Filed on behalf of: Apple Inc., et al.
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`Entered: January 18, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`_______________________
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970 B2
`_______________________
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`Before JUSTIN BUSCH, LYNN E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges.
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`PETITIONERS’ NOTICE OF APPEAL
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`Entered: January 18, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`_______________________
`
`Case IPR2015-01173
`U.S. Patent No. 7,329,970 B2
`_______________________
`
`Before JUSTIN BUSCH, LYNN E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges.
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`
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`PETITIONERS’ NOTICE OF APPEAL
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioners
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`Apple Inc. and Motorola Mobility LLC (collectively, “Petitioner”) hereby appeal
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`to the United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision entered by the Patent Trial and Appeal Board (the “Board”) on November
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`16, 2016 (Paper 55) (the “Final Written Decision,” a copy of which is attached
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`hereto) and from all underlying orders, decisions, rulings, and opinions.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates
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`that the issue on appeal is the Board’s decision that preponderant evidence failed to
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`show that claim 52 of U.S. Patent No. 7,329,970 was obvious under 35 U.S.C.
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`§ 103 in light of prior art, along with all reasons, findings, opinions, and orders
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`leading thereto or underlying that decision, including, without limitation, the
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`impact of the invalidating obviousness combination of the Beard and Danielson
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`references and the Board’s application of law.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the Board, as well as with the Clerk of the United States Court of
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`Appeals for the Federal Circuit.
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`1
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`Respectfully submitted,
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
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`Counsel for Petitioner Apple Inc.
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`Phillip E. Morton (Reg. No. 57,835)
`Cooley LLP
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, D.C. 20004
`703.456.8668; 703.456.8100 (Fax)
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`Counsel for Petitioner Motorola
`Mobility LLC
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`2
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`Dated: January 18, 2017
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on this 18th day of January, 2017, in addition to being
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`filed electronically through the Patent Trial and Appeal Board’s Patent Review
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`Processing System (PRPS), the foregoing Petitioners’ Notice of Appeal was
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`delivered by hand to the Director of the United States Patent and Trademark
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`Office, at the following address pursuant to 37 C.F.R. § 104.2:
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`Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I further certify that, on this 18th day of January, 2017, a copy of the
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`foregoing Petitioners’ Notice of Appeal, along with the required docketing fee, was
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`submitted electronically through the United States Court of Appeals for the Federal
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`Circuit’s CM/ECF system.
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 18th day of January,
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`2017, a true and correct copy of the foregoing Petitioners’ Notice of Appeal was
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`served by electronic mail on upon the following counsel of record for Patent
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`Owner Global Touch Solutions, LLC:
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`Lead Counsel
`William H. Mandir (Reg. No. 32,156)
`wmandir@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
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`Backup Counsel
`Peter S. Park (Reg. No. 60,719)
`pspark@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
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`3
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`Washington, DC 20037
`Tel: (202) 663-7458
`Fax: (202) 293-7860
`Backup Counsel
`Brian K. Shelton (Reg. No. 50,245)
`bshelton@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7957
`Fax: (202) 293-7860
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`Washington, DC 20037
`Tel: (202) 857-3358
`Fax: (202) 293-7860
`Backup Counsel
`Fadi N. Kiblawi (Reg. No. 61,973)
`fkiblawi@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7386
`Fax: (202) 293-7860
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
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`Counsel for Petitioner Apple Inc.
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`4
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` Paper 55
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`Trials@uspto.gov
`571-272-7822 Entered: November 16, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner,
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01173
`Patent 7,329,970 B2
`____________
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`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
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`PETTIGREW, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Apple Inc., Motorola Mobility LLC, and Toshiba America Information
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`IPR2015-01173
`Patent 7,329,970 B2
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`Systems, Inc. (collectively, “Petitioner”) challenge the patentability of
`claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52 (“the challenged claims”) of
`U.S. Patent No. 7,329,970 B2 (Ex. 1001, “the ’970 patent”), owned by
`Global Touch Solutions, LLC (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has shown by a preponderance of the evidence that claims 1, 3–5, 10–14, 19,
`48, 49, and 51 of the ’970 patent are unpatentable, but has not shown by a
`preponderance of the evidence that claim 52 of the ’970 patent is
`unpatentable.
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`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1, 3–5, 10–
`14, 19, 48, 49, 51, and 52 of the ’970 patent. Paper 4 (“Pet.”). Patent Owner
`did not file a Preliminary Response. On November 17, 2015, we instituted
`an inter partes review of the challenged claims of the ’970 patent on all
`asserted grounds of unpatentability. Paper 13 (“Institution Decision” or
`“Dec.”). After institution, Patent Owner filed a Patent Owner Response,
`Paper 19 (“PO Resp.”), and Petitioner filed a Reply to the Patent Owner
`Response, Paper 25 (“Pet. Reply”). A consolidated oral hearing for this case
`and several others was held on August 3, 2016. A transcript of the hearing
`has been entered into the record. Paper 52 (“Tr.”).
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`B. Related Matters
`Petitioner identifies the following district court proceedings that may
`be affected by a decision in this proceeding: Global Touch Solutions, LLC v.
`Toshiba Corp., No. 3:15cv2746-JD (N.D. Cal.); Global Touch Solutions,
`LLC v. VIZIO, Inc., No. 3:15cv2747-JD (N.D. Cal.); Global Touch
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`2
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`Patent 7,329,970 B2
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`Solutions, LLC v. Apple Inc., No. 3:15cv2748-JD (N.D. Cal.); Global Touch
`Solutions, LLC v. Motorola Mobility LLC, No. 3:15cv2749-JD (N.D. Cal.);
`Global Touch Solutions, LLC v. Microsoft Corp., No. 3:15cv2750-JD (N.D.
`Cal.). Paper 8, 1–2. Petitioner also has filed petitions for inter partes
`review of related U.S. Patent Nos. 7,994,726 B2 (IPR2015-01171),
`7,498,749 B2 (IPR2015-01172), 7,781,980 B2 (IPR2015-01174), and
`8,288,952 B2 (IPR2015-01175). Id. at 2–3. The parties also identify as a
`related matter IPR2015-01149, which is a petition for inter partes review of
`the ’970 patent filed by a different petitioner. Paper 7, 2; Paper 8, 2.
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`C. The ’970 Patent
`The ’970 patent is directed to portable electronic devices that operate
`on exhaustible power sources such as batteries. Ex. 1001, Abstract. The
`’970 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 3:41–46. The ’970 patent also describes an embodiment in which a
`visible indicator such as a light emitting diode (LED) may be provided to
`indicate the condition of the battery. Id. at 9:47–55, Fig. 11.
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`D. Illustrative Claims
`Among the challenged claims, only claims 1 and 52 are independent.
`Claims 1 and 52 read:
`1. An electronic module for use with a product
`comprising an energy consuming load and a power source or a
`connection to a power source, said module comprising a
`microchip, and a switch;
`said switch being a user interface and does not form a
`serial link in a circuit that transfers power from the power
`source to power the load, and said microchip controlling a
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`Patent 7,329,970 B2
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`luminous visible location indicator that is not the load
`according to at least one configuration selected from the
`following group:
`a) wherein the visible indicator at least indicates a
`condition of the product upon receiving a signal from the user
`interface switch, and wherein the switch is a touch sensor type
`switch;
`b) wherein the visible indicator is activated at least to
`indicate an activation signal from the switch when the load is
`not activated; and
`c) wherein the visible indicator is also used to indicate a
`power level of the power source when the load is switched off
`and the product is not connected to a mains supply.
`52. A method of operating a product which includes a
`visible luminous indicator, an energy consuming load and a
`power source for powering the load, the method including the
`steps of operating a user interface switch, that is a touch sensor
`type switch which is not a serial link in a circuit from the power
`source to the load to power the load, to control the operation of
`a microchip, using the microchip to control the connection of
`the power source to the load and the activation of the indicator,
`and to activate the indicator to show at least one of the
`following when the load is not activated: a condition of the
`product, an activation of the switch, and a power level of the
`power source.
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`Id. at 13:60–14:13, 16:31–42.
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`Patent 7,329,970 B2
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`E. Grounds of Unpatentability Instituted for Trial
`We instituted an inter partes review of claims 1, 3–5, 10–14, 19, 48,
`49, 51, and 52 of the ’970 patent on the following grounds of
`unpatentability:
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`References
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`Basis
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`Beard1 and Rathmann2
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`35 U.S.C. § 103(a)
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`Challenged Claims
`1, 3, 5, 10–12, 14, 19,
`48, and 49
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`Beard, Rathmann, and
`Danielson3
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`Dec. 13–14.
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`35 U.S.C. § 103(a)
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`4, 13, 51, and 52
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`II. DISCUSSION
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`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); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding
`that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office”).
`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.
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`
`1 U.S. Patent No. 5,898,290, issued Apr. 27, 1999 (Ex. 1005, “Beard”).
`2 U.S. Patent No. 5,955,869, issued Sept. 21, 1999 (Ex. 1006, “Rathmann”).
`3 U.S. Patent No. 5,710,728, issued Jan. 20, 1998 (Ex. 1007, “Danielson”).
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`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).
`In the Institution Decision, we adopted Petitioner’s proposed
`construction of “mains” as encompassing “the power source provided by a
`main distribution network, such as a utility.” Dec. 5 (citing Pet. 10). Patent
`Owner does not challenge this construction or explicitly propose a
`construction for any other claim term. After considering the complete
`record, we maintain our earlier construction of “mains” for this Final
`Written Decision. To the extent it is necessary for us to construe any
`additional claim terms in this decision, we do so below in the context of
`analyzing whether the prior art renders the claims unpatentable.
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`B. Obviousness over Beard and Rathmann
`Claims 1, 3, 5, 10–12, 14, 19, 48, and 49
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`Petitioner contends that claims 1, 3, 5, 10–12, 14, 19, 48, and 49 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Beard and
`Rathmann. Pet. 19–24, 28–46. Relying in part on the testimony of Mr.
`Beard, Petitioner explains how the combination of Beard and Rathmann
`allegedly teaches all the claim limitations and contends a person having
`ordinary skill in the art would have been motivated to combine the teachings
`of the references. Id. (citing Ex. 1003).
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`1. Beard
`Beard describes an intelligent battery pack with a microcontroller and
`battery indicators for use with a portable electronic device. Ex. 1005, 1:18–
`21; see Ex. 1003 ¶ 72. The microcontroller responds to a touch-sensing
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`circuit that detects changes in impedance or capacitance when an operator
`touches a pair of contacts. Ex. 1005, 7:41–52, 11:12–16; see Ex. 1003 ¶ 72.
`Figure 11 of Beard is reproduced below.
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`
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`Figure 11 depicts battery pack 201, which provides an operator with an
`indication of battery capacity whether or not it is inserted into portable
`electronic device 203. Ex. 1005, 11:10–13. When fully inserted, battery
`pack contacts 241, 243, and 245 engage corresponding portable device
`contacts 251, 253, and 255, and, if sufficient power is available, device 203
`may enter a fully operational state when the operator desires. Id. at 11:67–
`12:4.
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`2. Rathmann
`Rathmann describes a “smart battery for use in an intelligent device
`having power management capabilities.” Ex. 1006, 1:12–16, 1:65–3:30.
`The battery pack in Rathmann includes a microcontroller, a battery-power
`indicator comprising LEDs, and a user-interface switch. Id. at 1:65–2:2,
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`3:1–7, 16:24–36, Fig. 3 (microprocessor 50, LEDs 34, and manual switch
`35). In response to a signal from the battery pack’s user interface, four
`LEDs illuminate sequentially to indicate remaining battery charge. Id. at
`16:24–36; see Ex. 1003 ¶ 91. Rathmann provides detailed instructions on
`how the microprocessor implements illumination of the correct number of
`LEDs based on battery charge. Ex. 1006, 58:31–59:32, Fig. 34; see Ex.
`1003 ¶¶ 92–93.
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`3. Claim 1
`Petitioner asserts that the combination of Beard and Rathmann teaches
`all of the limitations of independent claim 1. Pet. 28–39. First, Petitioner
`contends that Beard describes the recited “electronic module” (Beard’s
`intelligent battery pack 201) “for use with a product” (electronic device 203)
`that comprises an “energy consuming load” (any of the energy consuming
`components in device 203) and a “connection to a power source” (contacts
`251, 253, and 255 engaging corresponding contacts 241, 243, and 245 of
`battery pack 201). Id. at 28–30. Petitioner also contends that Beard’s
`battery pack 201 comprises a “microchip” (in the form of control circuit
`223) and a “switch” (touch sensing circuitry 221 and touch contacts 211 and
`213). Id. at 30. Further, Petitioner contends that Beard’s touch sensor
`switch is a “user interface” comprised of touch sensing circuitry 221 and
`contacts 211 and 213, which a user touches to initiate the display of battery
`capacity. Id. at 30–31 (citing Ex. 1005, 11:12–22; Ex. 1003 ¶¶ 135–38). In
`addition, Petitioner contends that the switch “does not form a serial link in a
`circuit that transfers power from the power source to power the load,” as
`recited in claim 1, because Beard’s touch sensing circuitry is not part of the
`circuit that transfers power between batteries 231 and the load in device 203
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`via battery contacts 241 and 243 and device contacts 251 and 253. Id. at 31–
`32 (citing Ex. 1005, 11:63–65; Ex. 1003 ¶¶ 139–40). We agree with and
`adopt Petitioner’s contentions regarding Beard’s disclosure of these
`limitations as set forth in the Petition.
`Petitioner further contends that Beard and Rathmann teach “said
`microchip controlling a luminous visible location indicator that is not the
`load,” as recited in claim 1. Id. at 32–35. In one embodiment, Beard
`discloses LEDs that illuminate sequentially to show remaining battery
`capacity. Ex. 1005, 6:67–7:5, Figs. 5–6. According to Petitioner and its
`expert, a person of ordinary skill in the art would have viewed Beard’s LEDs
`as indicating the location of the device containing the LEDs as well as
`battery capacity. Pet. 32 (citing Ex. 1003 ¶ 142). Petitioner also argues that
`Beard’s LED indicator is not the load, because Beard teaches the LED
`display on the battery pack is separate and distinct from the energy
`consuming parts of the device and can be activated before insertion of the
`battery pack into the device. Id. at 32–33 (citing Ex. 1005, 6:45–7:3).
`Further, Petitioner asserts that Beard’s microchip controls the visible
`indicator (LEDs). Id. at 33 (citing Ex. 1005, 7:59–63).
`In a second embodiment, shown in Figures 8–11 of Beard and relied
`on by Petitioner for teaching other claim limitations, the microchip controls
`a liquid crystal display (LCD) indicator rather than an LED indicator.
`Ex. 1005, Figs. 8–11. Like the LED indicator, Petitioner contends the LCD
`indicator cannot be the load because it may be activated regardless of
`whether the battery pack has been inserted into the electronic device.
`Pet. 33–34 (citing Ex. 1005, 11:10–12; Ex. 1003 ¶ 147). According to
`Petitioner, a person of ordinary skill in the art would have been motivated to
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`combine the LED indicator (a “luminous visible location indicator”) of
`Beard’s first embodiment with the functionality disclosed in the second
`embodiment because use of an LED instead of an LCD is a predictable,
`expected variation. Id. at 34 (citing Ex. 1003 ¶ 148). Moreover, Petitioner
`contends, a person of ordinary skill in the art would have looked to
`Rathmann for additional details about how the microchip (Beard’s control
`circuitry) controls the luminous visible location indicator. Id. at 34–35
`(citing Ex. 1006, 16:24–29, 58:31–59:32, Fig. 34; Ex. 1003 ¶¶ 91–93, 149–
`50). We agree with and adopt Petitioner’s contentions regarding the
`disclosures of the recited luminous visible location indicator in Beard and
`Rathmann. See Pet. 32–35. We also agree with and adopt Petitioner’s
`reasoning for why a person of ordinary skill in the art would have combined
`the two embodiments of Beard and combined Beard with Rathmann. See id.
`at 24–27, 34–35.
`Patent Owner argues that Beard’s LED indicator is not a “luminous
`visible location indicator” because the location of Beard’s battery pack must
`be known before a user can touch the contacts to illuminate the indicator.
`PO Resp. 13, 16. In Patent Owner’s view, “[t]he nature of indicating a
`location is an indication, at least in part, of a thing unknown and not in
`contact with the operator.” Id. at 16 (citing Ex. 2003 ¶ 69 (Declaration of
`Dr. Robert E. Morley)). Thus, Patent Owner contends that Beard’s LED
`indicator does not indicate location because it is activated only after a user
`contacts the touch sensor, and therefore the location is already known. Id.
`We agree with Petitioner that Patent Owner’s argument relies on an
`interpretation of “location indicator” that is contradicted by the claims and
`the disclosure of the ’970 patent. See Pet. Reply 5–8. As will be discussed
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`below, claim 1 requires the luminous visible location indicator to be
`configured according to one of three options. Ex. 1001, 13:67–14:13. In the
`first option, the indicator “indicates a condition of the product upon
`receiving a signal from the user interface switch [which] is a touch sensor
`type switch.” Id. at 14:3–6. Thus, rather than barring activation of the
`location indicator by a touch sensor, as Patent Owner contends, claim 1
`expressly recites that the location indicator may be activated upon receiving
`a signal from a touch sensor. See Pet. Reply 7. As Petitioner points out, this
`is exactly what Beard discloses—a luminous indicator that is activated by a
`touch sensor and indicates location and a condition of the product, e.g.,
`battery charge status. See id.; Pet. 32–34.
`Similarly, in the written description of the ’970 patent, the only
`express disclosure of a location indicator is in the embodiment shown in
`Figure 11. See Pet. Reply 7–8. That embodiment includes an LED indicator
`that can indicate a condition of a battery, for example, and “may also be
`suitable to assist in locating a device, e.g. but not limited to a flashlight, in
`the dark.” Ex. 1001, 9:48–55. The LED indicator is activated when a user
`closes a switch, which, as Petitioner asserts, could be a touch sensor. Id. at
`9:56–57; see Pet. Reply 7–8. Again, this is what Beard describes—an LED
`indicator that is activated by closing a switch, e.g., by contacting a touch
`sensor. See Pet. 32–34; Pet. Reply 8.
`Finally, claim 1 recites that the microchip controls the luminous
`visible location indicator according to at least one of three specific
`configurations (a)–(c); Petitioner contends that Beard discloses all three. Id.
`at 35–39. First, Petitioner asserts that Beard discloses a visible indicator that
`“indicates a condition of the product upon receiving a signal from the user
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`interface switch [which] is a touch sensor type switch” (configuration (a))
`because Beard’s LED display indicates the condition of the product’s battery
`charge in response to a signal from Beard’s touch sensor switch, activated by
`a user. Id. at 35–36 (citing Ex. 1005, 6:63–7:5, 11:17–19). Second,
`Petitioner asserts that Beard discloses a visible indicator that “is activated at
`least to indicate an activation signal from the switch when the load is not
`activated” (configuration (b)) because Beard’s battery charge status indicator
`may be activated when the battery pack is not inserted into the electronic
`device and may use previously monitored load characteristics stored in
`memory rather than obtaining these characteristics from the device itself. Id.
`at 36–37 (citing Ex. 1005, 11:10–12, 11:23–30). Finally, Petitioner
`contends that Beard’s visible indicator is “used to indicate a power level of
`the power source when the load is switched off and the product is not
`connected to a mains supply” (configuration (c)) because Beard’s battery
`pack displays status charge information using previously monitored load
`characteristics that are stored in memory, rather than obtaining the
`characteristics from device 203 when it is powered on or in use, and Beard’s
`devices are not mains-powered. Id. at 38–39 (citing Ex. 1005, 11:23–30;
`Ex. 1003 ¶¶ 165–67, 170–71). We agree with and adopt Petitioner’s
`contentions regarding the visible indicator configurations recited in claim 1.
`For the foregoing reasons, we conclude that Petitioner has shown by a
`preponderance of the evidence that claim 1 would have been obvious over
`the combination of Beard and Rathmann.
`
`4. Claims 3, 5, 10, 11, 14, 48, and 49
`Claims 3, 5, 10, 11, 14, 48, and 49 all depend directly or indirectly
`from claim 1. Patent Owner does not present any arguments with respect to
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`these claims other than those already discussed with respect to claim 1. See
`PO Resp. 7–24. We agree with and adopt Petitioner’s contentions as to how
`Beard and Rathmann teach the limitations of these claims. See Pet. 39–46.
`Accordingly, we conclude that Petitioner has shown by a preponderance of
`the evidence that claims 3, 5, 10, 11, 14, 48, and 49 would have been
`obvious over the combination of Beard and Rathmann.
`
`5. Claims 12 and 19
`Claim 12 depends indirectly from claim 1 and, by virtue of a
`dependency from claim 3, requires a user interface that comprises at least a
`touch sensor switch and requires selection of configuration (b) in claim 1, in
`which the visible indicator is activated at least to indicate an activation
`signal from the switch. Claim 19 depends directly from claim 1 and also
`requires selection of configuration (b). Claim 12 further recites “a
`f[u]nction, selected by a user interface activation signal is automatically shut
`off after a predetermined period of time.” Ex. 1001, 14:43–45. Similarly,
`claim 19 further requires the microchip, “upon receiving a switch activation
`signal from a touch sensor,” to control “at least the activation of a function
`that automatically shuts off a period after such activation.” Id. at 14:64–67.
`Petitioner asserts that Beard discloses two functions, each of which
`satisfies the recited “function” in each of claims 12 and 19. Pet. 42–44.
`Specifically, Petitioner relies on two functions performed by Beard’s battery
`pack: (1) calculation and display of remaining battery capacity, and
`(2) calculation and display of a remaining time estimate. Id. (citing
`Ex. 1005, 6:67–7:5, 10:37–40; Ex. 1003 ¶¶ 192, 203); Pet. Reply 10.
`According to Petitioner, both of these functions are selected by an activation
`signal from the touch sensor and are automatically deactivated ten seconds
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`later. Pet. 43–44 (citing Ex. 1005, 6:63–7:5, 10:48–56, 11:12–22; Ex. 1003
`¶¶ 193, 195, 202, 204).
`Patent Owner argues that the “function” of claims 12 and 19 cannot be
`interpreted to be the same as activation of the luminous visible location
`indicator of claim 1. PO Resp. 22. We are not persuaded by Patent Owner’s
`argument. Instead, we agree with Petitioner that “function” is a broad term
`that encompasses any kind of function, while activating a visible indicator is
`a specific type of function. See Pet. Reply 12–13. Patent Owner’s expert,
`Dr. Morley, agrees that activation of a visible indicator to indicate a battery
`condition is an example of a “function” in the context of Patent Owner’s
`patents. Ex. 1036, 118:21–119:3; see Pet. Reply 13. Moreover, the written
`description of the ’970 patent uses the term “function” broadly and identifies
`“battery strength monitoring” as but one example of a function. Ex. 1001,
`1:31–33, 8:54–59.
`Along the same lines, Patent Owner argues that the “user interface
`activation signal” of claim 12 and the “switch activation signal” of claim 19
`cannot refer back to the same “activation signal” for activating the luminous
`visible location indicator recited in claim 1. PO Resp. 22. Again, we are not
`persuaded. We agree with Petitioner that “activation signal” in claim 1 is a
`broad term that encompasses a signal from a user interface or from some
`other component. See Pet. Reply 14. A “user interface activation signal” is
`a specific type of “activation signal,” and a “switch activation signal” is a
`specific type of “user interface activation signal,” i.e., one that comes from a
`switch component of the user interface. See id.
`For these reasons, we agree with Petitioner that Patent Owner’s
`attempt to narrow the claim term “function” to exclude activation of a
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`visible indicator is contrary to the claim language, the written description of
`the ’970 patent, and the testimony of Patent Owner’s own expert. Thus,
`Beard’s battery capacity display can be the visible indicator recited in
`claim 1 and also the “function” recited in each of claims 12 and 19.
`Similarly, the activation signal received from the touch sensor switch to
`activate the battery capacity display in Beard can be the “activation signal”
`of claim 1 as well as the “user interface activation signal” of claim 12 and
`the “switch activation signal” of claim 19.
`Moreover, even under Patent Owner’s view that the “function” in
`claims 12 and 19 must be different from activation of the visible indicator in
`claim 1, which is met by Beard’s calculation and display of battery capacity,
`Petitioner contends that Beard discloses a second function that satisfies the
`“function” of claims 12 and 19—calculation and display of a remaining time
`estimate. Pet. 42–44; Pet. Reply 10. We agree. Specifically, Beard
`discloses that the function of calculating and displaying battery charge status
`is activated in response to an activation signal of a touch sensor. See, e.g.,
`Ex. 1005, Fig. 9, 10:48–50 (“[T]he battery pack 155 utilizes a single touch
`contact 155 to initiate the delivery of charge status to an LCD display 157
`for viewing.”). Beard also discloses that calculating and displaying charge
`status may include calculating and displaying both (1) available capacity and
`(2) projected remaining time estimates of battery life. Id. at 10:37–40
`(“FIG. 9 is a perspective view illustrating a further embodiment of the
`battery pack of FIG. 8 which includes an LCD (Liquid Crystal Display)
`screen that is used to display both available capacity and remaining time
`estimates.”). Beard further discloses that the charge status information in
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`Figure 9 automatically deactivates after ten seconds. See, e.g., id. at 10:51–
`56.
`
`Patent Owner contends that calculation and display of battery capacity
`and calculation and display of a remaining time estimate are not separate
`functions. PO Resp. 21. Petitioner, however, points to deposition testimony
`in which Patent Owner’s expert agrees that these two features are different
`“functions.” Pet. Reply 10–11 (citing Ex. 1036, 126:16–22). This
`conclusion is consistent with Beard’s description of calculating and
`displaying battery capacity as a feature different from calculating and
`displaying a remaining time estimate. Ex. 1005, Abstract, 10:37–45, 11:45–
`48, 12:59–65. For example, Beard states that instead of—or in addition to—
`displaying the percentage of available battery capacity, the control circuitry
`interacts with the display to deliver the time estimates to the operator. Id. at
`11:45–48. Beard’s disclosure that battery capacity can be calculated and
`displayed instead of time estimates evidences that calculation and display of
`battery capacity and calculation and display of remaining time estimates are
`different functions. Thus, even under Patent Owner’s proposed construction
`of “function” as something different from activation of the visible indicator,
`Beard teaches the limitations of claims 12 and 19.
`For these reasons, we conclude that Petitioner has shown by a
`preponderance of the evidence that claims 12 and 19 would have been
`obvious over the combination of Beard and Rathmann.
`
`C. Obviousness over Beard, Rathmann, and Danielson
`Claims 4, 13, 51, and 52
`
`Petitioner contends that claims 4, 13, 51, and 52 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Beard, Rathmann, and Danielson.
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`Pet. 24–27, 46–58. Relying on the testimony of Mr. Beard, Petitioner
`explains how the combination of Beard, Rathmann, and Danielson allegedly
`teaches all the claim limitations and contends a person having ordinary skill
`in the art would have been motivated to combine the teachings of the
`references. Id. (citing Ex. 1003).
`
`1. Danielson
`Mr. Beard is a named inventor on the Danielson patent, and Danielson
`and Beard have a common assignee. Ex. 1007. Danielson describes a
`portable data collection terminal system that may be powered by the
`intelligent battery pack disclosed in Beard. Id. at Abstract, Fig. 2.
`Danielson describes various aspects of such terminal devices, including
`embodiments that have radio frequency circuitry, a keyboard, or an on/off
`switch. Ex. 1007, 8:55–57, 11:51–53; see Ex. 1003 ¶ 98.
`
`2. Claims 4, 13, and 51
`Claims 4, 13, and 51 depend directly or indirectly from claim 1.
`Petitio
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