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 – 01150
`Patent 7,781,980
`
`EXHIBIT 1013
`
`
`DECLARATION OF MARK N. HORENSTEIN, PH.D., P.E.
`
`
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`-1-
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`MICROSOFT EXHIBIT 1013
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`

`
`
`
`
`
`
`
`IPR2015 – 01150
`Exhibit 1013 (Horenstein Declaration)
`U.S. Patent No. 7,781,980
`
`
`
`
`TABLE OF CONTENTS
`
`Introduction & Qualifications .......................................................................... 4 
`I. 
`II.  Materials Reviewed ......................................................................................... 6 
`III.  The Law ........................................................................................................... 8 
`A.  Obviousness Analysis ....................................................................................... 8 
`B. 
`Level of Ordinary Skill in the Art .................................................................. 9 
`C. 
`Objective Considerations ............................................................................... 10 
`D. 
`Claim Construction .......................................................................................... 10 
`IV.  Level of Ordinary Skill in the Art ................................................................. 11 
`V. 
`Claim Construction ........................................................................................ 12 
`“non-mains” (claim 3) ..................................................................................... 12 
`A. 
`VI.  Obviousness – Overview ............................................................................... 13 
`VII.  Obviousness - Description of Prior-Art Jahagirdar Patent ............................ 14 
`VIII.  Obviousness – Description of Prior-Art Touch Sensor References .............. 19 
`A. 
`Schultz ................................................................................................. 19 
`B. 
`Touch Sensors in the Prior Art Generally ........................................... 21 
`IX.  Summary of Obviousness Opinions .............................................................. 24 
`Independent Claim 1 would have been obvious over Jahagirdar in
`X. 
`combination with Schultz .............................................................................. 24 
`Jahagirdar taught the limitations of claim 1’s preamble, “An electronic
`A. 
`module for use with a product, said product comprising a power
`source or a connection for a power source, and an energy consuming
`load, said module also comprising” .................................................... 25 
`Recitation [a] of claim 1: Jahagirdar combined with Schultz renders
`obvious “a circuit comprising a microchip and a touch sensor forming
`part of a user interface” ....................................................................... 26 
`Recitation [b] of claim 1: Jahagirdar taught “wherein the microchip
`also controls a visible indicator that is activated in response to an
`activation signal received from the user interface when the load is not
`activated by the user.” ......................................................................... 36 
`
`B. 
`
`C. 
`
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`-2-
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`

`
`IPR2015 – 01150
`Exhibit 1013 (Horenstein Declaration)
`U.S. Patent No. 7,781,980
`
`
`
`
`
`
`
`
`XI.  Dependent Claim 3 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 39 
`XII.  Dependent Claim 4 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 40 
`XIII.  Dependent Claim 5 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 42 
`XIV.  Dependent Claim 32 would have been obvious over Jahagirdar in
`combination with Schultz .............................................................................. 42 
`XV.  The Challenged Claims Would Have Been Obvious Under the Construction
`of “Energy Consuming Load” Advanced by Apple ...................................... 43 
`
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`-3-
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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, 4, 5, and 32 of U.S. Patent No. 7,781,980 (“’980 patent”). I have been retained
`
`by the Petitioners, Microsoft and Nokia, to offer technical opinions relating to the
`
`’980 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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`
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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.
`
`II. Materials Reviewed
`
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`
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`11.
`
`In forming my opinions, I have reviewed the following:
`
`a. U.S. Patent No. 7,781,980 (filed Sept. 26, 2008) (“’980 patent”) (Ex.
`
`1001);
`
`b. Prosecution history for the ’980 patent (“’980 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
`
`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.
`
`1009).
`
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`
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`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
`
`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
`
`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;
`
`(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
`
`instructed that there are no exhaustive factors that may be considered, and I’ve
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`
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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 ’980 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 ’980 patent.
`
`D. Claim Construction
`20.
`I understand that in an inter partes review at the patent office, claims
`
`are to be given their broadest reasonable interpretation in light of the specification
`
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`
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`as would be read by a person of ordinary skill in the relevant art.
`
`IV. Level of Ordinary Skill in the Art
`21.
`In reviewing and evaluating the ’980 patent to determine the level of
`
`ordinary skill in the art, I have arrived at my opinion that the “art” found in the
`
`’980 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 ’980 patent.
`
`22. The discussions in the ’980 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 2008 time frame (the year of filing of the ’980
`
`patent) and also the 1998/1999 time frame (the earliest claimed priority dates for
`
`the ’980 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 ’980 patent-- were features of minimal electronic
`
`sophistication that would have been routine subject matter for an upper-class EE or
`
`CE student.
`
`23. A few of the concepts described in the ’980 specification, for example
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`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
`
`ordinary skill in this area at the time of the invention would have a B.S. in
`
`electrical engineering or commensurate degree such as computer engineering, or
`
`alternatively, some coursework comparable in the area of circuit design, in
`
`combination with a year or two of practical experience with products containing
`
`electronic circuitry.
`
`V. Claim Construction
`24. As I state above, I understand that in IPR proceedings, the claim terms
`
`in the ’980 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 ’980 patent
`
`application was filed in 2008, 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.
`
`“non-mains” (claim 3)
`
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`25.
`
`In my opinion, the term “non-mains” would be understood by a
`
`person of ordinary skill in the art at the time of the invention to mean “not from the
`
`AC utility wiring system of a building.”
`
`26. The term “non-mains” presents some ambiguity, because this term
`
`does not appear in the specification. However, in relation to electrical systems, the
`
`term “mains” refers to the AC utility wiring system of a building. This usage is
`
`prevalent in countries that are current or former members of the United Kingdom.
`
`Given that the inventor Bruwer resided in South Africa (ZA) at the time of patent
`
`issue, this meaning of “non-mains” makes sense. Read in the context of claim 3, a
`
`power source that is “non-mains” relates to a power source that is not from the AC
`
`utility wiring system of a building. For example, a battery is a type of power
`
`source that is separate from wiring system of a building.
`
`VI. Obviousness – Overview
`27.
`In my opinion, for the reasons set forth below, the Challenged Claims
`
`of the ’980 patent would have been obvious to one of ordinary skill in the art in
`
`1998, the earliest possible effective filing date of the ’980 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
`
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`- 13 -
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`
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`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
`
`discussed below.
`
`28.
`
`In following the analytical framework for obviousness that has been
`
`explained to me, I will first discuss the scope and content of the prior art, then
`
`analyze each claim to show where the limitations of the claim are present in the
`
`prior art. I will also discuss why one of skill would have been motivated to
`
`combine the prior art accordingly. I have already set forth above the level of skill
`
`for a person skilled in the art in the time frame of the ’980 patent. See supra
`
`Section IV.
`
`VII. Obviousness - Description of Prior-Art Jahagirdar Patent
`29.
`Jahagirdar is a U.S. Patent entitled “Communication Device Having
`
`Multiple Displays and Method of Operating the Same,” that was filed on June 5,
`
`1997. Ex. 1004 (Jahagirdar) at [22], [54]. I understand that Jahagirdar is prior art
`
`to the ’980 patent. Jahagirdar was directed generally to the field of electronic
`
`circuitry applied to MMIs, and in particular to a mobile phone that had a
`
`microchip-controlled user interface and mechanical push-button switches. See id.
`
`at col. 3 ll. 59-67.
`
`30.
`
`Jahagirdar disclosed an electronic module (electrical circuitry 500,
`
`shown in Figure 5 below) that was used with a product: mobile station 102 (a
`
`
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`- 14 -
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`

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`
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`portable communication device, shown in Figures 1 and 2, also below). Id. at col.
`
`3 ll. 59-60, figs. 1-2.
`
`
`
`31.
`
`Jahagirdar’s product (mobile station 102) had a power source (battery
`
`128): “[m]obile station 102 also includes a removable battery 128.” Id. at col. 3 l.
`
`33. Mobile station 102 also included at least one energy consuming load (display
`
`element 520, shown in Figure 5 below). Id. at col. 4 ll. 27-30. Referring to
`
`Figures 1 and 2 above, the energy consuming load (display element 520) provided
`
`visual information in display area 132: “[d]isplay elements 516 and 520 provide
`
`visual information in display areas 130 and 132, respectively.” Id. at col. 4 ll. 40-
`
`41.
`
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`- 15 -
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`

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`
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`32. Mobile station 102 had an electronic module: electrical circuitry 500.
`
`Id. at col. 3 ll. 59-60. Electrical circuitry 500 included display components 506
`
`such as the load (display element 520) and display element 516 which, as
`
`described above, “provide[d] visual information in display areas 130 and 132,
`
`respectively.” Id. at col. 4 ll. 40-41. Electrical circuitry 500 also included an
`
`electronic circuit (key circuit 513) that further included a microchip (controller
`
`504). Id. at col. 3 ll. 60-64. Specifically, Jahagirdar explained that “most of
`
`electrical circuitry 500, including . . . controller 504 . . . is disposed in housing
`
`portion 112 on a printed circuit board (PCB).” Id. at col. 3 ll. 64-67. The
`
`
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`- 16 -
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`

`
`
`
`controller 504 “generates display data to be displayed at display areas 130 and
`
`132” and “controls power to driver 514 and display element 516 through a line
`
`524.” Id. at col. 4 ll. 31-33.
`
`33.
`
`Jahagirdar further explained that “[e]lectrical circuitry 500
`
`includes . . . a key circuit 513.” Id. at col. 3 ll. 60-64. Jahagirdar’s “key circuit
`
`513 provides signals to controller [504] in response to actuations of the plurality of
`
`keys 144.” Id. at col. 4 ll. 19-20. Jahagirdar’s user interface included the plurality
`
`of keys 144. Id. at col. 3 ll. 30-31. Jahagirdar’s keys 144 were located on the outer
`
`housing of the mobile station 102 and could be used to control various functions of
`
`the mobile station 102 such as answering or terminating a call, forwarding a call to
`
`voicemail, or displaying information on one of the display areas. Id. at col. 6 ll.
`
`40-45, col. 7 ll. 5-11, col. 7 ll. 16-20.
`
`34.
`
`Jahagirdar disclosed that its controller 504 (microchip) controlled
`
`display element 516 (visible indicator) and activated it in response to an activation
`
`signal received from key 150 (of keys 144 which were part of Jahagirdar’s user
`
`interface). Id. at col. 5 ll. 54-65. Specifically, in relation to Figure 8A, inset
`
`below, Jahagirdar disclosed “[i]f controller 504 detects an actuation of key 150
`
`(step 814), controller 504 sends display data to driver 514, which sends display
`
`data to display element 516. For [sic] displaying new visual information in display
`
`area 130.” Id. at col. 5 ll. 54-57.
`
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`
`
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`5'
`
`D5
`
`
`
`THEN DH
`
`1ST DISPLAY
`
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`
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`
`43:1 41* (S3 . £5? 4&1
`
`
`
`DISPLAY STATUS
`IHFD IH
`IST DISPLAY
`
`_
`
`TUE
`FF
`EH9 gIs{F',m
`
`
`
`Step 806
`-
`(Turn off display
`element 520)
`
`
`
`312
`
`am
`
`aAT:L]HGLE1L;EI+1
`
`T
`
`SET IST
`
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`
`IF flH
`
`DISPLAY DTHER
`IHFU IN
`
`IST DISPLH
`
`(Detect actuation
`
`of key 150)
`
`Step 816
`
`
`
`
`
`
`
`(Activate display
`
`element 516)
`
`
`
`
`TURH UFF
`BAEELIGHT
`
`
`
`
`
`
`DISPLAY STHTUS
`IHFD IH
`IST UISPLAT
`
`
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`- 18 -
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`35.
`
`Jahagirdar further disclosed that display element 516 could be
`
`activated in response to an activation signal received from the user interface when
`
`the load (display element 520) was not activated by the user. Id. at col. 5 ll. 54-65.
`
`Specifically, in relation again to Figure 8A, above, Jahagirdar disclosed that prior
`
`to the key actuation detection (step 814) and the step of displaying a visible
`
`indicator (step 816), display element 520 was turned off at step 806. Id. at col. 5 ll.
`
`35-37. Jahagirdar described that “[i]f power was previously enabled for driver 518
`
`and display element 520, controller 504 disables power thereto (step 806).” Id.
`
`Because display element 520 (the load) was already off at step 806, activation of
`
`the visible indicator at step 816 would not affect the operation of the load. Indeed,
`
`Jahagirdar nowhere discussed activating or affecting any other aspect of the
`
`product at step 816 of activating the visible indicator.
`
`VIII. Obviousness – Description of Prior-Art Touch Sensor References
`A.
`Schultz
`36. Schultz is a U.S. patent entitled “Touch Actuated System Responsive
`
`to a Combination of Resistance and Capacitance.” Ex. 1005 (Schultz) at [54]. It
`
`issued on October 11, 1977. Id. at [45]. I understand that Schultz is prior art to the
`
`’980 patent. As is the case with the ’980 patent and Jahagirdar, Schultz was
`
`directed to the field of electronic circuitry applied to MMIs, and in particular,
`
`Schultz described “a reliable touch actuated system.” Id. at col. 1 ll. 27-31.
`
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`37. With reference to Figure 3 from Schultz, reprinted below with
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`annotations in red, Schultz described an improved touch sensor: touch responsive
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`area 67. Id. at col. 4 ll. 47-48. When “an element, such as the human finger, across
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`the conductors 34 and 35 [corresponding to touch responsive area 67] causes the
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`voltage on conductor 36 to change state and be inverted by the inverter 41[, t]his
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`inversion by inverter 41 combined with the pulse output 11 causes the flip-flop 43
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`to change state and activate the load 52.” Id. at col. 4 ll. 30-35.
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`38. Schultz further described that its design was an improvement over
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`prior-art switches because it minimized inadvertent actuation. Id. at col. 1 ll. 20-
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`21. “With the present system, a more reliable touch sensing mechanism is
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`provided than is available by mere capacitive proximity type touch devices or
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`purely resistive touch type devices.” Id. at col. 1 ll. 64-67. Specifically, “[t]he
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`mere application of a short circuit between the conductors 34 and 35 does not
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`provide the necessary charging delay of capacitor 60 and voltage which are
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`necessary to actuate the present system. The inherent body capacitance 60 of an
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`animal is required.” Id. at col. 4 ll. 35-40. I note that Schultz included humans
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`among the “animals” that could interact with the sensor: “[t]here are numerous
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`types of electrical control systems that are responsive to the touch of animals, such
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`as humans, pets or domestic animals.” Id. at col. 1 ll. 7-9.
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`39. Schultz described that its touch sensor had an advantage over
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`“[c]onventional electric switches which require movements [and] are susceptible to
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`contamination and mechanical failures.” Id. at col. 1 ll. 17-19. Schultz further
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`explained that its touch sensor “has no moving parts and is therefor [sic] not
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`subject to the contamination and spurious types of operation.” Id. at col. 1 l. 68-
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`col. 2 l. 1.
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`B.
`Touch Sensors in the Prior Art Generally
`40. By 1998, touch sensing was old technology with widely recognized
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`functionality. Touch sensors similar to those described in Schultz also had known
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`applications in telephones, such as Jahagirdar’s mobile phone.
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`41. For example, Norimatsu, a U.S. patent entitled “Telephone Having
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`Touch Sensor for Responding to a Call,” issued on July 12, 1994. Ex. 1006
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`(Norimatsu) at [45], [54]. Figure 4 of Norimatsu, shown below with annotations in
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`red, depicted a telephone handset 40 that included a touch sensor portion 191. Id.
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`at col. 4 l. 1.
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`42. Norimatsu described that “[t]he sensor portion, or mesh, 191 is
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`attached to part of the handset surface, which part is so selected that the user can
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`most conveniently touch thereon.” Id. at col. 4 ll. 9-12. Further, “when the user
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`touches the sensor portion 191, the amplifier 194 produces a high-level signal
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`which is sent to the controller 15 as a detection signal.” Id. at col. 3 ll. 61-63.
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`“[I]n response to the detection signal, the controller 15 determines that the user has
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`responded to a call and then stops the transmission of the signaling tone.” Id. at
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`col. 3 ll. 65-68.
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`43. Norimatsu described the convenience of such touch sensors for the
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`user: “[a]nother object of the present invention is to provide a telephone in which
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`the user can easily respond to a call by simply touching the telephone.” Id. at col.
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`1 ll. 34-36.
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`44. Other benefits of touch sensing had long been recognized in the field.
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`For example, in the 1985 publication of “Issues and Techniques in Touch-Sensitive
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`Tablet Input,” written by William Buxton et al., the authors highlighted that the
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`“simple construction, [of touch sensors], with no moving parts, leads to reliable
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`and long-lived operation.” Ex. 1007 (Buxton) at p. 216.
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`45. Further, references which were cited in the prosecution of the ’980
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`patent provide similar indications of the benefits of touch sensing. For example,
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`DePauli, which was entitled “Delayed Response Touch Switch Controller” and
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`issued on October 16, 1990, described that “[t]ouch control switching systems,
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`especially for controlling illumination devices, have proven appealing due to their
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`added convenience and aesthetics.” Ex. 1008 (DePauli) at [45], [54], col. 1 ll. 22-
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`24.
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`46. Further, Roudeski, which was entitled “Touch Control Lamp Socket
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`Interior” and issued on August 16, 1988, taught that “[t]ouch controls are quick
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`and convenient, and especially ideal for pre-schoolers and physically disabled
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`persons, such as arthritics, who find it difficult, in view of their limited dexterity,
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`to operate conventional light switches.” Ex. 1009 (Roudeski) at [45], [54], col. 1
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`ll. 16-20.
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`IX. Summary of Obviousness Opinions
`47. For the reasons expressed throughout this declaration, it is my opinion
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`that the limitations of the Challenged Claims can be found in Jahagirdar and in the
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`touch sensor prior art, for example in Schultz. And as I explain, it would have
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`been obvious to a person of ordinary skill in the art at the time of the invention to
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`combine Jahagirdar and Schultz to reach the combinations recited in the
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`Challenged Claims. Specifically, by 1998, a person of ordinary skill in the art
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`would have been familiar with the distinction between push buttons and physical-
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`touch sensors, and would have understood that a physical-touch sensor would be
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`useful in place of a push button type switch. Further, a person of ordinary skill
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`would have understood that touch sensor switches avoid problems of mechanical
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`switches such as wear, accumulation of dirt or grease, and the like, especially in
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`outdoor environments where exposure to dust and dirt is common. Additionally,
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`touch sensor switches had aesthetic advantages and also provided for a quick and
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`convenient user interface.
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`48. Attachment A includes a claim chart which provides a helpful
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`summary of my opinions explained in detail below.
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`X.
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`Independent Claim 1 would have been obvious over Jahagirdar in
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`combination with Schultz
`A.
`Jahagirdar taught the limitations of claim 1’s preamble, “An
`electronic module for use with a product, said product comprising
`a power source or a connection for a power source, and an energy
`consuming load, said module also comprising”
`49. Claim 1 begins as follows: “An electronic module for use with a
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`product, said product comprising a power source or a connection for a power
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`source, and an energy consuming load, said module also comprising.” Jahagirdar
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`described this limitation.
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`50.
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`Jahagirdar disclosed an electronic module (electrical circuitry 500,
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`shown in Figure 5 below) that was used with a product: mobile station 102 (a
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`portable communication device, shown in Figures 1 and 2, also below). Ex. 1004
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`(Jahagirdar) at col. 3 ll. 59-60, figs. 1-2.
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`51. Mobile station 102 had a power source (battery 128): “[m]obile
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`station 102 also includes a removable battery 128.” Id. at col. 3 ll. 33. Further,
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`mobile station 102 also included at least one energy consuming load (display
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`element 520, shown in Figure 5, above). Id. at col. 4 ll. 27-30. The energy
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`consuming load (display element 520) provided visual information in display area
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`132: “[d]isplay elements 516 and 520 provide visual information in display areas
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`130 and 132, respectively.” Id. at col. 4 ll. 40-41.
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`B. Recitation [a] of claim 1: Jahagirdar combined with Schultz
`renders obvious “a circuit comprising a microchip and a touch
`sensor forming part of a user interface”
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`52. The next part of claim 1 (recitation