UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.
`
`
`
`Petitioners
`
`
`
`v.
`
`
`
`GLOBAL TOUCH SOLUTIONS, LLC
`
`
`
`Patent Owner
`
`
`
`Patent No. 8,288,952
`
`Issued: Oct. 16, 2012
`
`Filed: Nov. 17, 2011
`
`
`
`Inventor: Frederick Johannes Bruwer
`
`Title: INTELLIGENT USER INTERFACE INCLUDING A TOUCH
`SENSOR DEVICE
`
`
`
`Inter Partes Review No.: IPR2015-01151
`
`
`
`DECLARATION OF ROBERT E. MORLEY, JR.
`
`GLOBAL EX. 2002
`Microsoft Corporation, et al. v. Global Touch Solutions, LLC
`IPR2015-01151
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.
`
`
`
`Petitioners
`
`
`
`v.
`
`
`
`GLOBAL TOUCH SOLUTIONS, LLC
`
`
`
`Patent Owner
`
`
`
`Patent No. 8,288,952
`
`Issued: Oct. 16, 2012
`
`Filed: Nov. 17, 2011
`
`
`
`Inventor: Frederick Johannes Bruwer
`
`Title: INTELLIGENT USER INTERFACE INCLUDING A TOUCH
`SENSOR DEVICE
`
`
`
`Inter Partes Review No.: IPR2015-01151
`
`
`
`DECLARATION OF ROBERT E. MORLEY, JR.
`
`GLOBAL EX. 2002
`Microsoft Corporation, et al. v. Global Touch Solutions, LLC
`IPR2015-01151
`
`
`
`I.
`
`I, Robert E. Morley, Jr. do hereby declare and state that:
`
`
`1. My name is Robert Morley. I am a Professor in the Electrical
`
`INTRODUCTION
`
`and Systems Engineering Department at Washington University in St. Louis,
`
`Missouri. I hold the degrees of BS, MS, and D.Sc. all conferred on me by
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`Washington University in St. Louis in 1973, 1975, and 1977, respectively.
`
`Prior to joining the faculty of Washington University in St. Louis, I worked
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`in the industry addressing electronics and micro-electronics. I have remained
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`active in industry during my appointment to the faculty of Washington
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`2.
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`University in St. Louis.
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`I have been retained as an expert witness by counsel on behalf
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`of Global Touch Solutions (“GTS”) in connection with a series of Inter
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`Partes Reviews (“IPR”) of a number of patents held by GTS. These patents
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`include, in no particular order, U.S. Patent Nos. 7,265,494; 7,994,726;
`
`7,772,781; 7,498,749; 7,329,970; 7,781,980; 8,035,623; and 8,288,952. I
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`understand that this proceeding involves U.S. Patent No. 8,288,952 (“the
`
`‘952 Patent”). It is my understanding that the other patents are the subject of
`
`related IPRs and that the subject matter specific to each is considered in each
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`separate Declaration.
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`- 2
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`
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`3. While I have prepared a separate and distinct Declaration for
`
`that proceeding and the other related proceedings as well, it is easy to see
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`that there is a substantial amount of technical overlap in the subject matter of
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`these proceedings, and consequently, I have considered this family of
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`patents together.
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`I have reviewed and am familiar with the ‘952 Patent as well as
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`4.
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`its prosecution history. I also have reviewed and am familiar with the
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`Petition filed in IPR2015-01151 (“Petition”) and the Jahagirdar and Schultz
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`patents. I also have reviewed and am familiar with the Declaration of Mark
`
`N. Horenstein, provided to me as Ex. 1014. I have also reviewed the
`
`decision of the Patent Trial and Appeal Board identified as Paper 8, dated
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`November 17, 2015. While it is the opinion expressed in Paper 8 that the
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`combination of Jahagirdar and Schultz, as would have been made by one of
`
`skill in the art, renders the challenged claims obvious, in this Declaration I
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`express the opinion that one of skill in the art would not have combined
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`those references in the fashion relied upon, and that the challenged claims
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`are not obvious over that combination of art as considered by a person of
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`skill in the art around 1998.
`
`As noted above, I am familiar with the type of technology
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`addressed in the ‘952 Patent as of 1998, which I understand to be the year in
`
`- 3
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`5.
`
`
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`which the patent application from which priority is claimed in the ‘952
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`Patent was originally filed. I have been asked to provide my technical
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`review, analysis, insights, and opinions regarding the assertions in the
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`Petition concerning the alleged obviousness of the challenged claims of the
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`‘952 Patent by the Jahagirdar and Schultz Patents. I am being compensated
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`for my work in connection with the GTS Patents and the several IPRs at my
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`established rate of $500 per hour. My compensation does not depend on the
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`outcome of this proceeding.
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`6.
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`In forming the opinions and beliefs expressed herein, I have
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`relied on my own experience and knowledge, my review of the ‘952 Patent
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`and its file history, and my review of the materials cited in the Petition filed
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`against the ‘952 Patent, including the Jahagirdar and Schultz patents.
`
`Although the other IPRs directed at the GTS patents and the art cited therein
`
`form a backdrop for my opinions, if I have relied on art other than that cited
`
`in this proceeding for my opinions in a specific or selective way, it is
`
`7. My experience relied on in arriving at the opinions expressed in
`
`specifically mentioned in my Declaration.
`
`this Declaration includes my work as a Professor of Electrical Engineering,
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`my work in industry including the development of various microprocessor-
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`based technologies, and my research in the area of computer architecture and
`
`- 4
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`
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`magnetic media. My experience and education is spelled out more fully in
`
`my curriculum vitae, submitted herewith as Exhibit 2003. My own personal
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`experience in assisting other lawyers in the prosecution of patent
`
`applications and the enforcement of U.S. Patents naming me as the inventor
`
`or one of the inventors over the years, has allowed me to develop a
`
`fundamental understanding of the concepts underlying obviousness.
`
`i.
`
`Other Relevant Qualifications
`
`As noted above, I have had significant involvement in the
`
`8.
`
`9.
`
`preparation and prosecution of United States Patents and patent applications
`
`as well as the enforcement of United States Patents, including 17 naming me
`
`as inventor. Obviousness of claims over the prior art is a question I have
`
`addressed in fields and technologies both related to and distinct from those
`
`presented in the above-captioned IPR.
`
`I have previously served as an expert witness in litigation
`
`matters and as a consultant to companies involved in research and
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`development of electrical devices, particularly in conjunction with the
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`development of microprocessor-based systems. As noted above, my
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`curriculum vitae includes a compilation of my publications and patents and
`
`relevant experience.
`
`- 5
`
`
`
`II. THE '952 PATENT
`10. The referenced Petition seeks invalidation of certain claims of
`
`the ‘952 Patent. The subject matter of this patent is generally directed to
`
`devices powered by exhaustible power source such as a battery, and
`
`specifically including a microprocessor or microchip to control electrical
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`switching of power to a load. By reliance on a microchip or integrated
`
`circuit based switching system for a load, multiple functions can be
`
`features may be realized.
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`combined into one device, and power savings and other advantageous
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`11. The innovation specifically addressed in the ‘952 Patent is
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`putting microchip control between the exhaustible power supply and the
`
`load that consumes that power supply. As indicated in the Abstract of the
`
`‘952 Patent, “the microchip is in communication with the exhaustible power
`
`source of the electronic device and controls (i) the power on/off function of
`
`the device, (ii) at least one other function of the device in response to
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`activation and deactivation signals from the switch, and (iii) an automatic
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`shut off function in response to the receipt of an activation signal from the
`
`switch.” The microchip controls the activation and deactivation of the
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`energy consuming function of the device, referred to throughout the ‘952
`
`Patent as the “energy consuming load.”
`
`- 6
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`
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`12. The invention of the ‘952 Patent is most often illustrated as a
`
`flashlight with the consumption of the exhaustible power supply (battery) by
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`the “power consuming load” (bulb) under the control of the microchip, as
`
`well as other functions associated with the flashlight. While the terms of the
`
`patent are applied directly to a flashlight, such that the bulb of the flashlight
`
`constitutes the electrical “load” of the device, in fact the patent makes it
`
`clear that this is for purposes of illustration only and in no way limiting of its
`
`application. For example, at Col. 6, ll. 56–61, the ‘952 Patent makes it clear
`
`that the application of the invention to a flashlight is for purposes of
`
`illustration, and the invention is applicable to many other devices by using
`
`the ‘952 Patent’s electrical switching design.
`
`13. Many other devices may be envisioned. Many devices have
`
`multiple modules that require energy. Those in the ‘952 Patent referred to as
`
`“energy consuming load” are the modules that are under the on/off control
`
`of the microchip. A load placed under the control of the microchip to limit
`
`diminishing the power supply is referred to throughout the specification and
`
`claims of the ‘952 patent as an “energy consuming load.”
`
`14. This emphasis on the advancement reflected in the invention,
`
`putting draw on the exhaustible power supply by the “energy consuming
`
`load” under the control of the microchip is reflected throughout the
`
`- 7
`
`
`
`specification. See for example Col. 1, lines 44 – 46 and the reference to
`
`“microchip controlled electrical current switching devices” as well as Col. 4,
`
`lines 30 – 46, which refers to the invention as featuring “a microchip for
`
`flashlight.”
`
`controlling the on/off function and at least one other function of the
`
`15. The nature of the invention can be further confirmed by
`
`reference to the Figures. Although many of the Figures illustrate related
`
`aspects of the same invention, the invention may be clearly viewed by
`
`reference to Figure 5. As can be clearly seen the load (indicated at 105) that
`
`draws on the battery is able to do so only through the control circuit
`
`provided by the microchip. This is most clearly set forth in text at Col. 7,
`
`lines 23 – 29 which provides: “It is important to recognize, however, that it
`
`is control circuit 201 which activates current switch 202 upon acting on an
`
`input from MMI switch 102. Unlike heretofore known prior art devices,
`
`activating switch 102 does not conduct current to load 105, but is only a
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`command input mechanism which can, according to the invention, operate
`
`on very low current.” Clearly, control over significant draws on the
`
`exhaustible power supply – in the words of the ‘952 Patent “energy
`
`consuming loads” – is through the microchip.
`
`- 8
`
`
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`16. Claims 1 and 26 specify a product including a power source or
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`a connection for a power source, a microchip, a touch sensor forming a part
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`of a user interface, and a visible indication activated by the microchip
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`responsive to a signal from the user interface. My understanding is that the
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`“product” of Claims 1 and 27 is the “device” or “unit” of the product claims,
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`which as noted is illustrated in the ‘952 Patent as a flashlight. My
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`understanding is reinforced by the fact that the interface is said to be for a
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`product which comprises a power source or a connection for a power source
`
`(such as a battery) and at least one energy consuming load. An example of
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`the product is illustrated in FIG. 11 of the '952 Patent, in which there is
`
`included a power source 101, a visible indication 1104, a user interface
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`including a touch sensor 1111 and a microchip 1113, and an energy
`
`17. As noted, the ‘952 Patent illustrates the invention of the Claims
`
`consuming load 105.
`
`of the patent by reference to a flashlight, in which case the “load” is the bulb
`
`of the flashlight. Other devices are identified, and the particular device
`
`described by the patent is not limited except that it has connections to a
`
`power source and an energy consuming load of some type, with a microchip-
`
`controlled user interface device to manage both man-machine-interface
`
`(MMI) functions and conducting of current to the load.
`
`- 9
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`
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`18. The ‘952 Patent refers frequently to “activation.” This term
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`seems to be used consistently to indicate turning something on.
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`"Deactivation" would, of course, mean turning something off. Everywhere
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`the ‘952 Patent disclosure refers to “activating” or “deactivating” it appears
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`to refer to turning a module on or off, as opposed to merely providing some
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`information to that module. I have set forth my opinions below, consistent
`
`with this understanding.
`
`MY OPINION
`
`III. LIST OF DOCUMENTS CONSIDERED IN FORMULATING
`19.
`
`In formulating my opinion, I have considered all of the
`
`following documents:
`
`Exhibit
`
`Description and Designation
`
`(Paper 2) Petition for Inter Partes Review of U.S. Patent No. 8,288,952,
`IPR2015-01151, (“Petition”) (Paper 2)
`1001 U.S. Patent No. 8,288,952
`1002
`File history for U.S. Patent 8,288,952
`1003 U.S. Patent No. 6,249,089
`1004 U.S. Patent 6,125,286 (“Jahagirdar”)
`1005 U.S. Patent 4,053,780 (“Schultz”)
`1006 U.S. Patent 5,329,577 (“Norimatsu”)
`1007 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”)
`1008 U.S. Patent 4,963,793 (“DePauli”)
`1009 U.S. Patent 4,764,708 (“Roudeski”)
`1014 Declaration of Mark N. Horenstein
`
`- 10
`
`
`
`(Paper 8) Decision of the PTAB to Institute (Paper 8)
`2001 Deposition Transcript of Mark N. Horenstein regarding
`IPR2015-01147, IPR2015-01148, IPR2015-01149,
`IPR2015-01150, and IPR2015-01151, dated February
`16, 2016
`2004 U.S. Patent 3,879,593 (“Larson”)
`2005 U.S. Patent 4,391,845 (“Denley”)
`2006 U.S. 4,602,135 (“Phalen”)
`
`
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`20.
`
`I am informed that it is permissible to determine the level of
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`ordinary skill in the art from a review of relevant prior art references. For
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`purposes of this Declaration, I am relying on the 1998 priority date listed on
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`the face of the ‘952 Patent to establish the appropriate level of ordinary skill.
`
`In my view, the level of ordinary skill relevant to the ‘952
`
`21.
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`Patent is evident from a review of the prior art references cited in the
`
`Petition and related art. These and other contemporaneous references invoke
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`a limited body of knowledge in electronics and microchip controlled
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`circuitry and related art. A student of electrical engineering with an
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`undergraduate degree in electronics, electrical circuitry or equivalent degree,
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`is representative of the person of skill in this art. Such an individual would
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`be familiar with the design and application of low-level circuitry and
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`switching functions, and have a working knowledge of microchip-based
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`systems design and operation.
`
`- 11
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`
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`22. A degree alone does not confer on an individual real world
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`knowledge and understanding of how circuits and electronics are designed
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`and implemented. Thus, the undergraduate degree would be augmented, in
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`someone of ordinary skill in the art, with a year or so of work in the field
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`(such as laboratory work for hire by a private corporation or postgraduate
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`study) preferably in the design, construction and implementation of
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`microchip-based electronic circuitry.
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`with or knowledge of microprocessor-based software design, as well as an
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`understanding of then available microchips and their application.
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`23. A person of ordinary skill in this art would have experience
`V. LEGAL STANDARDS
`24.
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`I have not been asked to offer an opinion on the law; however, I
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`understand that I am obliged to follow existing law. I have therefore been
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`asked to apply the following legal principles to my analysis, and I have done
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`so.
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`A. Anticipation
`25.
`
`I understand that to be valid, a patent claim must be “novel,”
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`and is invalid if “anticipated” by a single prior art reference. I further
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`understand a reference anticipates if it discloses each and every element as
`
`- 12
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`
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`arranged in the claim, so as to enable a person of ordinary skill in the art to
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`make and use the claimed invention without undue experimentation.
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`I understand that the express, implicit, and inherent disclosures
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`26.
`
`of a prior art reference may be relied upon when analyzing anticipation.
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`However, I understand the fact that a certain result or characteristic may
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`occur or may be present in the prior art is not sufficient to establish the
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`inherency of that result or characteristic.
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`27.
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`I also understand the disclosure in an allegedly anticipating
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`reference must provide an enabling disclosure of the desired subject matter.
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`The considerations I evaluated in assessing whether a reference sets forth the
`
`elements of a claim in a sufficient manner such that a person of ordinary
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`skill in the art could have readily made and used the claimed invention
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`without undue experimentation include: the breadth of the claim, the nature
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`of the invention, the state of the prior art, the level of one of ordinary skill,
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`the level of predictability in the art, the amount of direction provided by the
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`reference, the existence of working examples, and the quantity of
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`experimentation needed to make or use the invention based on the content of
`
`the disclosure.
`
`- 13
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`
`
`B. Obviousness
`28.
`
`I understand that even if a patent is not anticipated, it is still
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`invalid if the differences between the claimed subject matter and the prior art
`
`are such that the subject matter as a whole in my view would not have been
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`innovative at the time the invention was made to a person having ordinary
`
`skill in the pertinent art.
`
`I understand a person having ordinary skill in the art (i.e., a
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`29.
`
`30.
`
`PHOSITA) is a hypothetical person who is presumed to have known the
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`relevant art at the time of the invention was made. I understand the
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`requirement “at the time the invention was made” is to avoid impermissible
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`hindsight. I also understand an expert is to analyze the prior art from the
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`perspective of a person of ordinary skill in the art and not simply provide his
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`own personal conclusions.
`
`I also understand that an obviousness determination includes
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`several factual inquiries, including (1) determining the scope and content of
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`the prior art; (2) ascertaining the differences between the claimed invention
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`and the prior art; (3) resolving the level of ordinary skill in the pertinent art;
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`and (4) taking into consideration any secondary indicia of non-obviousness.
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`I am informed that secondary indicia of non-obviousness may
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`31.
`
`include (1) a long felt but unsolved need that was satisfied by the claimed
`
`- 14
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`
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`invention; (2) commercial success attributable to the claimed invention; (3)
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`unexpected results achieved by the claimed invention; praise by experts of
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`the claimed invention with factual support; (4) taking of licenses under the
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`patent by others for reasons related to the alleged nonobviousness of the
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`claimed invention; and (5) evidence that competitors in the marketplace are
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`copying the invention instead of using the prior art. I also understand that
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`there must be a relationship, or nexus, between any such secondary indicia
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`and the claimed invention, i.e., objective evidence of nonobviousness must
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`be attributable to the claimed invention. I further understand that near
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`simultaneous invention by two or more equally talented inventors working
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`independently may or may not be an indication of obviousness when
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`considered in light of all the circumstances.
`
`32.
`(A)
`(B)
`
`I understand a conclusion of obviousness can be based on a
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`combination of multiple prior art references. I understand that exemplary
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`rationales that may support a conclusion of obviousness include:
`
`Combining prior art elements according to known methods
`
`to yield predictable results;
`
`Simple substitution of one known element for another to
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`obtain predictable results;
`
`- 15
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`
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`Use of known technique to improve similar devices
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`(methods, or products) in the same way;
`
`Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
`
`“Obvious to try” – choosing from a finite number of
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`identified, predictable solutions, with a reasonable
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`expectation of success;
`
`Known work in one field of endeavor may prompt
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`variations of it for use in either the same field or a different
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`one based on design incentives or other market forces if the
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`variations are predictable to one of ordinary skill in the art;
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`Some teaching, suggestion, or motivation in the prior art
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`that would have led one of ordinary skill to modify the
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`prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`I further understand that an obviousness analysis recognizes
`
`(C)
`(D)
`(E)
`(F)
`
`(G)
`
`33.
`34.
`
`trends.
`
`that market demand, rather than scientific literature, often drives design
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`I understand that if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize it would
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`- 16
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`
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`improve similar devices in the same way, using the technique is obvious
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`35.
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`unless its actual application is beyond his or her skill.
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`I also understand that practical and common sense
`
`considerations should guide a proper obviousness analysis, because familiar
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`items may have obvious uses beyond their primary purposes. I further
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`understand that applying common sense does not require a “specific hint or
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`suggestion in a particular reference,” only a reasoned explanation that avoids
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`conclusory generalizations.
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`36.
`
`I understand a person of ordinary skill in the art addressing a
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`37.
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`problem will often be able to fit the teachings of multiple publications
`
`together like pieces of a puzzle. In this regard, I understand that an
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`obviousness analysis may take into account the inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
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`I understand a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example,
`
`when there is a design need or market pressure to solve a problem and/or
`
`there is a finite number of identified, predictable solutions, with a reasonable
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`expectation of success, a person of ordinary skill in the art has good reason
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`to pursue the known options within his or her technical grasp. I understand
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`- 17
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`
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`that if this leads to anticipated success, it is likely the result not of innovation
`
`but of ordinary skill and common sense.
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`38.
`
`I understand the combination of familiar elements according to
`
`known methods is likely obvious when it does no more than yield
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`predictable results. When work is known in one field of endeavor, it may
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`prompt variations of that work for use in either the same field or a different
`
`one, based on design incentives and other market forces. If a technique has
`
`been used to improve one device, and a person of ordinary skill in the art can
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`implement a predictable variation, it is likely unpatentable.
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`It is further my understanding that to be proper for use in an
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`39.
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`obviousness analysis, a reference must be analogous art to the claimed
`
`invention. Accordingly, I understand that under the correct analysis, any
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`need or problem known in the field of endeavor at the time of the invention
`
`and addressed by the claimed invention can provide a reason for combining
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`40.
`
`the elements in the manner claimed.
`
`I understand a claim can be obvious in light of a single
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`reference, without the need to combine references, if the elements of the
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`claim that are not found explicitly or inherently in the reference can be
`
`supplied by the common sense of one of skill in the art. For example,
`
`- 18
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`
`
`combining two embodiments disclosed adjacent to each other in a prior art
`
`patent does not require a leap of inventiveness.
`
`I understand a claimed invention may be obvious if it involves
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`41.
`
`merely simple substitution of one known element for another to obtain
`
`predictable results. I understand further that the prior art need not be like
`
`two puzzle pieces that must fit together perfectly. For example, a claimed
`
`invention may be found obvious if a person of ordinary skill in the art would
`
`view rearrangement as an obvious matter of design choice.
`
`42. Finally, I have been informed and understand that the
`VI. JAHAGIRDAR AND SCHULTZ
`43. The Petition seeking to invalidate Claims 1-4, 14, 16, 17, 19,
`
`obviousness analysis requires a comparison of the properly construed claim
`
`language to the prior art on a limitation-by-limitation basis.
`
`22-24, 26, 27, and 38-40 relies on the combination of two references, U.S.
`
`Patent No. 6,125,286 to Jahagirdar and U.S. Patent No. 4,053,789 to
`
`Schultz. The Decision to Institute, Paper No. 8, refers to these references by
`
`the last name of the first named inventor, and I shall refer to them in the
`
`44.
`
`same fashion in this Declaration.
`
`Jahagirdar’s mobile station 102 of Fig. 1 is what would now be
`
`recognized as a “flip-phone”, i.e., a cell phone where the keys of the keypad
`
`- 19
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`
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`used to dial the phone, to input data, etc., are uncovered by “opening” the
`
`flap (movable housing portion 114 of Fig. 1) of the phone that covers the
`
`keypad. The specific improvement addressed in Jahagirdar is the provision
`
`of a secondary display panel at the “top” edge or joint of the phone so that it
`
`need not be opened to read pertinent information, such as the number of the
`
`45. The activations of Jahagirdar’s external (516 in Fig. 5) and
`
`calling party.
`
`internal (520) displays are mutually exclusive. When the flap 114 of phone
`
`is closed external display 516 is turned on and internal display 520 is turned
`
`off. Conversely, when the flap 114 of the phone is moved to the open
`
`position the internal display is activated and the external display is turned
`
`off. The position of the flap is all that controls which display is activated.
`
`There is no user interface key that affects the activation of either display.
`
`46.
`
`Jahagirdar provides operational flow charts for the phone in
`
`Figures 8A and 8B. As shown in Fig. 8A, when the phone is closed the very
`
`first step in the process is “activation” of the display on the edge of the
`
`phone, i.e., turning it on. Given the relevant time (Jahagirdar was filed in
`
`1997) the display of the phone did not have a complicated function, or
`
`numerous applications to drive.
`
`- 20
`
`
`
`47.
`
`Jahagirdar specifically describes the provision of pushbutton
`
`keys on keypad 134, Col. 3, ll. 16–24. There is another user interface
`
`including keys that are accessible on an exterior edge of the flip phone
`
`48. Closing the phone activates external display (516 of Fig. 5) by
`
`housing, indicated as keys 144.
`
`providing power to the driver and the phone’s external display at step 802 of
`
`Fig. 8A. Col. 5, ll. 26–36. The various keys provide signals to the circuitry
`
`that affects the information the phone displays. Thus, in step 814, as set
`
`forth at Col. 5, ll. 54–65, if the “INFO” input key 150 is pressed, the
`
`controller sends data for new information to the already activated (turned on)
`
`external display.
`
`49. While it is clear that the inventors of Jahagirdar were
`
`acquainted with a variety of circuitry approaches, it is noteworthy that they
`
`chose to combine the data displays with the physical pushbutton keys.
`
`Jahagirdar indicates that in part such keys were selected to mimic the
`
`pushbutton keypads of phones prevalent at the time, while providing
`
`displays.
`
`additional keys for functions specific to the phone, such as illuminating the
`
`50. Schultz is not directed to a phone or cellular communications
`
`device of any sort. Instead, Schultz is directed to a touch switch that is
`
`- 21
`
`
`
`activated by, and responsive to, the touch of an animal. Col. 1, ll. 27–31.
`
`The touch of an animal, such as a human, bridges spaced conductors and
`
`introduces a capacitance to ground, causing the load to be operated in the
`
`51. The “load” to be operated in response to the pulse caused by
`
`switch of Schultz. Col. 1, ll. 46–63.
`
`contact of an animal with the touch surface is not described with
`
`particularity. Col. 3, ll. 30–38. What is made clear is that the touch sensor
`
`is not selective between types of touch - it is responsive to the touch of any
`
`animal, the patent indicating that the pulse is generated, and the load
`
`operated, in response to the touch of “a human finger, an animal’s paw or its
`
`52. Schultz does not describe the size or character of the touch
`
`nose.” Col. 3, l. 50.
`
`sensor set forth. It does not describe the interaction of multiple sensors, and
`
`provides no information on how many touch sensors can be provided
`
`together. What is clear, however, is since the switch is intended to be
`
`activated by something as broad as an animal’s nose (picture a dog’s nose)
`
`the switches or touch sensors of the reference are not small or confined. If
`
`they were, the animal would find it difficult to direct its nose to the
`
`appropriate location to operate the switch.
`
`- 22
`
`
`
`VII. JAHAGIRDAR AND SCHULTZ DO NOT RENDER THE
`53. The Decision to Institute concludes that the evidence then-
`
`CLAIMS OBVIOUS
`
`considered supports a conclusion that, more likely than not, the combination
`
`of Jahagirdar and Schultz would render the challenged claims obvious. The
`
`Board’s Decision appears to accept the arguments set forth in the Petition,
`
`including 1) that one of skill in the art would combine Jahagirdar and
`
`Schultz for reasons of convenience and aesthetics, to eliminate problems of
`
`mechanical failure and primarily to “minimize accidental actuation.”
`
`54. The Board’s Decision also appears to accept without question
`
`the Petitioner’s characterization that the “activation” of display element 516
`
`in response to an “activation signal” received from key 150, Decision, page
`
`7, discloses the activation step of the challenged claims.
`
`I do not agree with the Board’s understanding based solely on
`
`55.
`
`Petitioner’s characterizations. In particular, it seems to me unlikely that one
`
`of skill in the art would combine the disclosures of Jahagirdar and Schultz in
`
`the fashion set forth for the reasons proposed.
`
`
`
`A. One of Skill in the Art Would Not Combine Jahagirdar
`56. There seems to me to be little reason to combine Schultz with
`
`and Schultz
`
`Jahagirdar, and good reasons not to combine them. While the suggestion is
`
`- 23
`
`
`
`made that such a combination would “minimize accidental actuation”
`
`Decision, page 7, in fact quite the opposite would happen. Bear in mind that
`
`several keys are located on an exterior edge of the housing of Jahagirdar’s
`
`phone. Indeed, to answer a call in step 832 of Fig. 8b, one must grasp the
`
`housing and change the position of the flap to “open” the phone. There are a
`
`number of keys 144 on the exterior of the housing of the phone. These are
`
`pushbutton keys that require both physical touching and additional physical
`
`manipulation. If these keys were converted to the touch sensors of Schultz
`
`that do not require physical manipulation beyond touching, they would
`
`inevitably be initiated by accidental touches from the hand of the operator
`
`while attempting to open the flap of the phone or while talking on the phone.
`
`57.
`
`It is not clear to me, in fact, why the presence of touch sensors
`
`would “minimize” accidental actuation. Specifically, the “accidental
`
`actuation” minimized by Schultz is the actuation of prior art touch sensors,
`
`not the type of switches employed in flip phones. The prior art touch sensors
`
`can be actuated by resistance or capacitance. Shultz, Col. 1, ll. 5–24.
`
`However, since any touch by an animal – human or pet – includes both
`
`resistive coupling across the separated conductors and inherently provides
`
`capacitance, Col. 1, ll. 25–63, ANY touch by a human will result in a pulse
`
`being sent to indicate activation of the switch.
`
`- 24
`
`
`
`58. When the operator goes to answer a call by grasping it to open
`
`the flap or while the operator is holding the phone when talking on it, the
`
`operator's hands will inevitably touch the exterior keys 144. If in fact these
`
`were the touch sensors of Schultz instead – as suggested – unintentional
`
`activation must result if all the operator wanted to do is open the phone, look
`
`at the display, or hold the phone while talking on it. While the Horenstein
`
`Declaration asserts at paragraphs 58–60 that replacing the pushbutton keys
`
`of Jahagirdar with the touch sensors of Schultz would reduce inadvertent
`
`activation because the Schultz reference says it would, that is comparing
`
`59. The problem of inadvertent activation is only magnified by
`
`apples and oranges.
`
`replacing the keys 144 of Jahagirdar with the sensors of Schultz. It is
`
`unclear how closely these may be set or how much space is required, but
`
`multiple information and function keys set side by side that are a
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