trials@uspto.gov
`
`
`
`
`571-272-7822
`
`
` Case IPR2015-01147 Paper No. 25
` Case IPR2015-01148 Paper No. 42
` Case IPR2015-01149 Paper No. 42
` Case IPR2015-01150 Paper No. 26
` Case IPR2015-01151 Paper No. 26
`
`September 9, 2016
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`vs.
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01147 (Patent 7,994,726)
`Case IPR2015-01148 (Patent 7,498,749)
`Case IPR2015-01149 (Patent 7,329,970)
`Case IPR2015-01150 (Patent 7,781,980)
`Case IPR2015-01151 (Patent 8,288,952)
`Technology Center 2800
`
`Before: JUSTIN BUSCH (via video link); LYNNE E.
`PETTIGREW; and BETH Z. SHAW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`August 4, 2016, at 1:14 p.m., Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`
`
`
`
`571-272-7822
`
`
` Case IPR2015-01147 Paper No. 25
` Case IPR2015-01148 Paper No. 42
` Case IPR2015-01149 Paper No. 42
` Case IPR2015-01150 Paper No. 26
` Case IPR2015-01151 Paper No. 26
`
`September 9, 2016
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioner,
`vs.
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01147 (Patent 7,994,726)
`Case IPR2015-01148 (Patent 7,498,749)
`Case IPR2015-01149 (Patent 7,329,970)
`Case IPR2015-01150 (Patent 7,781,980)
`Case IPR2015-01151 (Patent 8,288,952)
`Technology Center 2800
`
`Before: JUSTIN BUSCH (via video link); LYNNE E.
`PETTIGREW; and BETH Z. SHAW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`August 4, 2016, at 1:14 p.m., Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`JOHN F. MURPHY, ESQ.
`DANIEL J. GOETTLE, ESQ.
`Baker Hostetler
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, Pennsylvania 19104-2891
`215-568-3100
`
`
`
`
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`
`
`
`
`
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`
`
`WILLIAM H. MANDIR, ESQ.
`FADI N. KIBLAWI, ESQ.
`BRIAN K. SHELTON, ESQ.
`PETER S. PARK, ESQ.
`Sughrue Mion PLLC
`2100 Pennsylvania Avenue, N.W.
`Washington, D.C. 20037-3213
`202-293-7060
`
`NATHAN CRISTLER, ESQ.
`Cristler IP, PLC
`1801 21st Road North
`Arlington, Virginia 22209
`
`
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`2
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`P R O C E E D I N G S
`
`(1:14 p.m.)
`JUDGE PETTIGREW: Please be seated. Good
`afternoon, everyone. Thank you for bearing with us during
`the short delay.
`This is a consolidated hearing for five cases,
`IPR2015- 01147, 01148, 01149, 01150, and 01151. Petitioners
`are Microsoft Corporation and Microsoft Mobile, Inc. Patent
`Owner is Global Touch Solutions, LLC.
`Each side has 90 minutes to argue, but don't feel
`that you need to use all 90 minutes. Petitioners have the
`ultimate burden of establishing unpatentability and will argue
`first. Patent Owner then will present its opposing argument.
`And then finally Petitioners may use any time they have
`reserved for rebuttal to respond to Patent Owner's argument.
`Judge Busch is joining us by video from out of the
`Detroit office, or he should be joining us.
`JUDGE BUSCH: I'm here and can hear and see
`you. I don't know if you can see me.
`JUDGE PETTIGREW: You can see us?
`JUDGE BUSCH: I can see the courtroom right
`now. I cannot see you and Judge Shaw. I can see the podium.
`That should be good enough, I think, for the proceeding.
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`JUDGE PETTIGREW: All right. Just one minute.
`All right. We will proceed. We may have someone coming to
`help us momentarily.
`In any event, Judge Busch is joining us from
`Detroit and won't have the benefit of the visual queues in the
`room, so when you speak about an exhibit or a demonstrative,
`please identify it with a page number or a slide number, and
`please be sure to speak into the microphone for the benefit of
`both Judge Busch and the Court Reporter.
`Before we begin let's have counsel for each party
`identify themselves and the party you represent for the record.
`Petitioners?
`MR. MURPHY: Your Honor, I'm John Murphy,
`counsel for Petitioners.
`MR. GOETTLE: Dan Goettle for Petitioners.
`JUDGE PETTIGREW: Thank you. For Patent
`
`Owner?
`
`MR. MANDIR: Your Honor, William Mandir from
`Sughrue Mion in Washington, D.C. representing GTS.
`MR. KIBLAWI: Your Honor, Fadi Kiblawi
`representing GTS.
`MR. CRISTLER: Nathan Cristler representing
`
`GTS.
`
`
`
`MR. PARK: Peter Park for GTS.
`MR. SHELTON: Brian Shelton for GTS.
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`JUDGE PETTIGREW: Thank you. Petitioner, you
`may begin when you are ready. And how much, if any time,
`would you like to reserve for rebuttal?
`MR. MURPHY: May I please reserve 30 minutes?
`JUDGE PETTIGREW: All right.
`MR. MURPHY: Thank you.
`JUDGE PETTIGREW: Do you have copies of the
`demonstratives?
`MR. MURPHY: Yes. Mr. Goettle will distribute
`
`them.
`
`JUDGE PETTIGREW: Thank you.
`You may begin.
`MR. MURPHY: Thank you. I will be presenting
`the Petitioner's opening argument here, relying on the slides
`that have just been handed out to you. I will refer to those
`slide numbers as I go.
`There is an outline on Petitioner's slide number 2.
`Just to start with a very brief orientation, the first thing I will
`do is give an overview of the obviousness theory that
`Petitioners have put forward in these related IPRs, and I will
`give a summary of what gleaning we can glean from the Patent
`Owner responses. Across the five IPRs are the Patent Owner's
`arguments just to help us tee up what the key issues are for
`discussion today.
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`Once I get through the overview then I will dive
`into the arguments first that affect all of the patents. There
`are two key arguments that affect all of the patents. And then
`I will move on from that to arguments that affect particular
`patents, or more narrow arguments related to dependent claims
`or particular patents.
`Dan, can I have slide 4, please? All right. On
`slide 4, this is just an overview of the challenged claims, the
`five IPRs across the five patents. Each one involves
`independent claims and dependent claims that are highly
`related.
`
`They all come from the same family of patents
`which is why they are all so highly related and why the
`arguments are tightly overlapping. So I will leave this here
`for a reference in case we need it. Next slide, please.
`On Petitioner's slide 5 I have here just a very high
`level overview of the obviousness argument that is at issue
`here. It involves the combination of two references. One that
`we call the Jahagirdar and one that we call Schultz.
`Jahagirdar, there is no dispute is 102(e) prior art
`and there is no dispute that Schultz is 102(b) prior art. I have
`on the slide 5 a copy of claim 1 of the '726 patent which is
`from the 1147 IPR. I'm using that claim as just an exemplary
`and I will use the '726 patent and '726 claim as the primary
`examples as I go throughout.
`
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`Unless I specifically say otherwise, the
`implication is that the arguments would really be the same for
`everything else. And I hope I was able to do that in a way
`that condenses the arguments helpfully.
`In addition to the prior art status of Jahagirdar and
`Schultz, another issue that is not in dispute is that the
`majority of the claim limitations are found in the Jahagirdar
`reference. Jahagirdar is a Motorola patent on a flip phone
`which is depicted here on slide 5.
`The only thing, according to Petitioner's
`contentions, that is missing from Jahagirdar is a touch sensor.
`So the obviousness combination is as simple as
`taking the buttons, one or more of the buttons on the side of
`Jahagirdar, which are denoted 144 in figure 2 shown on slide
`5, and replacing those with one or more touch sensors. That
`is the combination that we are offering.
`There is no dispute that touch sensors were well
`known in the art prior to 1998. So really the focus for the
`obviousness combination tends to be on the motivation to
`combine, which is what I will focus on.
`Next slide, please. So that leads me into the
`summary of the arguments we will be discussing. The first
`one which affects all patents is the question of whether
`Jahagirdar would have been modified to include a touch
`sensor. So that's the fundamental motivation question.
`
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`The other argument that affects all of the patents
`is whether Jahagirdar's keys 144 activated, which is claim
`language in various forms, the first display 516. That is not
`an issue of obviousness so much as an issue as what
`Jahagirdar teaches.
`Next slide, please. And, Dan, go to slide 8,
`please. There are a couple of arguments on slide 8 that are
`specific to the '726 patent. One of these is the question of
`whether claim 4 of the '726 patent is satisfied. In particular
`the requirement that there be activation or deactivation of a
`product.
`
`And, in addition, the '726 patent for claims 5
`through 10 will have the issue of automatic deactivation after
`a period of time, which is one that comes up in slightly
`different forms in some of the other patents.
`Next slide, please. On slide 9, with regards to the
`'970 patent, in the '970 patent there is an argument that is
`unique to the '970, which is whether Jahagirdar teaches the
`luminous visible location indicator, which is in almost all of
`the claims of the '970 patent.
`And then, finally, for the '970 patent claim 5, on
`slide 9, and also on slide 10 for the '952 patent claim 23, there
`are the variants of the automatic deactivation argument.
`All right. Slide 12, please. So to dive right into
`the Patent Owner's arguments that affect all of the patents, the
`
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`first one is the motivation to combine. The question is
`whether a person of ordinary skill in the art in 1998 would
`have put a touch sensor on the side of the Motorola flip phone
`in Jahagirdar. And that's the question.
`And turn to slide 13, please. What we're asking of
`a person of ordinary skill in the art is to plug in a known
`component into a known device to achieve the advantages that
`that known component was known to have.
`That's all we're asking the person of skill to do,
`which is exactly what the Supreme Court said in KSR is a
`prototypical obviousness reasoning, and that's what we're
`trying to apply here.
`Next slide, please. This is just a snippet from
`Petitioner's reply that summarizes as succinctly as we could
`the basic backdrop of the obviousness combination. There
`really is no dispute here that there is any implementation
`challenge.
`Touch sensors were known. The ones in particular
`described in Schultz could have been put into the flip phone
`of Jahagirdar, and there is no particular technical obstacle to
`doing that. Instead, what the Patent Owner focused on were
`the three specific motivations to combine that Petitioner
`offered and the questions the Patent Owner raised about those
`motivations.
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`Slide 15, please. So the three motivations offered
`in the petition were to try to minimize accidental actuation, in
`other words, accidentally activating those buttons on the side
`of the phone and, second, to eliminate problems of
`contamination and mechanical failures that might be present
`in the buttons on the side of the Jahagirdar flip phone and,
`third, a more general design concern, which is just to enhance
`the convenience and aesthetics for the user, which draws from
`the well known, decades old body of touch sensor art teaching
`that touch sensors were something that people find attractive
`and it is a cool design choice that you might want to try.
`Next slide, please. I'll start with the first
`motivation, which is the minimization of accidental actuation
`of the buttons on the side of the phone.
`Just to introduce a little bit of language here
`through the deposition of Dr. Morley, who is Global Touch's
`expert, and some of the papers, the declarations that were
`filed around that same time, we started to use the language
`“animate objects” and “inanimate objects.”
`And the reason that comes up is in the petition
`submitted by Microsoft, our expert, Dr. Horenstein, discussed
`that one of the advantages of touch sensors, and as was
`outlined in Schultz, is that you can reduce inadvertent
`actuation of the device or the thing that senses human contact
`by using a touch sensor, because actual skin contact is
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`
`
`required for a capacitance in order to activate that touch
`sensor.
`
`And Dr. Morley in his responsive declaration in
`his deposition focused on inadvertent actuation by animate
`objects, so, in other words, accidentally actuating the phone
`with a finger instead.
`So Global Touch's focus is on the actuation by
`animate objects and our focus had been i n the petition and
`still is on inadvertent actuation by inanimate objects.
`There is no dispute, importantly there is no dispute
`in this record, and Dr. Morley agrees, that by substituting the
`touch sensor of Schultz into the flip phone of Jahagirdar, you
`would actually be reducing inadvertent actuation by inanimate
`objects, in other words, the phone being in your pants or bag
`being knocked around the table.
`So those types of inadvertent actuations are
`reduced and improved. And he said as much in his declaration
`here on slide 16, and on slide 17 he testified the same. I
`asked directly: Wouldn't it actually alleviate the problem
`with respect to inanimate objects? And he confirmed that,
`yes, it would.
`So the legal question here, which is teed up on
`slide 18, the legal question here is what does it mean? So
`what does it mean when you have two possible design
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
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`
`choices? You have buttons and you have touch sensors. Each
`one has pros and cons.
`According to the Patent Owner's theory, there is
`particular advantage to having a physical button and that it
`avoids inadvertent actuation by a finger. And according to
`our theory, and admittedly by their expert, that having a touch
`sensor avoids, reduces inadvertent actuation by inanimate
`objects.
`
`Well, the law is that that has no effect on
`obviousness. So we have offered a motivation to combine and
`that's a legitimate basis. I quoted some of the law that was in
`our briefing here on the slide.
`The essential point to take away from it is that it
`is a tradeoff, under Patent Owner's theory. If it is true that
`the touch sensors cause a problem with inadvertent actuation,
`then at worst it is a simple tradeoff.
`A good example, I think, of these cases is the
`Apple vs. Samsung case which was decided in February,
`February 26th, 2016. And in that case, which was an appeal
`from District Court, the Federal Circuit held as a matter of
`law, in spite of a jury verdict, they held as a matter of law
`that claims were obvious directed to the slide to unlock
`feature that I think probably everyone in this room is familiar
`with on phones.
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`
`
`And the prior art had some different examples of
`ways to unlock touch screens. And the prior art reference --
`and this is something that Apple had relied upon -- the prior
`art reference said that the slide, the slide to unlock, was an
`inferior choice, wasn't a good choice.
`And the Federal Circuit said, well, that is not
`evidence of teaching away, that's a quote, "not evidence of
`teaching away." They said, sure, it is fine, there may be some
`inferiorities, there may be some disadvantages of what you are
`proposing would have been obvious, but that's not a reason for
`it not to have been obvious.
`Another way of putting it is a design solution does
`not have to be the best design solution, it does not have to be
`without flaws, and it does not have to capture all of the
`advantages of the references in order to have been obvious.
`So we think under the correct law the admitted
`facts on obviousness show that there is a motivation.
`Slide 19, please. Just as a, I think, a follow- up
`and a backup point to that, and a little bit of a reality check,
`so what happens if you inadvertently actuate the buttons on
`Jahagirdar?
`So there are three buttons on the side, the buttons
`144 -- there is 146, 148 and 150. 146 is the backlight. 148, it
`doesn't say in the patent what it does, some other function
`presumably left for the future to determine. And 150 is what
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`activates the top display, what we have called the visible
`indicator.
`And if those things were to be actuated by
`accident, by touch of the human finger, what would happen?
`Well, it wouldn't accidentally hang up your phone call. It
`wouldn't accidentally send the call to voicemail. It wouldn't
`do anything particularly bad. All it would do was light up the
`backlight or activate the top display, which Dr. Morley in his
`deposition admitted -- once it was pointed out that that is all
`that would happen -- he admitted, oh, that wouldn't be a
`detriment to the operation of the phone.
`So even the purported disadvantage that Patent
`Owners are relying on, their own expert said was not much of
`a disadvantage at all.
`JUDGE PETTIGREW: But how does that cut with
`regard to your original argument, which is to minimize
`accidental actuation, if with the original buttons, accidentally
`pushing one of those buttons, has essentially no adverse
`effects, then why would a person of ordinary skill in the art
`change that in the first place?
`MR. MURPHY: It is a simple design choice. And
`you might do it for either of the other two motivations to
`combine that we offered that I'm about to discuss. And you
`might do it because you could do it either way and you are
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`trying to differentiate yourself in the market and there is no
`reason not to.
`A final point on this is Dr. Horenstein in his
`declarations, in both of his declarations, his opening
`declaration and his reply declaration, testified as to a variety
`of ways that the touch sensor could be designed in order to
`alleviate any potential problems with inadvertent actuation by
`the finger.
`Next slide, please. The next motivation is the
`reduction of contamination and mechanical failures, which is
`an advantage of touch sensors that was long recognized in the
`art.
`
`Dr. Morley, Global Touch's expert, agreed in the
`testimony that is shown here on slide 20, just asked generally,
`well, why would one want a touch sensor in something like an
`elevator? And he agreed that, well, it would probably be less
`maintenance, less movement. Mechanical things break.
`Touch sensors don't.
`And that is completely consistent with the prior
`art, the written prior art, as well as Dr. Horenstein's
`testimony. Okay, so what is Global Touch's argument? Slide
`21.
`
`What Dr. Morley says is, okay, yeah, touch sensors
`are fine. They do improve upon mechanical switches in that
`way, but there is another way to achieve that advantage that is
`
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`better. So Dr. Morley says, instead of using touch sensors,
`you would use membrane switches.
`According to Dr. Morley, membrane switches offer
`the advantages of reduction in contamination and mechanical
`failures but they are not susceptible to inadvertent actuation.
`Next slide.
`That argument for what it is, even if it is accepted,
`doesn't really have any impact on the obviousness
`determination for exactly the same reason I just discussed.
`I think what all Dr. Morley did was give a pretty
`good reason why it would also have been obvious to use
`membrane switches on the Jahagirdar phone, but that doesn't
`mean it wouldn't have also been obvious to use touch sensors.
`So it is the exact same --
`JUDGE BUSCH: Counsel?
`MR. MURPHY: Yes.
`JUDGE BUSCH: Is a membrane switch a type of
`touch sensor switch?
`MR. MURPHY: No, I think a membrane switch is
`a type of -- I think it is a type of button that lives underneath
`a plastic membrane.
`Dr. Morley testified that -- and I actually don't
`know if this is true -- but what Dr. Morley testified is that the
`buttons on the side of most phones that are in use today are
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`membrane switches. So they have kind of a clicking feel to
`them but they are also sealed.
`So that was his testimony, which there is no
`particular reason to dispute it, because even if it's all true,
`really we don't think it matters.
`JUDGE BUSCH: Thank you.
`MR. MURPHY: And let's go to slide 23, please,
`for the last motivation. The last point that Dr. Horenstein
`made in his opening declaration was sometimes you put touch
`sensors on something just because it is cool. People think it
`is kind of appealing.
`And there was some prior art that was submitted to
`illustrate this point coming from different fields, phones that
`were not flip phones, a different kind of phone, lamps, other
`types of products, you might put a touch sensor on just
`because it is appealing and advantageous in those particular
`contexts.
`
`And there might be a very good reason to put a
`touch sensor on a flip phone just because it is aesthetically
`pleasing. Dr. Morley didn't have anything to say about this in
`his declaration. He skipped over this, as illustrated here on
`slide 23.
`
`And on slide 24 we continued with the elevator
`hypothetical, and I said, well, if you like these membrane
`switches so much, why not just use them on an elevator? And
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`he said, oh, well, you know, there is aesthetics where people
`might use the touch sensor because it is sexier, you know,
`somehow has advantages beyond those to an engineer.
`And I think that is exactly the point Dr.
`Horenstein was trying to make. It is just a design choice that
`might have some appeal in the consumer products field. Slide
`25, please.
`I will turn from there to the question of activation.
`Next slide, please.
`Slide 26, I have printed on this slide a copy of
`claims 1 and 27 from the '726 patent, just to illustrate where
`the activation language is found in these particular
`independent claims.
`And for the Board's reference, on slides 26
`through 30, are all of the claims from all five patents, the
`independent claims that have language on the activation of a
`visible indicator in case the Board would like to refer to
`those.
`
`From the point of view of the argument that Patent
`Owners made, it falls out really the same in every one of these
`claims. There is no significant difference whenever the
`activation language is used.
`Slide 31. In the petition, when Dr. Horenstein laid
`this out, the argument that he made and that was accepted in
`our petitions was the buttons on the side of the phone, in
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
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`particular button 150, that is what activates the top display.
`So the top display in slide 31 in figures 1 and 2 of Jahagirdar
`is enumerated 130.
`In addition, there is a circuit diagram or block
`diagram in Jahagirdar that is figure 5. And in that diagram
`the top display is denoted 516. So 130 and 516 are the same
`thing. I just point that out for your convenience in reading
`Jahagirdar.
`And, in addition, there are other parts. For
`instance, in figure 8, the block diagram, the logical flow chart
`where it refers to the top display is the first display. So if I
`have this right -- I think I do -- 130, 516, and first display are
`all the same thing.
`All right. So what Dr. Horenstein said is, I have
`the phone here, it is closed as displayed on the right on slide
`31, and if the user presses button 150, that causes new visual
`information to show up on display area 130.
`And that's what Dr. Horenstein testified was
`activation. You press the button, it shows the visual
`information, and you have activated the top display. That is
`the visible indicator.
`Next slide, please. Global Touch for their part, in
`their arguments, they are focused on an embodiment where
`information is displayed automatically when the lid of the
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`
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`phone is shut. So you snap it closed, the lid of the phone, and
`then information is displayed right away on top of the phone.
`And Global Touch says, well, that's activation and
`once it is activated you can't activate it again by pressing the
`button because it is already activated. But they completely
`ignore in their Patent Owner response, and I guess we will
`hear today what they think about it, but they completely
`ignored the language that's highlighted in blue here on slide
`32, which is an alternative embodiment.
`There when the phone is closed it says:
`Alternatively, the status information may include little or no
`information, where display area 130 is cleared.
`So that means you close the phone, the display is
`still off, there is nothing on it, and then you press the button
`on the side of the phone and, kapow, it displays the visible
`information.
`And so that is, I think, without question, even
`under the claim construction that's being offered by the Patent
`Owners, that is activation of the top display when you press
`the button on the side.
`And I think as a very first pass, our contention is
`that there really is no reasonable claim construction of the
`activation, of the term activation, that would exclude the
`embodiment that is shown in blue on slide 31.
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
`
`
`
`JUDGE PETTIGREW: Is there anything in the
`specification of the patents at issue that defines what activate
`means or deactivate?
`MR. MURPHY: I wouldn't go so far as to say
`defines, but there is some insight you can get from the
`specifications. And just to be clear, I'm prepared to answer
`that question, but our position, Patent Owner's position is that
`the claim term doesn't need to be construed. If it were to be
`construed as Patent Owner suggests, which is turn on or turn
`off, activate/deactivate means turn on or turn off, I don't
`really think that changes anything because when the display is
`blank, and then you press the button and it starts displaying
`something, you have turned it on.
`So with that said, there are I think some helpful
`insights from the patent. I'm going to be referring to the '726
`patent in answering your question, Your Honor, but it is the
`same specification for all of the patents.
`The first observation I would make is the word
`"activate" is used quite loosely in these patents, and it is
`perhaps appropriate because the word activate is kind of a
`general concept. You know, something can be activated in
`just normal parlance in a variety of ways.
`So as a simple example, in the '726 patent -- let
`me just turn to the first one I see -- in column 3 of the '726
`patent on lines, roughly, 20 through 25, it talks about repeated
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`activations of a switch. And I will explain why this is
`significant but let me give you a second example on the same
`lines.
`
`Column 3, lines 40 through 43, it talks about
`repeated mechanical activations of the switch. And there are
`more examples of them using the word activate to mean
`actuate a switch.
`Dr. Morley testified that, well, actuate is what you
`would call it when you work a switch, when you physically
`work a switch, and activate is what it is called when the
`device actually turns on and off.
`But the patent is not so precise. The patent
`actually uses activate for a variety of terms, whether it is
`working the switch, whether it is activating a function of the
`device, not necessarily turning it on, like not pressing a power
`button, but actually just activating a function.
`I will give you an example of that. In column 4 of
`the '726 patent, line 34, there is a sentence that reads:
`According to a further embodiment of the invention, an
`intelligent flashlight having a microchip-controlled switch is
`provided comprising an input means -- that's a switch -- an
`input means for sending, activating, deactivating signals to
`the microchip, and a microchip for controlling the on/off
`function, and at least one other function of the flashlight.
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`
`
`So there they are using activating and deactivating
`to refer to the signal that's being sent to the chip, and then the
`chip gets to decide if it wants to turn something on or off. So
`the patent is using different language for an activating signal
`which could tell the microchip to do any number of things.
`It could tell the microchip to turn something on
`and off or it could tell the microchip to activate at least one
`other function of the flashlight.
`So at risk of beating a dead horse I will give you
`one more example. In column 10 of the '726 patent, starting
`around line 26, there is a sentence that starts: "Due to the
`unique."
`
`And it says: Due to the unique design of the
`microchips, as shown in figures 8A and 8B, after the device
`into which the microchip is incorporated is shut off, the
`microchip remains powered for an additional period of time
`which allows for said microchip to thus receive additional
`commands. For example, a second “on” activation within a
`given period after a first “ on” and “off” activation may be
`programmed into the microchip control reset means to indicate
`a power reduction or dimming function or any other function
`as desired by the designer of said device.
`So there it is using the word activate to mean we
`are turning a function on, even when the device itself has
`already been turned off.
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`Case IPR2015-01147; IPR2015-1148;
`IPR2015-1149; IPR2015-1150; and IPR2015-1151
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`
`
`So the lesson, I think, what I took away from
`looking into the question of what does the patent specification
`tell us about activation, is that
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