Paper 45
`Trials@uspto.gov
`571-272-7822 Entered: November 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01149
`Patent 7,329,970 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Microsoft Corporation and Microsoft Mobile, Inc. (collectively,
`
`“Petitioner”) challenge the patentability of claims 1, 3–5, 10–14, 19, 48, 49,
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01149
`Patent 7,329,970 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Microsoft Corporation and Microsoft Mobile, Inc. (collectively,
`
`“Petitioner”) challenge the patentability of claims 1, 3–5, 10–14, 19, 48, 49,
`
`
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`IPR2015-01149
`Patent 7,329,970 B2
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`51, and 52 (“the challenged claims”) of U.S. Patent No. 7,329,970 B2
`
`(Ex. 1001, “the ’970 patent”), owned by Global Touch Solutions, LLC
`
`(“Patent Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final
`
`Written Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73. For the reasons discussed below, Petitioner has shown by a
`
`preponderance of the evidence that claims 1, 3–5, 10–14, 19, 48, 49, 51,
`
`and 52 of the ’970 patent are unpatentable.
`
`A. Procedural History
`
`Petitioner filed a Petition for inter partes review of the challenged
`
`claims of the ’970 patent. Paper 1 (“Pet.”). Patent Owner did not file a
`
`Preliminary Response. On November 17, 2015, we instituted an inter partes
`
`review of the challenged claims of the ’970 patent on the sole ground of
`
`unpatentability asserted by Petitioner—obviousness over the combination of
`
`Jahagirdar1 and Schultz.2 Paper 12 (“Institution Decision” or “Dec.”). After
`
`institution, Patent Owner filed a Patent Owner Response, Paper 17 (“PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner Response, Paper 20
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`(“Pet. Reply”). A consolidated hearing for this case and several others was
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`held on August 4, 2016. A transcript of the hearing has been entered into the
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`record. Paper 42 (“Tr.”).
`
`B. Related Matters
`
`Petitioner identifies the following district court proceedings that may
`
`be affected by a decision in this proceeding: Global Touch Solutions, LLC v.
`
`Microsoft Corp., No. 3:15cv2750-JD (N.D. Cal.); Global Touch Solutions,
`
`
`
`1 U.S. Patent No. 6,125,286, issued Sept. 26, 2000 (Ex. 1004, “Jahagirdar”).
`2 U.S. Patent No. 4,053,789, issued Oct. 11, 1977 (Ex. 1005, “Schultz”).
`
`2
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`IPR2015-01149
`Patent 7,329,970 B2
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`LLC v. VIZIO, Inc., No. 3:15cv2747-JD (N.D. Cal.); Global Touch
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`Solutions, LLC v. Apple Inc., No. 3:15cv2748-JD (N.D. Cal.); Global Touch
`
`Solutions, LLC v. Motorola Mobility LLC, No. 3:15cv2749-JD (N.D. Cal.).
`
`Paper 7, 3. Petitioner also filed petitions for inter partes review of related
`
`U.S. Patent Nos. 7,994,726 B2 (IPR2015-01147), 7,498,749 B2 (IPR2015-
`
`01148), 7,781,980 B2 (IPR2015-01150), and 8,288,952 B2 (IPR2015-
`
`01151). See Pet. 4. Trials were instituted in those proceedings as well. The
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`parties also identify as a related matter IPR2015-01173, which is a petition
`
`for inter partes review of the ’970 patent filed by a different petitioner.
`
`Id. at 4–5; Paper 4, 2.
`
`C. The ’970 Patent
`
`The ’970 patent is directed to portable electronic devices that operate
`
`on exhaustible power sources such as batteries. Ex. 1001, Abstract. The
`
`’970 patent describes using a microchip-controlled switch that manages both
`
`current-conducting and user-interface functions in an electronic device such
`
`as a flashlight without the switch itself conducting current to the load.
`
`Id. at 3:41–46. A visible indicator such as a light emitting diode (LED) can
`
`be used to indicate the condition of the battery. Id. at 9:47–55, Fig. 11.
`
`D. Illustrative Claim
`
`Among the challenged claims, only claims 1 and 52 are independent.
`
`Claim 1 is illustrative and reads:
`
`1. 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;
`
`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, and said microchip controlling a
`
`3
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`
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`IPR2015-01149
`Patent 7,329,970 B2
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`luminous visible location indicator that is not the load
`according to at least one configuration selected from the
`following group:
`
`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;
`
`b) wherein the visible indicator is activated at least to
`indicate an activation signal from the switch when the load is
`not activated; 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.
`
`Id. at 13:60–14:13.
`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding
`
`that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the
`
`rulemaking authority that Congress delegated to the Patent Office”).
`
`Consistent with the broadest reasonable construction, claim terms are
`
`presumed to have their ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art in the context of the entire patent
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). An inventor may provide a meaning for a term that is different from
`
`its ordinary meaning by defining the term in the specification with
`
`4
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`IPR2015-01149
`Patent 7,329,970 B2
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`In the Institution Decision, we adopted Petitioner’s proposed
`
`construction of “not connected to a mains supply,” recited in claim 1, as “not
`
`connected to the AC utility wiring system of a building.” Dec. 5. Patent
`
`Owner does not challenge that construction. After considering the complete
`
`record, we maintain this construction of “not connected to a mains supply”
`
`for this Final Written Decision. To the extent it is necessary for us to
`
`construe any additional claim terms in this decision, we do so below in the
`
`context of analyzing whether the prior art renders the claims unpatentable.
`
`B. Obviousness over Jahagirdar and Schultz
`
`Petitioner contends that claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and
`
`Schultz. Pet. 25–59. Relying in part on the testimony of Dr. Mark N.
`
`Horenstein, Petitioner explains how the combination of Jahagirdar and
`
`Schultz allegedly teaches all of the claim limitations and contends a person
`
`having ordinary skill in the art would have been motivated to combine the
`
`teachings of the references. Id. (citing Ex. 1012).
`
`We have reviewed the Petition, Patent Owner Response, and
`
`Petitioner’s Reply, as well as the relevant evidence discussed therein. For
`
`the reasons that follow, we determine Petitioner has shown by a
`
`preponderance of the evidence that the challenged claims would have been
`
`obvious in view of the combination of Jahagirdar and Schultz.
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`5
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`IPR2015-01149
`Patent 7,329,970 B2
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`1. Jahagirdar
`
`Jahagirdar describes a mobile phone that has a microchip-controlled
`
`user interface and mechanical push-button switches. Ex. 1004, 3:59–67;
`
`Ex. 1012 ¶ 31. Figure 4 of Jahagirdar is reproduced below.
`
`
`
`
`
`Figure 4 is an illustration of a mobile station being worn in a holster by a
`
`user. Figures 1 and 2 of Jahagirdar (with Petitioner’s annotations) are
`
`reproduced below:
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`6
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`IPR2015-01149
`Patent 7,329,970 B2
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`Pet. 27. Figures 1 and 2 are illustrations of mobile station 102 having
`
`
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`removable battery 128, first display area 130, and second display area 132.
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`Ex. 1004, 1:38–40, 3:33, 4:28–29. Figure 5 of Jahagirdar (with Petitioner’s
`
`annotations) is reproduced below:
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`
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`7
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`IPR2015-01149
`Patent 7,329,970 B2
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`Pet. 26. Figure 5 is a schematic block diagram of electrical circuitry 500 of
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`mobile station 102. Ex. 1004, 1:46–47. Display elements 516 and 520
`
`provide visual information in display areas 130 and 132, respectively, shown
`
`in Figures 1 and 2. Id. at 4:40–42.
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`2. Schultz
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`Schultz describes “a reliable touch actuated system . . . responsive to
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`the touch of an animal . . . [such as] human beings, pets and domestic
`
`animals.” Ex. 1005, 1:27–31. Schultz discloses touch responsive area 67.
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`Id. at 4:47–48; Ex. 1012 ¶ 40.
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`3. Claim 1
`
`Petitioner asserts that the combination of Jahagirdar and Schultz
`
`teaches all of the limitations of independent claim 1. Pet. 25–40. Beginning
`
`with the preamble, Petitioner contends that Jahagirdar describes the recited
`
`“electronic module” (electrical circuitry 500 shown in Figure 5) “for use
`
`with a product” (mobile station 102 shown in Figures 1 and 2). Id. at 26
`
`(citing Ex. 1004, 3:59–60; Ex. 1012 ¶ 53). Petitioner also contends that
`
`Jahagirdar describes an “energy consuming load” (display element 520,
`
`which provides visual information for display area 132) and a “power
`
`source” (battery 128). Id. at 26–27 (citing Ex. 1004, 3:33, 4:40–41;
`
`Ex. 1012 ¶ 53). Further, Petitioner contends that Jahagirdar describes the
`
`recited “microchip” (controller 504 in Figure 5) and “switch” (any of keys
`
`144). Id. at 27 (citing Ex. 1004, 3:60–62, 4:19–20).
`
`Turning to the body of claim 1, Petitioner contends that Jahagirdar’s
`
`switch (i.e., any of keys 144) is a “user interface” because “key circuit 513
`
`provides signals to controller [504] in response to actuations of the plurality
`
`of keys 144.” Id. at 28 (quoting Ex. 1004, 4:19–20). Moreover, Petitioner
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`8
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`IPR2015-01149
`Patent 7,329,970 B2
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`points out that Jahagirdar’s switch (keys 144) “does not form a serial link in
`
`a circuit that transfers power from the power source to power the load”
`
`because “Figure 5 show[s] that keys 144 and key circuit 513 [are] separated
`
`from controller 504 and display element 520 such that ‘controller 504
`
`controls power to driver 518 and display element 520 through a line 530.’”
`
`Id. (quoting Ex. 1004, 4:33–34); see Ex. 1012 ¶ 57.
`
`We agree with and adopt Petitioner’s contentions regarding
`
`Jahagirdar’s disclosure of these limitations as set forth in the Petition. See
`
`id. at 25–28. The remaining limitation of claim 1 is “said microchip
`
`controlling a luminous visible location indicator that is not the load
`
`according to at least one configuration selected from” a group of three
`
`specific configurations, labeled (a)–(c). Ex. 1001, 13:66–14:13. Petitioner
`
`contends that Jahagirdar teaches most of the claimed features, relying on
`
`Jahagirdar in combination with Schultz for the “touch sensor” in
`
`configuration (b). Pet. 28–40. Patent Owner challenges certain of
`
`Petitioner’s contentions regarding this limitation. PO Resp. 4–26. Although
`
`configurations (a)–(c) are recited as alternatives, so that only one need be
`
`taught by the prior art to render the claim obvious, we address the parties’
`
`arguments with respect to all three because most of the challenged
`
`dependent claims specify that one of the configurations is selected or
`
`otherwise recite similar limitations.
`
`a. “luminous visible location indicator”
`
`Petitioner contends that Jahagirdar teaches “said microchip
`
`controlling a luminous visible location indicator that is not the load,” as
`
`recited in claim 1. Pet. 29–30. Specifically, Petitioner asserts that display
`
`element 516, which may be an LED display and also may include
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`IPR2015-01149
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`illuminating icons, illuminates when it displays information, and thus
`
`indicates the location of display element 516. Id. at 29 (citing Ex. 1004,
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`4:43–46; Ex. 1012 ¶ 60). Petitioner further argues that Jahagirdar’s
`
`microchip (controller 504) controls the luminous visible location indicator
`
`when, after detecting an actuation of key 150 (one of keys 144 in
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`Jahagirdar’s user interface), it sends display data to driver 514, which sends
`
`the data to display element 516 for display of new visual information in
`
`display area 130. Id. at 30 (citing Ex. 1004, 5:54–57, Fig. 8A; Ex. 1012
`
`¶ 61). Finally, Petitioner distinguishes Jahagirdar’s luminous visible
`
`indicator (display element 516) from the load (display element 520). Id.
`
`(citing Ex. 1004, Fig. 5; Ex. 1012 ¶ 62).
`
`Patent Owner contends that Jahagirdar’s display element 516 is not a
`
`“luminous visible location indicator.” PO Resp. 5–13. First, Patent Owner
`
`argues that for display element 516 to be visible and illuminated, the
`
`location of the mobile phone must be known by the user physically touching
`
`the phone. PO Resp. 2, 7. According to Patent Owner, a location can be
`
`indicated only if the location is at least partially unknown, and therefore
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`display element 516 cannot indicate location while the user is touching or
`
`holding the phone. Id. Patent Owner also argues that even if the LED
`
`display remains illuminated for a period of time after it has been activated, it
`
`is not a location indicator because, by the time the user has forgotten the
`
`location of the phone (so that the phone can be “located” again), the LED
`
`will have turned off due to expiration of a timer. Id. at 9, 12.
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`We agree with Petitioner that display element 516, configured as an
`
`LED display, is a “luminous visible location indicator” as recited in claim 1.
`
`See Pet. 29–30; Pet. Reply 1–3. First, as Petitioner points out, Patent
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`10
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`IPR2015-01149
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`Owner’s expert, Dr. Morley, admits that Jahagirdar discloses an embodiment
`
`in which LED display 516 “is on all the time,” and therefore would indicate
`
`the location of the phone “until the battery dies.” Ex. 1017, 198:15–21; see
`
`Pet. Reply 2 (citing Ex. 1004, 8:1–4). Moreover, even in the embodiment in
`
`which LED display element 516 turns off after the expiration of a timer,
`
`Dr. Morley admits that the LED display would be a location indicator during
`
`the time that it remains illuminated. Ex. 1017, 198:22–199:11; see Pet.
`
`Reply 2; see also Ex. 1004, 5:64–65, Fig. 8A (timer for display element 516
`
`set in step 818 and expired in step 826). Notably, the claim language does
`
`not place any limitation on how long the location indicator must function.
`
`Finally, to the extent Patent Owner argues that a visible indicator can
`
`indicate location only if the location is “unknown,” Patent Owner identifies
`
`no support in the ’970 patent for such an interpretation. See PO Resp. 7, 9;
`
`Pet. Reply 2–3. Thus, Jahagirdar’s display element 516 satisfies the recited
`
`“luminous visible location indicator.”
`
`b. Configuration (a)
`
`In configuration (a), “the visible indicator at least indicates a
`
`condition of the product upon receiving a signal from the user interface
`
`switch, and where the switch is a touch sensor type switch.” Ex. 1001,
`
`14:3–6. Petitioner asserts that Jahagirdar teaches a visible indicator that
`
`indicates a condition of the product upon receiving a signal from the user
`
`interface switch because, after detecting an actuation of key 150,
`
`controller 504 sends data to display element 516 (visible indicator) that
`
`results in the display of new visual information, which may include, for
`
`example, battery status information or communication status information.
`
`Pet. 30–31 (citing Ex. 1004, 5:54–64; Ex. 1012 ¶ 64). Although Jahagirdar
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`11
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`does not teach a switch that is “a touch sensor type switch,” as required in
`
`configuration (a), Petitioner submits that touch sensor switches were well
`
`known in the art at the time of the invention, as evidenced by Schultz’s
`
`disclosure of a touch sensor (touch responsive area 67). Id. at 31–32.
`
`Petitioner argues that a person having ordinary skill in the art would
`
`have incorporated touch sensors into keys 144 of Jahagirdar so that a touch
`
`sensor formed part of the user interface. Id. at 31. Petitioner asserts that the
`
`combination of Schultz’s touch sensor with Jahagirdar’s mobile phone is
`
`merely the combination of known elements performing known functions and
`
`yielding predictable results. Id. at 36 (citing KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 417 (2007); Ex. 1012 ¶ 76). Petitioner points to various
`
`references and Dr. Horenstein’s testimony regarding an ordinarily skilled
`
`artisan’s knowledge and understanding of the prior art and ability to
`
`combine the respective teachings from that prior art. Id. at 33–37.
`
`Specifically, Petitioner argues “[i]ncorporating a touch sensor into
`
`Jahagirdar would have asked little of a person of ordinary skill, because a
`
`touch sensor would have improved Jahagirdar in the same way a touch
`
`sensor would have improved any such electronic device.” Id. at 37 (citing
`
`Ex. 1012 ¶ 69). Petitioner further asserts claim 1 of the ’970 patent “does
`
`not specify the details of the claimed touch sensor” and “Schultz’s touch
`
`sensor could have been integrated into Jahagirdar’s keys 144 in multiple
`
`ways depending upon what might have been convenient or desirable.” Id.
`
`(citing Ex. 1012 ¶ 76). In particular, Petitioner contends Jahagirdar’s
`
`keys 144 could have been replaced by one or more touch sensors, such that
`
`the touch sensors would perform the functions that Jahagirdar’s keys 144
`
`perform. Id.; see Ex. 1012 ¶ 76 (Dr. Horenstein testifying that, if a person
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`having ordinary skill in the art were to integrate Schultz’s touch sensors into
`
`Jahagirdar’s keys 144, it would have been within that person’s technical
`
`grasp and knowledge of options to relocate keys 144 or program
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`Jahagirdar’s controller to recognize input to keys 144 when mobile station
`
`102 was in either an open or closed position). Accordingly, Petitioner
`
`argues combining Schultz’s touch sensor with Jahagirdar’s mobile phone
`
`would have been obvious because “Jahagirdar and Schultz demonstrate that
`
`the elements of claim 1 were well known, and the combinations of the
`
`techniques described therein would have yielded no more than one would
`
`expect from such an arrangement.” Pet. 36 (citing Ex. 1012 ¶ 76).
`
`Patent Owner’s expert, Dr. Morley, agrees with Petitioner’s
`
`underlying assertions as to why the challenged claims would have been
`
`obvious: the flip-phone of Jahagirdar and touch sensor of Schultz are prior
`
`art; there was no technical barrier to combining the prior art elements; and
`
`the result of combining the prior art elements was predictable. Ex. 1017,
`
`176:2–177:7; Ex. 2006 ¶ 41 (correctly stating that combining “prior art
`
`elements according to known methods to yield predictable results” is one
`
`exemplary rationale for obviousness). As Dr. Morley explains, the Schultz
`
`touch sensors were not limited by size or arrangement, and a person of
`
`ordinary skill could have taken the Schultz sensors and put them into touch
`
`sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2–
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`13. Additionally, as Dr. Morley acknowledges, the claims of the ’970 patent
`
`contain no limitations as to the physical form, internal architecture, or
`
`arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner
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`presents no argument that the proposed combination would have been
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`beyond the capabilities or knowledge of a person having ordinary skill in the
`
`art. See PO Resp. 14–23.
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`As the Supreme Court has stated, “when a patent simply arranges old
`
`elements with each performing the same function it had been known to
`
`perform and yields no more than one would expect from such an
`
`arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal
`
`quotation marks omitted). “If a person of ordinary skill can implement a
`
`predictable variation, § 103 likely bars its patentability.” Id. As illustrated
`
`by Schultz, the use of a touch sensor as an alternative to a mechanical push
`
`button was already well known in the prior art. See Ex. 1005; Ex. 1012
`
`¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches
`
`the limitations of claim 1 as arranged, and we are persuaded the proposed
`
`combination would have been obvious, because it merely involves
`
`substitution of familiar elements, the combination of which yields
`
`predictable results. See KSR, 550 U.S. at 417. In particular, we agree that
`
`the proposed combination is the simple substitution or modification of
`
`Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other
`
`words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream
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`Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of
`
`when the asserted claims involve a combination of familiar elements
`
`according to known methods that does no more than yield predictable
`
`results.”). Patent Owner does not point us to objective evidence of
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`nonobviousness to overcome the textbook case of obviousness here.
`
`Furthermore, Petitioner offers additional reasons an ordinarily skilled
`
`artisan would have modified or replaced Jahagirdar’s keys with Schultz’s
`
`touch sensor. In particular, Petitioner contends Schultz explicitly identified
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`certain advantages of its touch sensor, including minimizing accidental
`
`actuation and eliminating contamination and mechanical failures associated
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`with switches having moving parts. Pet. 33 (citing Ex. 1012 ¶ 68);
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`Ex. 1005, 1:9–24. Petitioner further contends an ordinarily skilled artisan
`
`would have incorporated Schultz’s touch sensor switches into Jahagirdar’s
`
`mobile phone “to enhance convenience and aesthetics for the user.” Pet. 33
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`(citing Ex. 1012 ¶ 68).
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`Patent Owner argues that the combination is based on hindsight and
`
`challenges Petitioner’s additional reasons for the combination. PO Resp.
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`15–21. Specifically, Patent Owner argues that replacing Jahagirdar’s keys
`
`144 with Schultz’s touch sensor would actually increase accidental
`
`actuations because a user would contact the touch sensors while carrying or
`
`using the phone due to the location of touch sensors on the side of the phone.
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`Id. at 16–20. Patent Owner also contends there is no evidence that
`
`Jahagirdar’s keys 144 are subject to contamination or mechanical failure
`
`and, to the extent they are, a person of ordinary skill in the art would have
`
`replaced keys 144 with switches other than touch sensors, such as membrane
`
`switches. Id. at 20–21 (citing Ex. 2006 ¶¶ 83–86; Ex. 1001, 8:4–10). Patent
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`Owner further argues that the record does not provide an evidentiary basis to
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`conclude that Jahagirdar’s mobile device would be improved aesthetically
`
`by incorporating Schultz’s touch sensor and that incorporating the touch
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`sensor would decrease convenience due to increased accidental actuation.
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`Id. at 20. Finally, Patent Owner argues the combination “is taught away
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`from” because the art adopted a different solution—membrane switches.
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`Id. at 22.
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`15
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`Notwithstanding Patent Owner’s position that Petitioner’s proposed
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`combination would increase accidental actuations when grabbing or holding
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`Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that
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`touch sensors would alleviate accidental actuation by inanimate objects
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`(e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 5
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`(citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 82). Accordingly, Petitioner
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`argues a person having ordinary skill in the art looking to reduce inadvertent
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`actuation by inanimate objects would be motivated to incorporate Schultz’s
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`touch sensor. Id. (citing Ex. 1020 ¶¶ 4–5 (Second Declaration of Dr.
`
`Horenstein)). Moreover, Petitioner’s unrebutted evidence in the record
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`demonstrates Schultz’s touch sensor could have been integrated into
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`Jahagirdar’s keys 144 in multiple ways, depending upon what might have
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`been convenient or desirable. See Pet. 37 (citing Ex. 1012 ¶ 76); Ex. 1020
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`¶ 5. For example, a person of ordinary skill readily would have been able to
`
`relocate those touch sensors to different locations, or “one of skill could
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`have easily programmed Jahagirdar’s controller such that touch sensor
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`inputs were only recognized at appropriate times . . . , depending on whether
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`the mobile station 102 was opened or closed.” Ex. 1012 ¶ 76. In such a
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`way, inadvertent actuation of the touch sensors would be minimized or
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`eliminated.
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`Even assuming that other switches, such as membrane switches,
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`would have been available or preferable for reducing contamination and
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`mechanical failures, Petitioner argues that would not render the proposed
`
`combination nonobvious. Pet. Reply at 8–10. Regarding the argument that
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`a person having ordinary skill would look to add Schultz’s touch sensor to
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`Jahagirdar’s keys 144 due to aesthetic concerns, Petitioner asserts Dr.
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`16
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`Morley admitted aesthetics might be a reason to design a product with touch
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`sensors and has offered no reasons why some phone designers or users
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`would ignore aesthetics. Id. at 6–7 (citing Ex. 1017, 171:24–172:3).
`
`Petitioner also points to examples of products that integrated touch sensors
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`into user interfaces. Pet. 35–36 (citing Exs. 1006, 1008, 1009); Pet. Reply 7.
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`We have reviewed the parties’ arguments and evidence and find that
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`the preponderance of the evidence in the record supports a conclusion that it
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`would have been obvious to combine Schultz’s touch sensor with the
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`teachings of Jahagirdar to teach configuration (a) of the visible indicator, as
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`recited in claim 1. Patent Owner’s primary argument against Petitioner’s
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`additional reasons for its proposed combination is that touch sensors on
`
`Jahagirdar’s mobile phone would increase inadvertent actuations when
`
`grabbing or holding the modified mobile phone. See, e.g., PO Resp. 3
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`(“inadvertent actuation . . . is in fact exacerbated by the proposed
`
`substitution”), 18 (“combination of art . . . would increase, not decrease,
`
`accidental or inadvertent actuation”). However, we find an ordinarily skilled
`
`artisan would have been capable of assessing any benefits and harms of
`
`integrating a touch sensor into Jahagirdar’s mobile phone and, using
`
`ordinary creativity, deciding whether to modify the arrangement of keys 144
`
`or program the phone to recognize touch sensor inputs only in certain
`
`circumstances in order to minimize or eliminate inadvertent actuation. See
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`KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a
`
`predictable variation, § 103 likely bars its patentability.”); id. at 421 (“A
`
`person of ordinary skill is also a person of ordinary creativity, not an
`
`automaton.”); Ex. 1012 ¶ 76. Moreover, we agree with Petitioner that one of
`
`ordinary skill in the art would have been motivated to pursue the desirable
`
`17
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`properties of touch sensors, as taught by Schultz, even at the potential
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`expense of forgoing a benefit of the push buttons taught by Jahagirdar. See
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`In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016).
`
`c. Configuration (b)
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`In configuration (b), “the visible indicator is activated at least to
`
`indicate an activation signal from the switch when the load is not activated.”
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`Ex. 1001, 14:7–9. Petitioner asserts that Jahagirdar discloses its visible
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`indicator (display element 516) “is activated at least to indicate an activation
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`signal from the switch” when display element 516 displays information after
`
`the controller receives an activation signal from key 150. Pet. 38 (citing
`
`Ex. 1004, 5:54–57, Fig. 8A; Ex. 1012 ¶ 78). Petitioner also argues
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`activation of Jahagirdar’s visible indicator (display element 516 providing
`
`visual information for display area 130) occurs “when the load is not
`
`activated” because Figure 8A, a flowchart showing operation of the mobile
`
`station, indicates that display element 520 (the claimed energy consuming
`
`load) is turned off (step 806) prior to key actuation (step 814) that sends data
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`to display element 516 (step 816). Id. at 38–39 (citing Ex. 1004, 5:35–37;
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`Ex. 1012 ¶ 79).
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`Patent Owner argues that Jahagirdar does not teach a visible indicator
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`that is activated in response to an activation signal from the user interface
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`switch because display element 516 is turned on when the phone is closed,
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`not in response to a key actuation. PO Resp. 24. Further, Patent Owner
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`argues that Jahagirdar does not teach a visible indicator that is activated
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`while the load is not activated because display element 516 is turned on
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`when the phone is closed in step 802 of Figure 8A, which occurs prior to the
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`time when display element 520 (the load) is turned off in step 806. Id.
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`18
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`In reply, Petitioner asserts that Patent Owner’s argument is based on
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`the incorrect premise that the only way to activate Jahagirdar’s visual
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`indicator is “‘when the phone is closed—not in response to a user interface
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`switch activation as called for by the [claims].’” Pet. Reply 12 (quoting PO
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`Resp. 24). According to Petitioner, Patent Owner ignores the configuration
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`described in Jahagirdar in which display element 516 is not activated prior to
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`actuation of key 150. Id. Specifically, Jahagirdar discloses that although
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`display area 130 may display status information from display element 516
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`when the phone is flipped closed, “[a]lternatively, the status information
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`may include little or no information, where display area 130 is cleared.”
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`Ex. 1004, 5:43–44; see Pet. Reply 12–13. When key 150 is pressed in this
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`alternative configuration, display area 130 changes from a blank screen to
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`displaying “new visual information” provided by display element 516.
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`Ex. 1004, 5:43–57; Ex. 1020 ¶ 6.
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`We agree with Petitioner that Jahagirdar teaches this limitation of
`
`claim 1. Figure 8A of Jahagirdar (with Petitioner’s annotations) is
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`reproduced below:
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`19
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`Pet. 19. Figure 8A of Jahagirdar is a flowchart illustrating operation of the
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`mobile phone. Ex. 1004, 1:53–54. In step 800, the phone is flipped closed,
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`and in step 802, controller 504 enables power to display element 516. Id. at
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`5:27–30. In step 804, data is sent to display element 516 for displaying
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`visual information, preferably status information, in display area 130. Id. at
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`5:32–35. In the alternative configuration cited by Petitioner, step 804 clears
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`display area 130. See id. at 5:43–44. Then, in step 806, controller 504
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`disables power to display element 520 (the claimed load). See id. at 5:35–
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`37. At this point, “the load is not activated,” as recited in claim 1.
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`20
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`When controller 504 later detects an actuation of key 150 in step 814,
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`controller 504 sends display data to driver 514, which sends data to display
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`element 516, which provides new visual information for display area 130 on
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`the phone. Id. at 5:54–57. We agree with Petitioner that in the embodiment
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`in which display area 130 is cleared in step 804, actuation of key 150 in
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`step 814 is an “activation signal from the switch” that activates the visible
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`indicator when display element 516 provides visual information to display
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`area 130. See Pet. Reply 14 (citing Ex. 1020 ¶ 6). As Petitioner asserts, a
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`screen changing from blank to displaying information meets any reasonable
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`understanding of “activation.” Id. (citing Ex. 1020 ¶ 6); see also Tr. 114:7–
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`8 (Patent Owner’s counsel responding that “activation would require both
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`power to the display and display of information”). Thus, we agree with
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`Petitioner that Jahagirdar teaches configuration (b) of claim 1, in which “the
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`visible indicator is activat
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