was off. As indicated above, Jahagirdar’s “new visual information
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`includes . . . battery status information such as a battery level indication and/or a
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`low battery warning indication, communication status information such as an ‘in
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`use’ indication and/or a roam indication, or any combinations of the above.” Id. at
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`col. 5 ll. 57-64. And, prior to the key actuation detection (step 814) and the step of
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`displaying a visible indicator (step 816), display element 520 was turned off at step
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`806. Jahagirdar described that “[i]f power was previously enabled for driver 518
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`and display element 520, controller 504 disables power thereto (step 806).” Id. at
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`col. 5 ll. 35-37. Because display element 520 (the load) was already off at step
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`806, it remained off when the visible indicator at step 816 was activated.
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`39. Also, because Jahagirdar disclosed that its power source was a
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`removable battery 128, Jahagirdar’s visible indicator could indicate the power level
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`of battery 128 when mobile station 102 was not connected to a mains supply.
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`VIII. Obviousness – Description of Prior-Art Touch Sensor References
`A.
`Schultz
`40. 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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`’970 patent. As is the case with the ’970 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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`41. With reference to Figure 3 below from Schultz, Schultz disclosed an
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`improved touch sensor: touch responsive area 67. Id. at col. 4 ll. 47-48. When “an
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`element, such as the human finger, across the conductors 34 and 35 [corresponding
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`to touch responsive area 67] causes the voltage on conductor 36 to change state
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`and be inverted by the inverter 41[, t]his inversion by inverter 41 combined with
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`the pulse output 11 causes the flip-flop 43 to change state and activate the load
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`52.” Id. at col. 4 ll. 30-35.
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`42. 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