UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.
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`
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`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
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`
`
`Patent Owner
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`
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`Patent No. 8,288,952
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`Issued: Oct. 16, 2012
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`Filed: Nov. 17, 2011
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`
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`Inventor: Frederick Johannes Bruwer
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`Title: INTELLIGENT USER INTERFACE INCLUDING A TOUCH
`SENSOR DEVICE
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`
`
`Inter Partes Review No.: IPR2015-01151
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`PATENT OWNER'S RESPONSE
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ............................................................................................ i
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`TABLE OF AUTHORITIES .................................................................................... ii
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`STATEMENT OF MATERIAL FACTS IN DISPUTE .......................................... iii
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`EXHIBIT LIST ......................................................................................................... iv
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`I.
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`STATEMENT OF RELIEF REQUESTED .................................................... 1
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`III. THE LAW ....................................................................................................... 7
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`A.
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`Claim Construction................................................................................ 7
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`B.
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`Obviousness ........................................................................................... 8
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`IV. CLAIM CONSTRUCTION ............................................................................ 9
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`A.
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`“Activating"/"Activate" and "Deactivating” (Claims 1, 3, 22-24, and
`26) ........................................................................................................ 10
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`V.
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`JAHAGIRDAR IN VIEW OF SCHULTZ DOES NOT RENDER CLAIMS
`1-4, 14, 16, 17, 19, 22-24, 26, 27, AND 38-40 OBVIOUS........................... 12
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`A.
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`B.
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`C.
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`Jahagirdar In View of Schultz Would Not Have Rendered Obvious "A
`Touch Sensor Forming Part Of A User Interface" (Claims 1-4, 14, 16,
`17, 19, 22-24, 26, 27, and 38-40) ........................................................ 12
`
`Jahagirdar In View of Schultz Would Not Have Rendered Obvious
`"Said Microchip Adapted To Control The Activation Of A Visible
`Indication In Response To An Activation Signal Received From The
`User Interface While Operation Of The Load Is Unaffected" (Claims
`1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40) ..................................... 19
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`Jahagirdar In View of Schultz Does Not Disclose "Automatically
`Deactivating The Visible Indication A Predetermined Period Of Time
`After It Was Activated" (Claim 23) ................................................... 22
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`VI. CONCLUSION .............................................................................................. 24
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`i
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`Cases
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`TABLE OF AUTHORITIES
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`Alloc, Inc. v. USITC, 342 F.3d 1361 (Fed. Cir. 2003) .............................................. 8
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`Graham v. John Deere Co., 383 U.S. 1 (1966) .......................................................... 9
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`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ................................................................ 9
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`In re NTP, Inc., 654 F.3d 1279 (Fed.Cir.2011) ......................................................... 7
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`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed.Cir. 2010) ........................................ 7
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ...........................................9, 13
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`Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) ... 7
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`Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340 (Fed.Cir.2004) ................ 8
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ....................... 7
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`Microsoft Corp. v. Proxyconn, Inc., Case IPR2012-00026 .......................... 9, 22, 24
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................... 7
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`Plas-Pak Industries, Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755 (Fed. Cir.
`2015) ..............................................................................................................19
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`Toro Co. v. White Consol. Indus., 199 F.3d 1295 (Fed.Cir.1999) ............................ 8
`
`Watts v. XL Sys., Inc., 232 F.3d 877 (Fed.Cir.2000) ................................................ 8
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`Statutes
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`35 U.S.C. § 103(a) ..................................................................................................... 9
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`Rules
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`37 C.F.R. § 42.100(b) ................................................................................................ 7
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`37 C.F.R. §42.23(a) .................................................................................................. iii
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`ii
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioners did not submit statements of material facts in their petition for
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`Inter Partes Review. Accordingly, no response is due pursuant to 37 C.F.R.
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`§42.23(a), and no facts are admitted.
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`iii
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`EXHIBIT LIST
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`Exhibit
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`DESCRIPTION
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`Deposition Transcript of Mark N. Horenstein regarding IPR2015-
`
`2001
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`01147, IPR2015-01148, IPR2015-01149, IPR2015-01150, and
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`IPR2015-01151, dated February 16, 2016
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`2002
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`Expert Declaration of Robert E. Morley, Jr.
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`2003
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`Curriculum Vitae of Robert E. Morley, Jr.
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`2004
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`U.S. Patent 3,879,593 (“Larson”)
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`2005
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`U.S. Patent 4,391,845 (“Denley”)
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`2006
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`U.S. 4,602,135 (“Phalen”)
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`iv
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`In its Decision, dated November 17, 2015 ("Decision"), the Patent Trial and
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`Appeal Board ("Board") instituted the present Inter Partes Review ("IPR")
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`proceeding with respect to U.S. Patent No. 8,288,952 B2 (Ex. 1001, "the '952
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`Patent") on the following ground:
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`• Ground 1: Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40
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`obvious under 35 U.S.C. § 103(a) over U.S. Patent No. 6,125,286
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`("Jahagirdar") (Ex. 1004) in view of U.S. Patent No. 4,053,789
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`("Schultz") (Ex. 1005).
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`Patent Owner, Global Touch Solutions, LLC (“Patent Owner”), respectfully
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`requests the Board to find that Petitioners, Microsoft Corporation and Microsoft
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`Mobile, Inc. (collectively, "Petitioners"), have failed to meet their burden of
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`proving by a preponderance of the evidence that claims 1-4, 14, 16, 17, 19, 22-24,
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`26, 27, and 38-40 are obvious over Jahagirdar in view of Schultz, at least for the
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`reasons set forth in this Patent Owner's Response, and summarized below.
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`Patent Owner respectfully submits that, with respect to the claimed "touch
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`sensor," Petitioners rely on a combination of references that would not have
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`rendered this feature obvious. Namely, Petitioners' suggestion that it would have
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`1
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`been obvious to replace the mechanical switch of Jahagirdar with the touch sensor
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`of Schultz lacks any reasoning with a rational underpinning to support the legal
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`conclusion of obviousness. In fact, such a modification would have significantly
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`increased the likelihood of inadvertent actuation of the keys of Jahagirdar, and for
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`this reason one skilled in the art would not have made this modification.
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`Petitioners' erroneous combination of art is fatally defective to the Petition's
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`proposed rejections of claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40, as the
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`Petition fails to establish that all of the limitations of the challenged claims are
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`within or obvious from the teachings of the prior art.
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`II.
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`INTRODUCTION
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`The '952 Patent is directed to an interface unit including a microchip-
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`controlled switch that is capable of managing conducting of current to a load as
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`well as “man-machine-interface” functions (or “MMI” functions) in an electronic
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`device. Ex. 1001 at 3:61-66. Central to the invention of the '952 Patent is the
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`microchip controlling power supply from a power source to the load. Ex. 2002
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`(Declaration of Robert E. Morley, Jr.) at ¶¶ 11-15. According to the '952 Patent,
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`the MMI functions managed by the microchip are controlled by low current signals
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`using touch pads or touch sensors. Ex. 1001 at 3:66-4:1. Low current switches are
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`described as “smaller, more reliable, less costly, easier to seal and less vulnerable
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`2
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`to the effects of corrosion and oxidation” than conventional mechanical switches
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`that were used as the actual conductors to provide current to the load. Id. at 3:32-
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`43 and 4:2-4. The '952 Patent explains that utilizing low current switches, such as
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`touch sensors, in connection with the microchip makes it “possible to control the
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`functions of the device in an intelligent manner by the same microchip which
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`provides the MMI functions.” Id. at 4:4-8. As a result, “more reliable, intelligent
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`and efficient electrical devices can be obtained which are cheaper and easier to
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`manufacture than prior art devices.” Id. at 4:8-11.
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`In one embodiment depicted in Figure 1, above, the '952 Patent describes a
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`circuit 100 of an electronic device including a microchip 103 provided with a
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`“microchip controlled input activator/deactivator 102,” which may be a touch
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`sensor. Id. at 6:47-52 and 7:26-31. When a user activates the input switch 102, it
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`is recognized as a command input to the microchip 103. Id. at 7:15-17. Instead of
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`3
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`conducting current to the load, the switch 102 is provided as “only a command
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`input mechanism” that operates on low current. Id. at 7:26-31. Upon activation of
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`the switch 102, the microchip 103 can allow current to pass from power source 101
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`to load 105. Id. at 7:18-23. Load 105 is described in the context of a light in a
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`flashlight device, but the '952 Patent explains that the flashlight is only an example
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`of a device that the circuit can be applied to, and that it is equally applicable to
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`other devices. Id. at 6:56-61.
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`In addition to controlling the power supply to the load with the low current
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`switch as an input to the microchip, the '952 Patent provides other embodiments in
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`which other functions of the device may also be controlled by the microchip of the
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`user interface. As the '952 Patent explains, “more intelligent functions” can be
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`implemented, “such as, but not limited to, intermittent flashing, the flashing of a
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`conspicuous pattern such as Morse code, dimming functions, battery maintenance,
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`battery strength/level, etc.” Id. at 8:40-47. The '952 Patent teaches that the
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`different functions may be activated by different activation sequences of the low-
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`current switch. Id. at 10:44-47. As an example of the “different commands” that
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`can be implemented, a “single closure” of the switch could cause the microchip to
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`activate the current switch to supply power to the load for a predetermined time,
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`while “two successive closures” can instruct the microchip to intermittently
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`4
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`activate the current switch to the load for a different time and/or sequence, such as
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`to display an S.O.S. sequence. Id. at 10:47-52.
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`In a further embodiment, depicted in Figure 11 above, the '952 Patent
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`describes providing an indicator device to indicate a condition of the device, such
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`as the condition of the battery, or to assist in locating the device. Id. at 9:46-50.
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`The indicator device 1104 may be realized as an LED that is illuminated in this
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`embodiment when the microchip 1113 sets the pin connected to the line 1114,
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`which is also connected to the switch 1111, to a high output state. Id. at 9:52-57.
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`In other embodiments, the pin controlling the indicator 1104 may be a different pin
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`than the pin connected to the switch 1111. Id. at 9:50-52. Accordingly, the
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`microchip 1113 can control the visible indicator 1104 to be activated
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`independently of activating or operating the load 105.
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`Ultimately, by incorporating an intelligent microchip with a low current
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`5
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`switch (such as a touch sensor) to control power supply to a load, the '952 Patent
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`provides a user interface that is more practical, durable, and cost efficient than
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`conventional current conducting switches, and that allows a user to selectively and
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`independently control various different functions in a convenient manner.
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`The ‘952 Patent is a continuation of U.S. Patent Application No. 12/855,006
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`("'006 Application"), filed August 12, 2010 and now U.S. Patent No. 7,994,726.
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`The '006 Application is a continuation of U.S. Patent Application No. 12/239,369
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`("'369 Application"), filed September 26, 2008 and now U.S. Patent No. 7,781,980.
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`The '369 Application is a continuation of U.S. Patent Application No. 11/961,723
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`("'723 Application"), filed December 20, 2007 and now U.S. Patent No. 7,443,101.
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`The '723 Application is a divisional of U.S. Patent Application No. 11/060,329
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`("'329 Application"), filed February 17, 2005 and now U.S. Patent No. 7,336,037.
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`The '329 Application is a continuation of U.S. Patent Application No. 10/690,423
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`("'423 Application"), filed October 21, 2003 and now U.S. Patent No. 6,952,084.
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`The '423 Application is a continuation of U.S. Patent Application No. 10/365,042
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`("'042 Application"), filed February 12, 2003 and now U.S. Patent No. 6,650,066.
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`The '042 Application is a continuation of U.S. Patent Application No. 09/793,303
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`("303 Application"), filed February 26, 2001 and now U.S. Patent No. 6,621,225.
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`The '303 Application is a continuation of U.S. Patent Application No. 09/169,395
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`6
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`("'395 Application"), filed October 9, 1998 and now U.S. Patent No. 6,249,089.
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`III. THE LAW
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`A. Claim Construction
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`A claim in an Inter Partes Review proceeding is interpreted according to its
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`broadest reasonable construction in light of the specification. 37 C.F.R. §
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`42.100(b). Here, "claims 'must be read in view of the specification of which they
`
`are a part.'" Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en
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`banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
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`1995) (en banc)).
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`Additionally, claim terms should not be construed "during IPR so broadly
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`that its constructions are unreasonable under general claim construction
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`principles.... Rather, 'claims should always be read in light of the specification and
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`teachings in the underlying patent.'" Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
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`1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255,
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`1260 (Fed.Cir. 2010)). Under the broadest reasonable interpretation standard, "the
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`Board's construction 'cannot be divorced from the specification and the record
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`evidence.'" Id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.Cir.2011)).
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`While impermissible importation of limitations from the specification is to
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`be avoided, a claim will nonetheless be construed to require a feature where the
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`7
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`"very character of the invention" as disclosed in the specification requires this
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`feature. Alloc, Inc. v. USITC, 342 F.3d 1361, 1369-1370 (Fed. Cir. 2003); see also
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`Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1351–52 (Fed.Cir.2004)
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`(construing claim to require feature “central to the functioning of the claimed
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`invention[ ]”); Watts v. XL Sys., Inc., 232 F.3d 877, 882–83 (Fed.Cir.2000)
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`(construing claim to include limitation, in part, because specification limited
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`invention to embodiments with that feature); Toro Co. v. White Consol. Indus., 199
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`F.3d 1295, 1300–01 (Fed.Cir.1999) (construing claim to require particular
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`configuration where specification described importance of the configuration and
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`did not disclose other configurations).
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`For example, where a particular feature is included in all embodiments and
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`figures of the specification, it is proper to construe a claim to require this feature.
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`See Alloc, 342 F.3d at 1370. Additionally, where the specification distinguishes
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`over the prior art on the basis of a particular feature, it is proper to construe a claim
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`to require this feature. See id. at 1371.
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`B. Obviousness
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`A patent may not be obtained "if the differences between the claimed
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`invention and the prior art are such that the claimed invention as a whole would
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`have been obvious before the effective filing date of the claimed invention to a
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`8
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`person having ordinary skill in the art to which the claimed invention pertains." 35
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`U.S.C. § 103(a). In determining obviousness a fact-finder must consider (1) the
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`scope and content of the prior art; (2) the differences between the prior art and the
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`claimed invention; (3) the level of ordinary skill in the art; and (4) objective
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`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966);
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406–407 (2007) (noting that the four
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`Graham factors “continue to define the inquiry that controls”).
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`As this Board noted in Microsoft Corp. v. Proxyconn, Inc., a finding of
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`obviousness requires that each claim element be taught or suggested by the prior
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`art. Microsoft Corp. v. Proxyconn, Inc., Case IPR2012-00026 at Paper No. 19
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`(PTAB, Dec. 21, 2012 ("To establish obviousness of a claimed invention, all the
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`claim limitations must be taught or suggested by the prior art."). However, merely
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`teaching or suggesting each claim element is not sufficient, as "there must be some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness." KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d
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`977, 988 (Fed. Cir. 2006)).
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`IV. CLAIM CONSTRUCTION
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`Patent Owner submits that a person of ordinary skill in the art, at the time of
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`the invention, would have been a person with a Bachelor of Science degree in
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`electrical engineering or a related field, or some coursework comparable in the area
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`of circuit design in combination with a year of practical experience with products
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`containing electronic circuitry. Such an individual would be familiar with the
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`design and application of low-level circuitry and switching functions, and have a
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`working knowledge of microchip-based systems design and operation.
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`Patent Owner notes that a proposed construction for one other term is
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`forwarded in the Patent Owner's Response for related IPR2015-01175, but omitted
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`herein since it is not relevant to issues in the instant IPR.
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`A. “Activating"/"Activate" and "Deactivating” (Claims 1, 3, 22-24,
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`and 26)
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`Claims 1 and 26 respectively recite "activating a visible indication" and
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`“active a visible indication.” Claim 23 recites "automatically deactivating the
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`visible indication." Claims 3, 22, and 24 also use these terms in some form. The
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`plain meanings of "activating"/"activate" and "deactivating" in these contexts are
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`"turning on"/"turn on" and "turning off," respectively. This is consistent with the
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`use of these terms in the specification. Ex. 2002 at ¶¶ 18 and 67.
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`Both Petitioners and Petitioners' expert (Dr. Mark Horenstein) appear to
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`agree with Patent Owner on this point. For example, in analyzing claim 24,
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`10
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`Petitioners and Petitioners' expert map these terms to an "on/off state" in the
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`reference. See Paper 2 at p. 44; see also Ex. 1014 at ¶ 101 and p. 81.
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`Additionally, during his deposition, Petitioners' expert stated his
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`understanding of "activating" and "deactivating" in the context of claim 4 of
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`related U.S. Patent No. 7,994,726 to mean "turning on" and "turning off":
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`Q.
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`So claim 4 recites, inter alia, "Wherein the method
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`also includes this step of activating or deactivating the
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`product via commands received from the user interface."
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`What does activating or deactivating mean in this claim?
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`MR. MURPHY: Object to the form of the question and
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`object to the extent it calls for a legal conclusion and
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`claim construction.
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`A.
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`So your question was what is my understanding of
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`activation?
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`Q. Yes, for example, in claim 4.
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`MR. MURPHY: Same objection.
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`A.
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`In the context of claim 4 my thought is that it
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`means turning on or turning off.
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`Ex. 2001 at 25:9-26:1.
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`11
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`Accordingly, in view of the plain language of the claims, one of ordinary
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`skill in the art would understand "activating"/"activate" and "deactivating" as used
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`in the claims to mean "turning on"/"turn on" and "turning off," respectively.
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`V.
`JAHAGIRDAR IN VIEW OF SCHULTZ DOES NOT RENDER
`CLAIMS 1-4, 14, 16, 17, 19, 22-24, 26, 27, AND 38-40 OBVIOUS
`
`A.
`Jahagirdar In View of Schultz Would Not Have Rendered
`Obvious "A Touch Sensor Forming Part Of A User Interface"
`(Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40)
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`Both independent claims 1 and 26 recite a product including a power source
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`(or connection therefor), a microchip, a touch sensor forming part of a user
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`interface, and a visible indication activated by the microchip in response to an
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`activation signal from the user interface. An example of such a product is
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`illustrated in FIG. 11 of the '952 Patent, in which there is included a power source
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`101, a visible indication 1104, a user interface including a touch sensor 1111 and a
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`microchip 1113, and an energy consuming load 105:
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`12
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`Petitioners cite to the flip phone of Jahagirdar for an alleged teaching of the
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`claimed product, though admitting that this flip phone does not include any touch
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`sensors. Here, Petitioners and Petitioners' expert rely on the touch sensor disclosed
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`in Schultz and argue that it would have been obvious to replace the mechanical
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`push-button keys 144 of Jahagirdar with this touch sensor for the following three
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`reasons: (1) to minimize accidental actuation; (2) to eliminate the problems of
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`contamination and mechanical failures associated with switches having moving
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`parts; and (3) to enhance convenience and aesthetics for the user. Paper 2 at p. 30,
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`and Ex. 1014 at ¶ 63.
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`However, not one of these reasons amounts to a rational basis for combining
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`the references. See KSR, 550 U.S. at 418 (there must be some articulated
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`reasoning with rational underpinning to support legal conclusion of obviousness).
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`In fact, use of a touch sensor in lieu of mechanical push-button keys would have
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`exacerbated the issue of inadvertent actuation, thereby deterring and teaching away
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`from use of a touch sensor in the product of Jahagirdar. Ex. 2002 at ¶¶ 56-64.
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`a)
`The touch sensor of Schultz would not (1) minimize accidental
`actuation
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`According to Petitioners' expert, "Because Schultz's touch sensor required
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`inherent body capacitance to be actuated, one of ordinary skill would have sought
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`13
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`to incorporate Schultz's touch sensors into Jahagirdar's keys in order to avoid
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`accidental actuations." Ex. 1014 at ¶ 64. However, this rationale is entirely
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`divorced from, and carries no weight in, the context of both Jahagirdar and
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`Schultz.
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`First, it must be noted that the evidence of record does not in any way show
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`or establish that inadvertent actuation of keys 144 in the flip phone of Jahagirdar
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`was even a recognized problem at the time of the invention (or ever). Jahagirdar
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`certainly does not suggest that mechanical push-button keys on a flip phone (such
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`as the one described therein) are prone to inadvertent actuation.
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`Schultz, meanwhile, addresses an issue specific to conventional proximity
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`(touch sensor) switches, and not mechanical push-button keys. In particular, the
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`touch sensor switch of Schultz is provided as an improvement over conventional
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`proximity switches by requiring both capacitance and a change in resistance, as
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`opposed to only capacitance. Ex. 1005 at 1:21-22. However, Jahagirdar does not
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`employ these conventional capacitance-based touch sensor switches. The
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`problems of these conventional capacitance-based touch sensor switches identified
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`and addressed by Schultz are not relevant to the push-button keys of Jahagirdar
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`such that no improvement would be observed if these keys were replaced by the
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`touch sensor switch of Schultz. Ex. 2002 at ¶¶ 57 and 58.
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`14
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`If anything, there are strong disincentives to replace the push-button keys of
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`Jahagirdar with touch sensors, as utilizing touch sensors on the flip phone of
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`Jahagirdar would have resulted in a marked degradation in convenience and use of
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`the product. For one, a key that requires both physical contact and physical
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`manipulation (pushing) would undoubtedly be less prone to inadvertent actuation
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`than a touch sensor that only requires physical contact without further physical
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`manipulation. Id. at ¶ 56. This is particularly relevant in the flip phone of
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`Jahagirdar, illustrated in FIGS. 1 and 2 and reproduced below (with Petitioners'
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`annotations):
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`Paper 2 at p. 25.
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`15
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`As can be seen above, the keys 144 (alleged to correspond to the claimed
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`touch sensor) are located on a side edge of the device precisely where a user's hand
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`would contact the phone when carrying or talking on it. Ex. 2002 at ¶ 58. The
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`location of these keys is not arbitrary, but deliberately located on the side edge so
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`as to be conveniently accessible to the user both when the phone is flipped open
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`(FIG. 1) and flipped closed (FIG. 2). To this day, phones are still developed with
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`push-button switches similarly situated on the side edge because this is an edge
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`that is easily and conveniently accessible by a user's hand when holding the phone.
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`Id. at ¶ 64. Unlike with a push-button switch that requires an additional step of
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`physical manipulation, implementing a touch sensor here would result in frequent
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`inadvertent actuation whenever the user is using, or even just holding, the phone.
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`This is precisely why, to this day, one would be hard-pressed to find any phone (let
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`alone a flip phone) with a touch sensor similarly situated on the side edge. Id.
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`b)
`It would not have been obvious to modify Jahagirdar in view of
`Schultz for the purpose of (2) eliminating the problems of contamination and
`mechanical failures associated with switches having moving parts
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`Petitioners further contend that it would have been obvious to replace the
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`push-button keys 144 of Jahagirdar with the touch sensor of Schultz "in order to
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`eliminate the problems of contamination and mechanical failures that are
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`associated with switches that have moving parts, such as keys 144." Paper 2 at pp.
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`16
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`31-32, citing Ex. 1014 at ¶ 66. Again, it must be noted that the evidence of record
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`does not establish that the keys 144 implemented in Jahagirdar are of the type that
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`are subject to contamination or mechanical failure.
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`However, even if such a reasoning were considered rational, the resultant
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`problem of inadvertent actuation discussed above would nonetheless deter or teach
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`away from the combination. At best, if one of ordinary skill in the art would have
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`been motivated to address any issue of contamination or mechanical failure in the
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`flip phone of Jahagirdar, other well-known and commonly-used types of push-
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`button switches would have been the obvious alternative. Ex. 2002 at ¶¶ 60-64.
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`Indeed, as the '952 Patent notes, membrane switches were known switches that
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`were more impervious to contamination and mechanical failure than other types of
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`conventional mechanical switches. Ex. 1001 at 8:13-24. Such membrane switches
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`are also advantageous over touch sensors because, like the keys 144 in Jahagirdar,
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`they are less prone to inadvertent actuation than touch sensors. Ex. 2002 at ¶¶ 57
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`and 58.
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`c)
`The touch sensor of Schultz would not (3) enhance convenience and
`aesthetics for the user
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`Petitioners also allege that it would have been obvious to replace the push-
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`button keys 144 of Jahagirdar with the touch sensor of Schultz because "touch
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`17
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`sensors such as those disclosed in Schultz would have enhanced the convenience
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`and aesthetics of Jahagirdar." Paper 2 at p. 32, citing Ex. 1014 at ¶ 68. This
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`reasoning fails for a number of reasons.
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`First, there is no evidentiary basis on the record for concluding that the flip
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`phone of Jahagirdar would be aesthetically improved by replacing the keys 144
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`with touch sensors. Petitioners and Petitioners' expert, at most, point to one
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`general statement in the disclosure of the DePauli reference (Ex. 1008) that a touch
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`control switching system would provide added aesthetics as compared to a
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`conventional light switch. See Paper 2 at p. 33 and Ex. 1014 at ¶ 70. This is
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`entirely irrelevant to the keys 144 of Jahagirdar, which in no way resemble a
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`conventional light switch.
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`Moreover, as set forth in section (a) above, replacing the push-button keys
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`144 of Jahagirdar with touch sensors would have plainly led to an increase in
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`inadvertent actuation, and therefore a decrease in convenience. Ex. 2002 at ¶¶ 57
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`and 58.
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`In summary, none of the reasons offered by Petitioners for replacing the
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`push-button keys of Jahagirdar with the touch sensor of Schultz is supported by the
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`evidence of record. Quite conversely, one of ordinary skill in the art would have
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`been entirely deterred from such a modification for the very misplaced reason
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`18
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`forwarded by Petitioners, i.e., to avoid inadvertent actuation, which would be far
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`more likely with the touch sensors of Schultz. See, e.g., Plas-Pak Industries, Inc.
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`v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 757 (Fed. Cir. 2015) (“[C]ombinations
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`that [1] change the ‘basic principles under which the [prior art] was designed to
`
`operate,’ . . . or that [2] render the prior art ‘inoperable for its intended purpose,’ . .
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`. may fail to support a conclusion of obviousness.”)
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`As the combination of Jahagirdar and Schultz would not have been obvious
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`to yield a user interface including a touch sensor and a microchip, Petitioners have
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`failed to meet their burden of establishing by a preponderance of the evidence that
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`the asserted combination of Jahagirdar and Schultz renders independent claims 1
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`and 26 and dependent claims 2-4, 14, 16, 17, 19, 22-24, 27, and 38-40
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`unpatentable.
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`B.
`Jahagirdar In View of Schultz Would Not Have Rendered
`Obvious "Said Microchip Adapted To Control The Activation Of A
`Visible Indication In Response To An Activation Signal Received From
`The User Interface While Operation Of The Load Is Unaffected"
`(Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40)
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`Both independent claims 1 and 26 recite a visible indication activated by the
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`microchip in response to an activation signal from the user interface. Petitioners
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`and Petitioners' expert map the second display element 520 of FIG. 5 of Jahagirdar
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`(corresponding to the second display area 132 in FIGs. 1 and 2) to the claimed
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`19
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`load, and map the first display element 516 of FIG. 5 (corresponding to the first
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`display area 130 in FIGs. 1 and 2) to the claimed visible indication. See Paper 2 at
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`pp. 25 and 35; See also Ex. 1014 at ¶¶ 53 and 73 and pp. 71-73 ("Jahagirdar's
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`display element 520 = 'an energy consuming load'" and "Jahagirdar's display
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`element 516 = 'a visible indication'").
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`However, the first display element 516 (alleged to correspond to the visible
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`indication) in Jahagirdar is not activated (turned on) in response to an activation
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`signal received from the user interface. Rather, the first display element 516 is
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`turned on by flipping the phone closed, which is not an operation of the keys 144
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`alleged to correspond to the claimed user interface. Ex. 2002 at ¶ 66.
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`Despite this clear disclosure in Jahagirdar, Petitioners' expert alleges that
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`switching of displayed content from status information to other information
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`(operation 816 in FIG. 8A) corresponds to activating the first display element 516:
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`20
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`Ex. 1014 at ¶ 74 and p. 73 (reproducing with annotations Ex. 1004 at FIG.
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`8A).
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`However, it is self-evident that sending new display content to the already-
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`activated first display element 516 does not correspond to a turning on of the first
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`display element 516. Ex. 2002 at ¶¶ 67 and 68. For example, changing channels
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`21
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`on a television display certainly does not correspond to turning on the display.
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`Schultz does not, and is not relied upon to, cure this deficiency, and
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`therefore the combination of Jahagirdar and Schultz fails to suggest the claimed
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`visible indication that is activated via the user interface while operation of the load
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`is unaffected.
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`Accordingly, Petitioners have not