Trials@uspto.gov Paper 12
`571-272-7822 Entered: November 17, 2015
`
`
`
`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.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Microsoft Corporation and Microsoft Mobile, Inc. (collectively,
`“Petitioner”) filed a Petition for inter partes review of claims 1, 3–5, 10–14,
`
`
`571-272-7822 Entered: November 17, 2015
`
`
`
`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.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Microsoft Corporation and Microsoft Mobile, Inc. (collectively,
`“Petitioner”) filed a Petition for inter partes review of claims 1, 3–5, 10–14,
`
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`IPR2015-01149
`Patent 7,329,970 B2
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`19, 48, 49, 51, and 52 (“the challenged claims”) of U.S. Patent No.
`7,329,970 B2 (Ex. 1001, “the ’970 patent”). Paper 1 (“Pet.”). Global Touch
`Solutions, LLC (“Patent Owner”) did not file a Preliminary Response.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition, we conclude the
`information presented shows there is a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of claims 1, 3–5, 10–14, 19,
`48, 49, 51, and 52 of the ’970 patent.
`
`A. 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., et al., No. 3:15cv2750-JD (N.D. Cal.); Global Touch
`Solutions, LLC v. Toshiba Corp., No. 3:15cv2746-JD (N.D. Cal.); Global
`Touch Solutions, LLC v. VIZIO, Inc., No. 3:15cv2747-JD (N.D. Cal.);
`Global Touch 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 has filed petitions for inter partes
`review of related U.S. Patent Nos. 8,035,623 (IPR2015-01023), 7,772,781
`(IPR2015-01024), 7,265,494 (IPR2015-01025), 7,994,726 (IPR2015-
`01147), 7,498,749 (IPR2015-01148), 7,781,980 (IPR2015-01150), and
`8,288,952 (IPR2015-01151). See Pet. 4. The 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. Pet. 4–5; Paper 4, 2.
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`IPR2015-01149
`Patent 7,329,970 B2
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`B. 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.
`
`C. 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
`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
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`IPR2015-01149
`Patent 7,329,970 B2
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`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.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52
`of the ’970 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Jahagirdar1 and Schultz.2 Pet. 25–59. In its analysis, Petitioner relies on the
`declaration testimony of Dr. Mark N. Horenstein. See Ex. 1012.
`
`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).
`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
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`
`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”).
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`Petitioner proposes constructions for “does not form a serial link” and
`“not connected to a mains supply.” Pet. 11–13. For purposes of this
`decision, we determine that only the second term requires express
`construction.
`Petitioner contends that the broadest reasonable construction of “not
`connected to a mains supply,” recited in claim 1, is “not connected to the AC
`utility wiring system of a building.” Id. at 12. As Petitioner points out, the
`written description of the ’970 patent does not use the term “not connected
`to a mains supply.” Id. Petitioner relies on Dr. Horenstein’s declaration
`testimony to support its proposed construction. Id. (citing Ex. 1012 ¶¶ 27–
`28). For purposes of this decision, we adopt Petitioner’s proposed
`construction as the broadest reasonable construction consistent with the
`Specification of the ’970 patent.
`
`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 on the testimony of Dr. 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).
`
`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. Figures 1 and 2 of Jahagirdar (with Petitioner’s annotations)
`are reproduced below:
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`Pet. 27. Figures 1 and 2 are illustrations of mobile station 102 having
`removable battery 128, first display area 130, and second display area 132.
`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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`Pet. 26. Figure 5 is a schematic block diagram of electrical circuitry 500 of
`mobile station 102. Ex. 1004, 1:46–47.
`
`2. Schultz
`Schultz describes “a reliable touch actuated system . . . responsive to
`the touch of an animal . . . [such as] human beings, pets and domestic
`animals.” Ex. 1005, 1:27–31. Schultz discloses touch responsive area 67.
`Id. at 4:47–48; Ex. 1012 ¶ 40.
`
`3. Analysis
`Petitioner asserts that the combination of Jahagirdar and Schultz
`teaches all of the limitations of independent claim 1. Pet. 25–40. For
`example, 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).
`According to Petitioner, 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 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
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`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.
`Petitioner further contends that Jahagirdar teaches “said microchip
`controlling a luminous visible location indicator that is not the load,” as
`recited in claim 1. Id. at 29–30. Specifically, Petitioner asserts that display
`element 516, which may be an LED display or a liquid crystal display
`(LCD) and also may include illuminating icons, would illuminate to provide
`the location of display element 516, thus providing a luminous visible
`location indicator. Id. at 29 (citing Ex. 1004, 4:43–46; Ex. 1012 ¶ 60).
`Petitioner also argues that Jahagirdar’s microchip (controller 504) controls
`the visible indicator (display element 516) when, after detecting an actuation
`of key 150, 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).
`Claim 1 further recites that the microchip controls the visible indicator
`according to at least one of three specific configurations; Petitioner contends
`that the combination of Jahagirdar and Schultz teaches all three. Id. at 30–
`40. First, 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
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`IPR2015-01149
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`results in the display of new visual information, which may include, for
`example, battery status information or communication status information.
`Id. at 30–31 (citing Ex. 1004, 5:54–64; Ex. 1012 ¶ 64). Although Jahagirdar
`does not teach a switch that is “a touch sensor type switch,” as recited in the
`claim, Petitioner submits that touch sensor switches were well known in the
`art by 1998, as evidenced by Schultz’s disclosure of a touch sensor (touch
`responsive area 67). Id. at 31–32. Petitioner argues that one of ordinary
`skill in the art would have been motivated to combine Schultz’s touch sensor
`with Jahagirdar’s system to arrive at claim 1 of the ’970 patent “(1) to
`minimize accidental actuation; (2) to eliminate the problems of
`contamination and mechanical failures associated with switches having
`moving parts; and (3) to enhance convenience and aesthetics for the user.”
`Id. at 33 (citing Ex. 1012 ¶ 68).
`Second, Petitioner asserts that Jahagirdar discloses its visible indicator
`(display element 516) “is activated at least to indicate an activation signal
`from the switch” when display element 516 displays information after the
`controller receives an activation signal from key 150. Id. at 38 (citing
`Ex. 1004, 5:54–57, Fig. 8A; Ex. 1012 ¶ 78). Petitioner also argues
`Jahagirdar discloses that its visible indicator (display element 516) can be
`activated “when the load is not activated” because Figure 8A, a flowchart
`showing operation of the mobile station, indicates that display element 520
`(load) is turned off prior to key actuation and activation of display element
`516. Id. at 38–39 (citing Ex. 1004, 5:35–37; Ex. 1012 ¶ 79).
`Finally, Petitioner contends that Jahagirdar’s visible indicator is “used
`to indicate a power level of the power source when the load is switched off”
`because display element 516 (visible indicator) may display battery status
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`information when display element 520 (load) is turned off. Id. at 39–40
`(citing Ex. 1004, 5:35–37, 5:57–64; Ex. 1012 ¶ 83). Petitioner also contends
`that Jahagirdar’s mobile station is “not connected to a mains supply”
`because its power source is a removable battery. Id. at 40 (citing Ex. 1004,
`3:33; Ex. 1012 ¶ 84).
`Independent claim 52 recites a method of operating a product with
`limitations similar to those recited in claim 1. For similar reasons argued
`with respect to claim 1, Petitioner argues the combination of Jahagirdar and
`Schultz teaches all of the limitations of claim 52. Id. at 52–59.
`Petitioner also contends the combination of Jahagirdar and Schultz
`teaches the limitations of the challenged dependent claims. Id. at 41–51.
`For example, Petitioner asserts that Jahagirdar teaches “the location
`indicator is activated only for a period of time,” as recited in claim 5,
`because controller 504 sets a timer related to the new display information to
`deactivate display element 516 automatically after a predetermined period of
`time. Id. at 42–43 (citing Ex. 1004, 5:55–65; Ex. 1012 ¶ 91). Claim 12
`recites “a f[u]nction, selected by a user interface activation signal is
`automatically shut off after a predetermined period of time,” and claim 19
`recites “the microchip also controls upon receiving a switch activation signal
`from a touch sensor, at least the activation of a function that automatically
`shuts off a period after such activation.” Ex. 1001, 14:22–23, 14:43–45,
`14:64–67. Petitioner contends that these limitations are taught by
`Jahagirdar’s disclosure of a timer set to turn off a backlight after a
`predetermined period of time. Pet. 46, 48 (citing Ex. 1004, 5:46–53;
`Ex. 1012 ¶¶ 101, 107).
`
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`IPR2015-01149
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`We have reviewed Petitioner’s arguments with respect to each of
`claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52, including those directed to the
`remaining dependent claims. On the present record, Petitioner has shown
`sufficiently that the combination of Jahagirdar and Schultz teaches all of the
`limitations of claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52, and Petitioner has
`articulated sufficient reasoning with rational underpinning for combining
`Jahagirdar and Schultz. Pet. 25–59. Accordingly, the information presented
`shows a reasonable likelihood that Petitioner would prevail in establishing
`that claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52 would have been obvious
`over Jahagirdar and Schultz.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52 of the ’970 patent
`are unpatentable. At this preliminary stage, the Board has not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual and legal issues.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52 of the
`’970 patent on the ground of obviousness over Jahagirdar and Schultz; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this decision.
`
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`IPR2015-01149
`Patent 7,329,970 B2
`
`FOR PETITIONER:
`Daniel J. Goettle
`John F. Murphy
`Sarah C. Dukmen
`BAKER & HOSTETLER LLP
`dgoettle@bakerlaw.com
`johnmurphy@bakerlaw.com
`MSFT-GT@bakerlaw.com
`
`
`
`FOR PATENT OWNER:
`Steven Kelber
`skelber@labgoldlaw.com
`
`Nathan Cristler
`ncristler@cristlerip.com
`
`William Mandir
`Peter Park
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`pspark@sughrue.com
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