Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: November 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01151
`Patent 8,288,952 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`
`Microsoft Corp. and Microsoft Mobile, Inc. (collectively,
`
`“Petitioner”) filed a Petition for inter partes review of claims 1–4, 14, 16,
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION AND MICROSOFT MOBILE, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01151
`Patent 8,288,952 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`
`Microsoft Corp. and Microsoft Mobile, Inc. (collectively,
`
`“Petitioner”) filed a Petition for inter partes review of claims 1–4, 14, 16,
`
`
`
`IPR2015-01151
`Patent 8,288,952 B2
`
`17, 19, 22–24, 26, 27, and 38–40 (“the challenged claims”) of U.S. Patent
`
`No. 8,288,952 B2 (Ex. 1001, “the ’952 patent”). Paper 2 (“Pet.”). Global
`
`Touch Solutions, LLC (“Patent Owner”) did not file a Preliminary
`
`Response. Institution of an inter partes review is authorized by statute when
`
`“the information presented in the petition . . . and any response . . . shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition, we
`
`conclude the information presented shows there is a reasonable likelihood
`
`that Petitioner would prevail in establishing the unpatentability of the
`
`challenged claims.
`
`A. Related Matters
`
`The parties identify the following district court proceedings as related
`
`matters: Global Touch Solutions, LLC v. Microsoft Corp., Case No. 3:15-
`
`cv-2750 (N.D. Cal.); Global Touch Solutions, LLC v. Toshiba Corp., Case
`
`No. 3:15-cv-2746 (N.D. Cal.); Global Touch Solutions, LLC v. VIZIO Inc.,
`
`Case No. 3:15-cv-2747 (N.D. Cal.); Global Touch Solutions, LLC v. Apple
`
`Inc., Case No. 3:15-cv-2748 (N.D. Cal.); and Global Touch Solutions, LLC
`
`v. Motorola Mobility, LLC, Case No. 3:15-cv-2749 (N.D. Cal.). Pet. 3–4;
`
`Paper 4, 2; Paper 7, 3. Petitioner also indicates it has filed petitions for inter
`
`partes review of seven related patents: U.S. Patent Nos. 8,035,623
`
`(IPR2015-01023), 7,772,781 (IPR2015-01024), 7,265,494 (IPR2015-
`
`01025), 7,994,726 (IPR2015-01147), 7,498,749 (IPR2015-01148),
`
`7,329,970 (IPR2015-01149), and 7,781,980 (IPR2015-01150). Pet. 4. The
`
`parties also identify IPR2015-01175, which is a petition for inter partes
`
`review of the ’952 patent filed by a different petitioner. Id. at 4; Paper 4, 2.
`
`2
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`
`
`IPR2015-01151
`Patent 8,288,952 B2
`
`B. The ’952 Patent
`
`The ’952 patent is directed to portable electronic devices operating on
`
`exhaustible power sources, such as batteries. Ex. 1001, Abstract. The ’952
`
`patent describes using a microchip-controlled switch that manages both
`
`current-conducting and user-interface functions in an electronic device, such
`
`as a flashlight, without the switch itself conducting current to the load. Id. at
`
`3:61–66. A visible indicator, such as a light emitting diode (LED), can be
`
`used to indicate the condition of the battery and/or help a user find the
`
`device in the dark. Id. at 9:46–54, 9:58–63, Fig. 11.
`
`C. Illustrative Claim
`
`Among the challenged claims, claims 1 and 26 are independent.
`
`Claim 1 is illustrative and reproduced below:
`
`1. A method for implementing a user interface of a
`product, the product comprising a power source, or a
`connection for a power source and at least one energy
`consuming load, said method including the step of using an
`electronic module comprising an electronic circuit including a
`microchip and a touch sensor forming part of the user interface,
`said microchip at least partially implementing the touch sensor
`functions and said method including the step of activating a
`visible indication in response to an activation signal received
`from the user interface, wherein the visible indication provides
`information to a user on at least one item from the following
`group:
`
`a state or condition of the product,
`
`location of the user interface,
`
`a battery power level indication.
`
`Id. at 12:27–41.
`
`3
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`IPR2015-01151
`Patent 8,288,952 B2
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`D. Asserted Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable as
`
`obvious under 35 U.S.C. § 103(a) in view of Jahagirdar1 and Schultz.2
`
`Pet. 24–60. In its analysis, Petitioner relies on the declaration testimony of
`
`Mr. Mark N. Horenstein, Ph.D. See Ex. 1014.
`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`
`Consistent with the broadest reasonable construction, claim terms are
`
`presumed to have their ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art in the context of the entire patent
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). An inventor may provide a meaning for a term that is different from
`
`its ordinary meaning by defining the term in the specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`Petitioner proposes a construction for “touch sensor functions” and
`
`“touch sensing functions.” Pet. 11–13. Petitioner also argues certain terms
`
`have ambiguous antecedent basis. We do not find it necessary to explicitly
`
`construe any terms for purposes of this decision.
`
`
`
`1 U.S. Patent 6,125,286, issued Sept. 26, 2000 (Ex. 1004, “Jahagirdar”).
`2 U.S. Patent 4,053,789, issued Oct. 11, 1977 (Ex. 1005, “Schultz”).
`
`4
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`IPR2015-01151
`Patent 8,288,952 B2
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`B. Asserted Obviousness Challenge
`
`Petitioner contends the challenged claims are unpatentable under
`
`35 U.S.C. § 103(a) as obvious in view of Jahagirdar and Schultz. Pet. 24–
`
`60. Relying on the testimony of Mr. Horenstein, Petitioner explains how
`
`Jahagirdar and Schultz allegedly teach all the claim limitations, and argues a
`
`person of ordinary skill in the art would have combined Jahagirdar with
`
`Schultz. Id. (citing Ex. 1014).
`
`1. Jahagirdar
`
`Jahagirdar describes a mobile phone that has a microchip-controlled
`
`user interface and mechanical push-button switches. Ex. 1004, 3:59–67;
`
`Ex. 1014 ¶ 33. Figures 1 and 2 of Jahagirdar (with Petitioner’s annotations)
`
`are reproduced below:
`
`Pet. 25. Figures 1 and 2 are illustrations of a mobile station having a first
`
`display area and a second display area. Ex. 1004, 1:38–40, 3:33, 4:28–29.
`
`
`
`
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`5
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`
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`IPR2015-01151
`Patent 8,288,952 B2
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`Figure 5 of Jahagirdar (with Petitioner’s annotations) is reproduced below:
`
`Pet. 26. Figure 5 is a schematic block diagram of electrical circuitry 500 of
`
`
`
`mobile station 102. Ex. 1004, 1:46–47.
`
`2. Schultz
`
`Schultz describes “a reliable touch actuated system . . . responsive to
`
`the touch of an animal . . . [such as] human beings, pets and domestic
`
`animals.” Ex. 1005, 1:27–31. Schultz discloses touch responsive area 67.
`
`Id. at 4:47–48; Ex. 1014 ¶ 40.
`
`3. Analysis of Obviousness Challenge of the Challenged Claims
`
`Petitioner asserts that the combination of Jahagirdar and Schultz
`
`teaches all of the limitations of independent claim 1. Pet. 24–36. Petitioner
`
`contends that Jahagirdar teaches a user interface of a product (mobile phone
`
`6
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`
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`IPR2015-01151
`Patent 8,288,952 B2
`
`102 including plurality of keys 144), a power source (battery 128), and at
`
`least one energy consuming load (display 520). Id. at 25 (citing Ex. 1004,
`
`3:29–33, 4:27–30, Figs. 1, 2, 5; Ex. 1014 ¶¶ 51–53).
`
`Pointing to Figure 5 of Jahagirdar, Petitioner argues Jahagirdar’s
`
`electrical circuitry 500, which includes display components 506, key circuit
`
`513, keys 144, and controller 504, teaches the recited electronic module
`
`comprising an electronic circuit including a microchip (controller 504) and a
`
`user interface. Pet. 27. Petitioner asserts Jahagirdar further teaches that the
`
`controller at least partially implements the functions performed by keys 144,
`
`but concedes that Jahagirdar does not teach that any of keys 144 include “a
`
`touch sensor forming part of the user interface.” Id. 27–28. Petitioner
`
`contends, however, that touch sensors were well known in the art by 1998,
`
`as evidenced by Schultz’s disclosure of a touch sensor (touch responsive
`
`area 67). Id. at 29–30. Petitioner argues that one of skill in the art would
`
`have incorporated Schultz’s touch sensors into Jahagirdar’s keys, in a way
`
`that controller 504 would have implemented activities performed by the
`
`touch sensors, “(1) to minimize accidental actuation; (2) to eliminate the
`
`problems of contamination and mechanical failures associated with switches
`
`having moving parts; and (3) to enhance convenience and aesthetics for the
`
`user.” Id. at 28, 30 (citing Ex. 1014 ¶ 63); id. at 30–34.
`
`Petitioner further contends that Jahagirdar teaches the activating a
`
`visible indication step recited in claim 1. In particular, Petitioner argues
`
`Jahagirdar discloses that, when “controller 504 detects an actuation of key
`
`150 (step 814), controller 504 sends display data to driver 514, which sends
`
`display data to display element 516.” Pet. 35 (quoting Ex. 1004, 54–57;
`
`Ex. 1014 ¶ 74). Petitioner further asserts that the visual information displays
`
`7
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`
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`IPR2015-01151
`Patent 8,288,952 B2
`
`information of the type recited in claim 1 and points to the portion of
`
`Jahagirdar that explains the information displayed may include “status
`
`information [and/or] date and time information, battery status information
`
`such as a battery level indication and/or a low battery warning indication,
`
`communication status information such as an ‘in use’ indication and/or a
`
`roam indication, or any combinations of the above.” Ex. 1004, 5:57–64;
`
`Pet. 35–36.
`
`Claim 26 recites an electronic module with the same components as
`
`the electronic module “used” in claim 1 and further recites that the electronic
`
`module is configured to activate the visible indicator (the second step recited
`
`in claim 1). Ex. 1001, 13:64–14:10. For similar reasons argued with respect
`
`to claim 1, Petitioner argues each limitation recited in claim 26 is taught by
`
`the combination of Jahagirdar and Schultz. Pet. 44–55.
`
`Petitioner also contends that the combination of Jahagirdar and
`
`Schultz teaches all of the limitations of dependent claims 2–4, 14, 16, 17, 19,
`
`22–24, 26, 27, and 38–40. See id. at 36–44, 55–57. As support, Petitioner
`
`provides detailed explanations as to how the combination of Jahagirdar and
`
`Schultz meets each claim limitation, as well as reasons why one with
`
`ordinary skill in the art would have combined the disclosures of the
`
`references. Id. For example, with respect to claims 2 and 22, Petitioner
`
`maps the disclosure in Jahagirdar of controller 504 activating backlight 522
`
`upon detection of actuation of key 146 to activating a function or mode in
`
`response to activation signals received from the user interface. Id. at 36, 43.
`
`Additionally, Petitioner maps Jahagirdar’s disclosure that display element
`
`516 and backlight 522 are automatically deactivated after a certain period of
`
`time to the additional steps requiring deactivation of the visible indication or
`
`8
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`
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`IPR2015-01151
`Patent 8,288,952 B2
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`other functions, which are recited in claims 3, 23, and 24. Id. at 36–37, 43–
`
`44.
`
`We have reviewed Petitioner’s arguments with respect to each of the
`
`challenged claims. Upon consideration of Petitioner’s explanations and
`
`supporting evidence, we are persuaded by Petitioner’s contentions. On the
`
`present record, Petitioner has shown sufficiently that the combination of
`
`Jahagirdar and Schultz teaches the limitations recited in the challenged
`
`claims, and Petitioner has articulated sufficient reasoning with rational
`
`underpinning for combining Jahagirdar and Schultz. Accordingly, the
`
`information presented shows a reasonable likelihood that Petitioner would
`
`prevail in establishing that the challenged claims would have been rendered
`
`obvious by the combination of Jahagirdar and Schultz.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented establishes a reasonable likelihood that Petitioner would prevail in
`
`showing that the challenged claims are unpatentable. At this preliminary
`
`stage, the Board has not made a final determination with respect to the
`
`patentability of the challenged claims or any underlying factual and legal
`
`issues.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`
`
`
`
`review is instituted as to claims 1–4, 14, 16, 17, 19, 22–24, 26, 27, and 38–
`
`40 of the ’952 patent under 35 U.S.C. § 103(a) as obvious over Jahagirdar
`
`and Schultz; and
`
`9
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`
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`IPR2015-01151
`Patent 8,288,952 B2
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`
`commences on the entry date of this decision.
`
`
`
`
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`10
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`IPR2015-01151
`Patent 8,288,952 B2
`
`
`
`FOR PETITIONER:
`
`Daniel Goettle
`dgoettle@bakerlaw.com
`
`John Murphy
`johnmurphy@bakerlaw.com
`
`Sarah Dukmen
`MSFT-GT@bakerlaw.com
`
`FOR PATENT OWNER:
`
`William Mandir
`wmandir@sughrue.com
`
`Peter Park
`pspark@sughrue.com
`
`Brian K. Shelton
`bshelton@sughrue.com
`
`Fadi N. Kiblawi
`fkiblawi@sughrue.com
`
`
`11
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