Petition for Inter Partes Review of USP 7,329,970
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Review of:
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`U.S. Patent No. 7,329,970
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`Issued: Feb. 12, 2008
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`Application No.: 11/480,868
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`Filing Date: July 6, 2006
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`For: Touch Sensor And Location Indicator Circuits
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`FILED VIA PRPS
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,329,970
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`For ease of reference, Petitioners refer to this petition as “’970 Petition” challeng-
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`ing claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52.
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`Table of Contents
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`Petition for Inter Partes Review of USP 7,329,970
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW .......... 1
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`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 1
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`B.
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`C.
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`Notice of Lead and Backup Counsel and Service Information ............. 1
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`Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) .................. 3
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`D. Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) .............................. 3
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`E.
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`F.
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`Fee for Inter Partes Review .................................................................. 4
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`Proof of Service ..................................................................................... 4
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`III.
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`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) ................................................................................................... 4
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`IV. DESCRIPTION OF THE PURPORTED INVENTION ................................. 4
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`V.
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`CLAIM CONSTRUCTION ............................................................................ 7
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`A. Applicable Law ..................................................................................... 7
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`B.
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`Construction of Claim Terms ................................................................ 8
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`VI. PERSON HAVING ORDINARY SKILL IN THE ART ............................. 10
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`VII. THE PRIOR ART .......................................................................................... 11
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`A.
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`B.
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`C.
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`Beard (Ex. 1005) ................................................................................. 11
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`Rathmann (Ex. 1006) .......................................................................... 14
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`Danielson (Ex. 1007) ........................................................................... 17
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`VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES ......... 18
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`A. Motivation to Combine Beard with Rathmann ................................... 19
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`B. Motivation to Combine Beard and Rathmann with Danielson ........... 24
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`i
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`IX. PRECISE REASONS FOR THE RELIEF REQUESTED ........................... 27
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`Petition for Inter Partes Review of USP 7,329,970
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`A. Ground 1: Claims 1, 3, 5, 10, 11, 12, 14, 19, 48, and 49 are
`invalid under 35 U.S.C. § 103 on the ground that they are
`rendered obvious by Beard in view of Rathmann. .............................. 28
`
`B.
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`Ground 2: Claims 4, 13, 51, and 52 are invalid under 35 U.S.C.
`§ 103 on the ground that they are all rendered obvious by Beard
`in view of Rathmann and Danielson ................................................... 46
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`X.
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`CONCLUSION .............................................................................................. 59
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`Petition for Inter Partes Review of USP 7,329,970
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`
`Exhibit List
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`1001 U.S. Patent No. 7,329,970 (“the ’970 patent”)
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`1002 File History Excerpts for the ’970 patent (Oct. 9, 2007 Notice of Allow-
`ance; Sept. 11, 2007 Applicant Remarks; July 9, 2007 Notice of Allow-
`ance; Apr. 18, 2007 Applicant Remarks; Mar. 28, 2007 Non-Final Rejec-
`tion)
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`1003 Declaration of Paul Beard in Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,329,970
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`1004 Curriculum Vitae of Paul Beard
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`1005 U.S. Patent No. 5,898,290, “Battery Pack with Capacity and Pre-Removal
`Indicators,” filed Sept. 6, 1996, issued Apr. 27, 1999 (“Beard”)
`
`1006 U.S. Patent No. 5,955,869, “Battery Pack And A Method For Monitoring
`Remaining Capacity Of A Battery Pack,” filed July 9, 1997, issued Sept.
`21, 1999 (“Rathmann”)
`
`1007 U.S. Patent No. 5,710,728, “Portable Work Station-Type Data Collection
`System,” filed June 7, 1995. issued Jan. 20, 1998 (“Danielson”)
`
`1008 Mains Definition, Collins English Dictionary, available at:
`http://www.collinsdictionary.com/dictionary/english/mains
`
`1009 1989 Sony WM-701C Service Manual
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`1010 1987 Sony WM-DDIII Service Manual
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`1011 Tandy Pocket Scientific Computer PC-6 Service Manual
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`1012 1987 Tandy Computer Catalog
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`1013 U.S. Patent No. 4,818,827
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`1014 U.S. Patent No. 5,747,757
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`1015 U.S. Patent No. 5,743,386
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`1016 U.S. Patent No. 5,294,762
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`1017 Apr. 21, 1994 Press Release, “Duracell and Intel Announce ‘Smart Bat-
`
`iii
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`Petition for Inter Partes Review of USP 7,329,970
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`tery’ Specifications for Portable Computers”
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`1018 Mar. 2, 1995 EDN Access Article, “Smart-Battery Technology: Power
`Management’s Missing Link”
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`1019 Oct. 2, 1995 Infoworld Article, “New Battery Technologies Mix Brains
`and Chemistry”
`
`1020 Jan. 24, 1995 PC Magazine Article, “Batteries That Think”
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`1021 PMBus Webpage, “PMBus Ancestry: PMBus and the Technologies Pre-
`ceding It”
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`1022 Feb. 15, 1995 Smart Battery Data Specification, Version 1.0
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`1023 July 2003 Microchip Technology’s Microsolutions eNewsletter
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`1024 USPTO, Rathmann Assignment Details
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`1025 1997 Moody’s Industrial Manual, “Duracell International Inc.”
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`1026 1996 Duracell Form 10-K
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`1027 P&G 2014 Annual Report
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`1028 U.S. Patent No. 5,710,501
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`1029 U.S. Patent No. 5,652,502
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`1030 U.S. Patent No. 5,606,242
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`1031 Load Definition, The IEEE Standard Dictionary of Electrical and Elec-
`tronics Terms 593 (6th ed. 1996)
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`1032 Mains Definition, Newton’s Telecom Dictionary 434 (1998)
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`1033 L.A. Meyer & H.L. Wray, Basics of Electricity 18 (1995)
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`
`iv
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`I.
`
`INTRODUCTION
`
`Petition for Inter Partes Review of USP 7,329,970
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`Apple Inc., Motorola Mobility LLC, and Toshiba America Information Sys-
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`tems, Inc. (“Petitioners”), in accordance with 35 U.S.C. § 311 and 37 C.F.R.
`
`§ 42.100, hereby request inter partes review of claims 1, 3-5, 10-14, 19, 48, 49, 51,
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`and 52 of United States Patent No. 7,329,970, titled “Touch Sensor and Location
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`Indicator Circuits” (the “’970 patent”). According to USPTO records, the ’970 pa-
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`tent is assigned to Global Touch Solutions, LLC (“Global Touch”). A copy of the
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`’970 patent is provided as Ex. 1001, and excerpts of its prosecution history as Ex.
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`1002.
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`II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioners certify that the ’970 patent is available for inter partes review
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`and that Petitioners are not barred or estopped from requesting inter partes review
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`of the challenged claims of the ’970 patent on the grounds identified herein.
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`B. Notice of Lead and Backup Counsel and Service Information
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioners
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`provide the following designation of Lead and Back-Up counsel.
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`LEAD COUNSEL
`Robert Steinberg (Reg. No. 33,144)
`(bob.steinberg@lw.com)
`Postal & Hand-Delivery Address:
`Latham & Watkins LLP
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`BACKUP COUNSEL
`Matthew J. Moore (Reg. No. 42,012)
`(matthew.moore@lw.com)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
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`1
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`Petition for Inter Partes Review of USP 7,329,970
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`Washington, D.C. 20004-1304
`T: 202-637-2278, F: 202-637-2201
`
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`T: 213-485-1234, F: 213-891-8763
`BACKUP COUNSEL
`Gabriel S. Gross (Reg. No. 52,973)
`(gabe.gross@lw.com)
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94065
`T: 650-463-2628; F: 650-463-2600
`BACKUP COUNSEL
`DeAnna Allen (Reg. No. 46,516)
`(dallen@cooley.com)
`Cooley LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C. 20004
`T: 202-842-7896; F: 202-842-7899
`BACKUP COUNSEL
`Doris Johnson Hines (Reg. No. 34,629)
`(dori.hines@finnegan.com)
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, L.L.P.
`901 New York Ave., NW
`Washington, D.C. 20001
`T: 202-408-4250; F: 202-408-4400
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for each of the Petitioners is
`
`BACKUP COUNSEL
`Phillip E. Morton (Reg. No. 57,835)
`(pmorton@cooley.com)
`Cooley LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C. 20004
`T: 703-456-8668; F: 703-456-8100
`BACKUP COUNSEL
`Joseph M. Drayton (PHV to be filed)
`(jdrayton@cooley.com)
`Cooley LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C. 20004
`T: 212-479-6539; F: 212-849-6275
`BACKUP COUNSEL
`Luke McCammon (Reg. No. 70,691)
`(luke.mccammon@finnegan.com)
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, L.L.P.
`901 New York Ave., NW
`Washington, D.C. 20001
`T: 202-408-4273; F: 202-408-4400
`
`attached.
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`2
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`
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`Petition for Inter Partes Review of USP 7,329,970
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`C. Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`The real-parties-in-interest are Apple Inc., Motorola Mobility LLC, Toshiba
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`Corp., and Toshiba America Information Systems, Inc. Petitioner Motorola Mobili-
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`ty LLC is indirectly a wholly-owned subsidiary of Lenovo Group Limited, which
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`has more than a ten percent ownership of Motorola Mobility LLC. No other parties
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`exercised or could have exercised control over this petition; no other parties funded
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`or directed this petition. (See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48759-60.)
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`D. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`Global Touch Solutions, LLC v. Apple Inc., 2:14-cv-390-MSD (E.D. Va.).
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`Global Touch Solutions, LLC. v. Motorola Mobility LLC, 2:14-cv-391-MSD (E.D.
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`Va.). Global Touch Solutions, LLC. v. Microsoft Corp., 3:14-cv-548-MSD (E.D.
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`Va.). Global Touch Solutions, LLC. v. Toshiba Corp., 2:14-cv-346-MSD (E.D.
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`Va.). Global Touch Solutions, LLC. v. VIZIO, Inc., 2:14-cv-347-MSD (E.D. Va.).
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`Petition for Inter Partes Review of U.S. Patent No. 7,498,749, IPR2015-01172 (to
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`be filed concurrently). Petition for Inter Partes Review of U.S. Patent No.
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`7,781,980, IPR2015-01174 (to be filed concurrently). Petition for Inter Partes Re-
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`view of U.S. Patent No. 7,994,726, IPR2015-01171 (to be filed concurrently). Peti-
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`tion for Inter Partes Review of U.S. Patent No. 8,288,952, IPR2015-01175 (to be
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`filed concurrently). According to USPTO records, According to USPTO records,
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`3
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`no patent claims priority to the ’970 patent.
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`Petition for Inter Partes Review of USP 7,329,970
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`Fee for Inter Partes Review
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`E.
`The Director is authorized to charge the fee specified by 37 C.F.R.
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`§ 42.15(a) to Deposit Account No. 506269.
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`Proof of Service
`
`F.
`Proof of service of this petition on the patent owner at the correspondence
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`address of record for the ’970 patent is attached.
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`III.
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`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B))
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`Claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of the ’970 patent (the “chal-
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`lenged claims”) are unpatentable in view of the following prior art.
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` U.S. Patent No. 5,898,290 (“Beard,” attached as Ex. 1005);
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` U.S. Patent No. 5,955,869 (“Rathmann” attached as Ex. 1006);
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` U.S. Patent No. 5,710,728 (“Danielson,” attached as Ex. 1007);
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`
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`The challenged claims are invalid under 35 U.S.C. § 103 on these grounds:
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` Ground 1: Claims 1, 3, 5, 10-12, 14, 19, 48, and 49 are invalid on the
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`ground that they are rendered obvious by Beard in view of Rathmann.
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` Ground 2: Claims 4, 13, 51, and 52 are invalid on the ground that they are
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`rendered obvious by Beard in view of Rathmann and Danielson.
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`IV. DESCRIPTION OF THE PURPORTED INVENTION
`Conventional flashlights use mechanically-operated switches to turn a
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`4
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`flashlight “on” and “off.” ’970 patent at 1:40-41. These switches do not
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`Petition for Inter Partes Review of USP 7,329,970
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`automatically turn a flashlight off when the switch is left in the “on” position,
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`which can lead to battery drainage and corrosion. Id. at 1:46-53. They are also
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`subject to wear and tear from repeated use. Id. at 2:62-3:2. Mechanical switches act
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`as conductors to complete the power circuit that operates the device. Id. at 3:11-13.
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`This current is generally high, which leads to switch failure over time. Id. at 3:13-
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`17. And mechanical switches are “dumb” in that they cannot provide any enhanced
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`functionality other than activating the device. Id. at 3:5-9.
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`The alleged invention of the ’970 patent purports to solve these problems by
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`using a microchip-controlled switch that manages both current-conducting and
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`user-interface functions in an electronic device such as a flashlight without the
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`switch itself conducting current to the load. ’970 patent at 3:41-46; Declaration of
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`Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent 7,329,970
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`(“Beard Decl.”) at ¶ 60. The switch operates on a low-current signal and may be a
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`touch sensor. ’970 patent at 3:46-49; Beard Decl. at ¶ 60. It also can be used by the
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`microchip to control the functions of the device in an “intelligent manner.” ’970
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`patent at 3:53-56; Beard Decl. at ¶ 60. The microchip can provide additional
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`functionality such as power-saving features like automatic shut-off after a
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`predetermined interval. ’970 patent at 3:60-67; Beard Decl. at ¶ 60.
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`The microchip-controlled switch can be its own device. ’970 patent at 4:44-
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`5
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`54; Beard Decl. at ¶ 61. Or it may be embedded in an intelligent battery for use
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`Petition for Inter Partes Review of USP 7,329,970
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`with an electronic device. ’970 patent at 4:28-44; Beard Decl. at ¶ 61.
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`As depicted in Figure 11, a visible indicator such as a light emitting diode
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`(LED) can be used to indicate the condition of the battery. ’970 patent at 9:47-55;
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`Beard Decl. at ¶ 62. The indicator 1104 may be activated by either microchip 1113
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`or switch 1111. ’970 patent at 9:55-57 and FIG. 11; Beard Decl. at ¶ 62. LED 1104
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`shines when microchip 1113 pulls the line 1114 to high. ’970 patent at 9:55-56 and
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`FIG. 11; Beard Decl. at ¶ 62. LED 1104 also shines when switch 1111 is closed by
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`the user. ’970 patent at 9:56-57 and FIG. 11; Beard Decl. at ¶ 62.
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`The examiner initially rejected all pending claims in the application for the
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`’970 patent on the basis of non-statutory obviousness-type double patenting. Beard
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`Decl. at ¶ 66. The applicant filed a terminal disclaimer and, at the same time,
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`amended challenged claims 1 and 52 to “clarify the language regarding the switch
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`not forming a serial link between the power source and the load.” Ex. 1002 at
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`4/18/07 Applicant Remarks at 8 (’970 File History Excerpts). The examiner
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`approved the terminal disclaimer and issued a notice of allowance. Beard Decl. at ¶
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`67. The applicant amended the allowed claims. Changes to challenged claim 1
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`included: (1) adding the text “that is not the load” to “mak[e] sure that the indicator
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`is not construed as the load”; (2) defining the indicator as luminous and visible
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`(such as an LED) by replacing the phrase “location indicator” with “visible
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`6
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`indicator”; and (3) adding a touch sensor limitation. Ex. 1002 at 9/11/07 Applicant
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`Petition for Inter Partes Review of USP 7,329,970
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`Remarks at 10; Beard Decl. at ¶ 68. The applicant amended other claims to specify
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`that the switch is activated for a short period of time (claim 5); to designate that the
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`disclosed switch is “structurally integral with the product, for example with the
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`casing of a flashlight” (claim 10); to remove the direct current power source
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`limitation (claim 19); to specify that certain components are enclosed in or
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`attached to the panel housing (challenged claim 49); and to add a touch sensor
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`limitation and clarifying language (challenged claim 52). Id. at 10-11; Beard Decl.
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`at ¶ 68. The examiner allowed the claims as amended. Beard Decl. at ¶ 68. The
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`examiner never rejected the claims as anticipated or obvious in view of third-party
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`prior art. Id. at ¶ 70.
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`V. CLAIM CONSTRUCTION1
`A. Applicable Law
`In deciding whether to institute inter partes review, “[a] claim in an unex-
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`pired patent shall be given its broadest reasonable construction in light of the speci-
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`1 Petitioners reserve the right to challenge one or more claims of the ’970 patent for
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`failure to satisfy the requirements of 35 U.S.C. § 112, which cannot be raised in
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`these proceedings. 35 U.S.C. § 311(b). Nothing in this Petition shall be construed
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`as a waiver of such challenge.
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`7
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`fication of the patent in which it appears.” 2 37 C.F.R. § 42.100(b). Any ambiguity
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`Petition for Inter Partes Review of USP 7,329,970
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`regarding the “broadest reasonable construction” of a claim term is resolved in fa-
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`vor of the broader construction absent amendment by the patent owner. Final Rule,
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`77 Fed. Reg. 48680, 48699 (Aug. 14, 2012). “[T]he specification is always highly
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`relevant to the claim construction analysis.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1315 (Fed. Cir. 2005) (citation and quotation marks omitted). “Usually, it is dis-
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`positive; it is the single best guide to the meaning of a disputed term.” Id. When
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`the specification includes a disclaimer, such revealed intention is dispositive. See
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`id. at 1316.
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`B. Construction of Claim Terms
`All claim terms not specifically addressed in this section have been accorded
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`their broadest reasonable interpretation as understood by one of ordinary skill in
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`the art and consistent with the specification of the ’970 patent. Petitioners respect-
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`fully submit that the following terms should be construed for this IPR:
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`1.
`“energy consuming load”
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`2 The district court, in contrast, affords a claim term its “ordinary and customary
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`meaning . . . to a person of ordinary skill in the art in question at the time of the in-
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`vention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Petitioners
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`expressly reserve the right to argue different or additional claim construction posi-
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`tions under this standard in district court.
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`Petition for Inter Partes Review of USP 7,329,970
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`The term “energy consuming load” is used in challenged independent claims
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`1 and 52. Beard Decl. at ¶ 118. A POSITA would have generally understood “en-
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`ergy consuming load,” as used in the claims of the ’970 patent, to have its plain
`
`and ordinary meaning. Id. at ¶ 119. A POSITA would have understood this plain
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`and ordinary meaning to be any part of the product that consumes energy when the
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`product is used. Id. at ¶ 120. The ’970 patent specification uses the term consistent
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`with this meaning. Id. It identifies the load in two embodiments: a flashlight, where
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`the load is the bulb, and in the context of a wall switch, where the load is the ener-
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`gy-consuming element the switch controls, like a “light, fan, [or] air conditioner.”
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`’970 patent at 6:54-55; 11:52-53. Each of these loads are parts of the product that
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`consume energy when the product is used. Beard Decl. at ¶ 120. The contempora-
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`neous IEEE Standard Dictionary of Electrical and Electronics Terms, which de-
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`fines the term “load” as “[a]n energy consuming device” or “[a] power consuming
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`device connected to a circuit,” supports this construction. Beard Decl. at ¶ 121.
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`Thus the broadest reasonable construction of the term “energy consuming
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`load” is, consistent with the term’s plain and ordinary meaning, “any part of the
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`product that consumes energy when the product is used.” Beard Decl. at ¶ 122.
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`This petition relies on the plain and ordinary meaning of the term and does not de-
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`pend on this exact articulation. Id. at ¶ 123.
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`2.
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`“mains”
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`9
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`Petition for Inter Partes Review of USP 7,329,970
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`The term “mains” is used in challenged independent claim 1 in the phrase,
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`“the product is not connected to a mains supply.” See ’970 patent at claim 1. The
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`specification of the ’970 patent does not use the term “mains.” Beard Decl. at
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`¶ 125. But a POSITA would have understood the term “mains” in the context of
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`the claims to refer to the power provided by a main utility distribution network,
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`similar to a water main or a gas main, as opposed to power supplied by a small
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`exhaustible power source such as a battery. Id. This construction follows from the
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`distinction drawn in the specification between “an electronic device, such as a
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`flashlight” which is battery-operated, and a “switch on the wall” that runs on mains
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`power. Compare, e.g., ’970 patent at 3:41-4:53, 6:31-9:34 with 4:54-63, 11:24-48.
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`This understanding of “mains” is also the common understanding of the
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`word in many countries of the British Commonwealth. Beard Decl. at ¶ 126. It is
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`exemplified by a contemporaneous dictionary definitions of the term, as well,
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`which define mains as “normal commercial power outlets” and “relating to a main
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`distribution network for water, gas, or electricity.” Beard Decl. at ¶¶ 126-27. The
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`broadest reasonable construction of the term “mains” thus includes the power
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`source provided by a main distribution network, such as a utility. Id. at ¶ 128.
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`VI. PERSON HAVING ORDINARY SKILL IN THE ART
`The purported invention of the ’970 patent reflects an understanding of sev-
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`eral basic principles of electronics and electrical engineering as they apply to prod-
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`10
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`uct design, and knowledge of industry practices in 1998 including the use of signal
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`Petition for Inter Partes Review of USP 7,329,970
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`switches and the use of microchips as control circuitry for switches and batteries.
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`Beard Decl. at ¶ 51. A “person of ordinary skill in the art” (“POSITA”) with this
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`knowledge and understanding thus has: a Ph.D. in electrical or electronics engi-
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`neering; or a Masters-level degree in electrical or electronics engineering and
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`1 year of experience designing portable, battery-powered electronic devices con-
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`trolled by microprocessors that used touch sensors or other signal switches; or a
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`Bachelors-level degree in electrical or electronics engineering and 2 years of expe-
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`rience designing such devices. Id. at ¶ 52. This description is approximate, and a
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`higher level of education or skill might make up for less experience, and vice-
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`versa. Id.
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`VII. THE PRIOR ART
`A. Beard (Ex. 1005)
`U.S. Patent No. 5,898,290 (“Beard”), entitled “Battery Pack with Capacity
`
`and Pre-Removal Indicators,” issued to Paul Beard and Robert Grabon and was
`
`assigned to Norand Corporation. Beard Decl. at ¶ 71. Beard is prior art to the ’970
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`patent under at least 35 U.S.C. § 102(e) because the application that led to Beard
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`was filed with the USPTO on September 6, 1996. Id. Beard was not before the
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`USPTO during prosecution of the ’970 patent. Id.
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`Beard is directed to an intelligent battery pack with a microcontroller
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`(microchip) and battery indicators for use with a portable electronic device. See,
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`Petition for Inter Partes Review of USP 7,329,970
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`e.g., Beard at 1:18-21; Beard Decl. at ¶ 72. The microchip responds to a touch-
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`sensing circuit that detects changes in impedance or capacitance when an operator
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`touches two contacts. See, e.g., Beard at 11:12-16; Beard Decl. at ¶ 72.
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`Portable devices of that era suffered from several common battery-related
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`problems. Beard Decl. at ¶ 74. First, the devices did not allow a user to check
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`battery power levels without turning on the device, which led to data loss from the
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`device if battery charge levels were dangerously low. See, e.g., Beard at 1:44-49;
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`Beard Decl. at ¶ 74; see also Beard Decl. at ¶¶ 26-28. Second, data loss also
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`resulted if users did not complete the “time-consuming” shut down process. Beard
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`at 2:26-28; Beard Decl. at ¶ 74.
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`Beard discloses user interface changes to resolve both problems. Beard Decl.
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`at ¶¶ 22-31, 75. First, it provided a user-activated indication of battery capacity that
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`worked without turning on the device. This feature prevented system problems
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`arising from the unexpected loss of power during device startup, because the user
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`could verify that the battery charge was sufficient before turning on the device.
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`See, e.g., Beard at 11:10-12; Beard Decl. at ¶¶ 26-28, 75. And it worked whether or
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`not the battery pack was inserted into the device, because the battery pack could
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`retrieve charge status information either from the device, or from its own memory.
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`See, e.g., Beard at 11:33-40; Beard Decl. at ¶ 78.
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`Petition for Inter Partes Review of USP 7,329,970
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`The touch-activated indication of battery capacity also included time esti-
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`mates of remaining battery life based on the loading characteristics of the device
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`using the battery. See, e.g., Beard at 11:41-45, 11:58; Beard Decl. at ¶ 79. The bat-
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`tery pack initially monitors the device to determine these power-consumption
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`characteristics. See, e.g., Beard at 11:57-61; Beard Decl. at ¶ 80. The battery pack
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`then stores them in its memory and retrieves them to calculate and display remain-
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`ing battery life in response to a request, via touch sensor, from the operator. See,
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`e.g., Beard at 11:23-30; Beard Decl. at ¶ 80; see also Beard Decl. at ¶¶ 26-28.
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`Beard teaches and discloses, among other things, the activation of a visual
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`indication of battery capacity in response to user input detected by a touch sensor
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`that functions regardless of whether or not the battery pack has been inserted into
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`the device, and without turning on the device. Beard Decl. at ¶ 81. Beard’s battery
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`pack indicator is activated without affecting the load of the device and without re-
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`quiring that the user has activated the load of the device. Id.
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`Second, Beard added “pre-removal” circuitry that allowed a user to
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`gracefully deactivate and activate a device merely by removing or inserting the
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`battery, respectively. This circuitry prevented data loss arising from the unexpected
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`loss of power during operation. See Beard Decl. at ¶¶ 29-30, 75.
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`Beard accomplishes this goal by including a sense contact between the
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`device and battery pack, in addition to the ground and voltage contacts that connect
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`battery power to the device. See, e.g., Beard at 11:63-67; Beard Decl. at ¶ 82.
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`Petition for Inter Partes Review of USP 7,329,970
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`When a user removes the battery pack, the connection between sense contacts
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`breaks first. See, e.g., Beard at 12:4-6; Beard Decl. at ¶ 83. In response to that first
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`break, removal-sensing circuitry causes a control circuit to save the operational
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`status and any pending data in the device and complete removal processing and
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`deactivation of the device before the ground and voltage contacts break and the
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`device loses power. See, e.g., Beard at 12:8-13; Beard Decl. at ¶ 83. When the user
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`reinserts the pack, the control circuit retrieves the saved operational state and data
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`and resumes normal operation of the device. See, e.g., Beard at 12:19-22; Beard
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`Decl. at ¶ 84. Thus, Beard discloses deactivating and activating a device in
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`response to the user’s removal and re-insertion, respectively, of the device’s
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`battery pack. Beard Decl. at ¶ 85.
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`B. Rathmann (Ex. 1006)
`The prior art U.S. Patent No. 5,955,869 to Rathmann (“Rathmann”) entitled
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`“Battery Pack And A Method For Monitoring Remaining Capacity Of A Battery
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`Pack,” was originally assigned to Duracell, Inc. Rathmann (cover sheet); Beard
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`Decl. at ¶ 86. Duracell is a leading manufacturer of high-performance alkaline and
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`rechargeable batteries, and has a tradition of innovation in battery development and
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`smart power systems. Beard Decl. at ¶ 86. Rathmann is prior art to the ’970 patent
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`under at least 35 U.S.C. § 102(e) because it issued from a divisional application of
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`U.S. Patent App. No. 08/890,665, which was filed with the USPTO on July 9,
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`Petition for Inter Partes Review of USP 7,329,970
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`1997. Id. Rathmann was not before the USPTO during prosecution of the ’970
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`patent. Id.
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`Rathmann discloses a “smart battery for use in an intelligent device having
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`power management capabilities,” Rathmann at 1:12-16; 1:65-3:30, just like the
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`’970 patent’s “intelligent battery for use with an electronic device” and “intelligent
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`current switching devices.” ’970 patent at 1:18-19, 4:38-39; Beard Decl. at ¶ 89.
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`The battery pack in Rathmann includes a microcontroller, battery-power indicator,
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`and user-interface switch, similar to those disclosed by Beard and the ’970 patent.
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`See, e.g., Rathmann at Abstract, 1:51-56, 1:65-2:2, 3:1-7, 24:21-23; Beard Decl. at
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`¶¶ 87, 90.
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`The microchip in Rathmann is a CMOS 8-bit microcontroller sold in the
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`U.S. by Microchip Technology, Inc. with an advanced RISC architecture, and
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`optimizations for low power consumption, just like the microchip in Beard. See,
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`e.g., Beard at 16:57-17:5; Beard Decl. at ¶ 90. Rathmann’s indicator is comprised
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`of LEDs, which are also disclosed as an indicator in Beard. See, e.g., Beard at
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`4:63-66, 6:67-7:5. In response to a signal from battery pack’s user interface, four
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`LEDs illuminate sequentially to indicate remaining battery charge. See, e.g.,
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`Rathmann at FIG. 3, 16:24-36; Beard Decl. at ¶ 91. And like the touch sensors of
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`Beard and the ’970 patent, the manual switch of Rathmann does not act as a
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`conductor to complete the power circuit to power the load. See, e.g., Rathmann at
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`Petition for Inter Partes Review of USP 7,329,970
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`FIG. 3 (showing that there is no power circuit connected to switch 35); Beard Decl.
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`at ¶ 91.
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`But Rathmann differs from Beard by disclosing in more detail how the
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`microchip is adapted to control the operation of the battery pack and indicator
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`using software. Beard Decl. at ¶ 92. In particular, Rathmann discloses the
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`“Duracell Battery Operating System (DBOS)” for intelligent battery packs, which
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`is designed as an operating system for Smart Battery System (SBS) battery packs,
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`a standard Duracell developed with Intel in 1994. See, e.g., Rathmann at 5:47-48,
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`13:64-67; Beard Decl. at ¶ 88. Rathmann provides step-by-step instructions for
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`many smart battery functions,
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`including how
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`the microchip
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`implements
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`illumination of the correct number of LEDs based on battery charge. See, e.g.,
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`Rathmann at FIG. 34 (§ IX.A.1, infra), 58:31-59:32; Beard Decl. at ¶¶ 92-93.
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`Rathmann describes displaying LED lights to indicate battery charge without
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`requesting information from, or otherwise affecting, the operation of the load. See,
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`e.g., Rathmann at 58:31-59:32; Beard Decl. at ¶ 94. Rathmann discloses using the
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`battery pack’s microchip to estimate battery capacity and storing the device’s
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`power consumption characteristics in battery memory, rather than device memory.
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`See, e.g., Rathmann at 24:24-33; Beard Decl. at ¶¶ 80, 94. A user may press the
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`switch “to determine the state of charge in the battery even when the battery has
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`been removed from the host device 16.” Rathmann at 16:26-29; Beard Decl. at ¶
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`Petition for Inter Partes Review of USP 7,329,970
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`95. Rathmann thus discloses the activation of a visual indicator of battery capacity
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`in response to user input that functions regardless of whether or not the battery
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`pack is inserted into the device, and without turning on the device.
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`C. Danielson (Ex. 1007)
`U.S. Patent No. 5,710,728 to Danielson et al., entitled “Portable Work
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`Station-Type Data Collection System,” another patent that relates to Mr. Beard’s
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`work, also was assigned to Norand Corporation. Beard Decl. at ¶ 97. Mr. Beard is
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`a co-inventor. Id. Danielson is prior art to the ’970 patent under at least 35 U.S.C.
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`§§ 102(a) and 102(e) because it was filed with the USPTO on June 7, 1995 and
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`issued on January 20, 1998. Id. Danielson was not before the USPTO during
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`prosecution of the ’970 patent. Id.
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`Both Danielson and Beard relate to Norand’s Pen*KeyTM technology. Id. at
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`¶ 98. Danielson’s invention is a portable electronic terminal for data entry that is
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`powered by the intelligent battery pack disclosed in Beard. See, e.g., Danielson at
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`FIG. 2 (depicting the underside of data terminal device 10, including battery door
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`41); Beard at FIG. 11 (depicting portable electronic device 203 powered by
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`intelligent battery pack 201); Beard Decl. at ¶ 98. Danielson additionally describes
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`various aspects of such terminal devices, including embodiments that have audio
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`and radio frequency circuitry, a keyboard, or an on/off switch. See, e.g., Danielson
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`at 8:55-57, 22:58-60, 22:65-66; Beard Decl. at ¶¶ 98, 220.
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`Petition for Int