Trials@uspto.gov Paper 13
`571-272-7822 Entered: November 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01173
`Patent 7,329,970 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`Apple Inc., Motorola Mobility LLC, and Toshiba America
`Information Systems, Inc. (collectively, “Petitioner”) filed a Petition for
`
`
`571-272-7822 Entered: November 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01173
`Patent 7,329,970 B2
`____________
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`Apple Inc., Motorola Mobility LLC, and Toshiba America
`Information Systems, Inc. (collectively, “Petitioner”) filed a Petition for
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`IPR2015-01173
`Patent 7,329,970 B2
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`inter partes review 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”). Paper 4 (“Pet.”). Global Touch Solutions, LLC (“Patent
`Owner”) did not file a Preliminary Response. Institution of an inter partes
`review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition, we conclude the information presented
`shows there is a reasonable likelihood that Petitioner would prevail in
`establishing the unpatentability of claims 1, 3–5, 10–14, 19, 48, 49, 51, and
`52 of the ’970 patent.
`
`A. 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
`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., et al., 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 (IPR2015-01171), 7,498,749
`(IPR2015-01172), 7,781,980 (IPR2015-01174), and 8,288,952 (IPR2015-
`01175). 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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`B. 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. A visible indicator such as a light emitting diode (LED) can
`be used to indicate the condition of the battery. Id. at 9:47–55, Fig. 11.
`
`C. Illustrative Claim
`Among the challenged claims, only claims 1 and 52 are independent.
`Claim 1 is illustrative and reads:
`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
`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
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`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.
`
`Id. at 13:60–14:13.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52
`of the ’970 patent are unpatentable based on the following specific grounds
`(Pet. 28–50):
`
`References
`
`Basis
`
`Beard1 and Rathmann2
`
`35 U.S.C. § 103(a)
`
`Challenged Claims
`1, 3, 5, 10–12, 14, 19,
`48, and 49
`
`Beard, Rathmann, and
`Danielson3
`
`35 U.S.C. § 103(a)
`
`4, 13, 51, and 52
`
`In its analysis, Petitioner relies on the declaration testimony of
`Mr. Paul Beard. See Ex. 1003.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`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
`
`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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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for “energy consuming load” and
`“mains.” Pet. 8–10. For purposes of this decision, we determine that only
`“mains” requires express construction.
`Petitioner contends that the broadest reasonable construction of
`“mains,” recited in claim 1, includes “the power source provided by a main
`distribution network, such as a utility.” Id. at 10. As Petitioner points out,
`the written description of the ’970 patent does not use the term “mains.” Id.
`Petitioner, however, asserts that a person of ordinary skill in the art would
`have understood “mains” in the context of the claims to refer to the power
`provided by a main utility distribution network. Id. (citing Ex. 1003 ¶ 125).
`Petitioner contends its proposed construction “follows from the distinction
`drawn in the specification between ‘an electronic device, such as a
`flashlight’ which is battery-operated, and a ‘switch on the wall’ that runs on
`mains power.” Id. (comparing Ex. 1001, 3:41–4:53, 6:31–9:34, with
`Ex. 1001, 4:54–63, 11:24–48). For purposes of this decision, we adopt
`Petitioner’s proposed construction of “mains” as the broadest reasonable
`construction consistent with the Specification of the ’970 patent.
`
`B. Obviousness over Beard and Rathmann
`Claims 1, 3, 5, 10–12, 14, 19, 48, and 49
`
`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
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`Rathmann. Pet. 19–24, 28–46. Relying 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).
`
`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
`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.
`
`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
`
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`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.
`
`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,
`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. Id. at 58:31–59:32, Fig. 34; see Ex. 1003
`¶¶ 92–93.
`
`3. Analysis
`Petitioner asserts that the combination of Beard and Rathmann teaches
`all of the limitations of independent claim 1. Pet. 28–39. For example,
`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, examples of which Petitioner asserts
`are disclosed throughout Beard) and a “connection to a power source”
`(contacts 241, 243, and 245 engaging corresponding contacts 241, 243, and
`245 of battery pack 201). Id. at 28–30. Petitioner also contends that Beard’s
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`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 includes a “user interface” (operator touching contacts 211 and 213 to
`initiate display of battery capacity) and “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
`via battery contacts 241 and 243 and device contacts 251 and 253. Id. at 30–
`32 (citing Ex. 1005, 11:12–22, 11:63–65; Ex. 1003 ¶¶ 135–40).
`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
`declarant, a person of ordinary skill in the art would view 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, as 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 and relied on by
`Petitioner for teaching other claim limitations, the microchip controls a
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`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
`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).
`
`Claim 1 further recites that the microchip controls the visible indicator
`according to at least one of three specific configurations; 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 interface switch [which] is a touch
`sensor type switch” 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” because Beard’s battery charge status
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`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). In addition,
`Petitioner contends that Rathmann’s battery pack microchip estimates
`battery capacity without requiring the load to be activated. Id. at 37–38
`(citing Ex. 1006, 16:24–29, 58:31–59:32; Ex. 1003 ¶ 163). 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” (using stored load
`characteristics, and indicating battery charge when the battery is not inserted
`into the device) and when “the product is not connected to a mains supply”
`(Beard’s devices are battery-powered, not mains-powered). Id. at 38–39
`(citing Ex. 1005, 11:23–30; Ex. 1003 ¶¶ 165–67, 170–71).
`Petitioner also contends the combination of Beard and Rathmann
`teaches the limitations of the dependent claims challenged on this ground.
`Id. at 39–46. For example, claim 5 recites “the location indicator is
`activated only for a period of time,” claim 12 recites “a f[u]nction, selected
`by a user interface activation signal is automatically shut off after a
`predetermined period of time,” and claim 19 recites “the microchip also
`controls upon receiving a switch activation signal from a touch sensor, at
`least the activation of a function that automatically shuts off a period after
`such activation.” Ex. 1001, 14:22–23, 14:43–45, 14:64–67. Petitioner
`contends that these limitations are taught by Beard’s disclosure of a battery
`charge display function that is deactivated automatically after a ten-second
`period. Pet. 40–44 (citing Ex. 1005, 10:48–50, 10:51–56; Ex. 1003 ¶¶ 180,
`195, 205–06).
`
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`We have reviewed Petitioner’s arguments with respect to each of
`claims 1, 3, 5, 10–12, 14, 19, 48, and 49, including those directed to the
`remaining dependent claims. On the present record, Petitioner has shown
`sufficiently that the combination of Beard and Rathmann teaches all of the
`limitations of claims 1, 3, 5, 10–12, 14, 19, 48, and 49, and Petitioner has
`articulated sufficient reasoning with rational underpinning for combining
`Beard and Rathmann. Pet. 19–24, 28–46. Accordingly, the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claims 1, 3, 5, 10–12, 14, 19, 48, and 49 would have been
`obvious over 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.
`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
`Danielson describes a portable data collection terminal system.
`Ex. 1007, 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.
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`2. Analysis
`Petitioner asserts that the combination of Beard, Rathmann, and
`Danielson teaches all of the limitations of claims 4, 13, and 51, which
`depend directly or indirectly from claim 1. Pet. 46–58. With respect to
`claim 4, Petitioner contends Danielson’s “user interface comprises multiple
`switches and/or buttons” in the form of a keyboard in addition to other user
`interface elements such as a touch sensor switch on a battery pack and a
`display. Id. at 46–47 (citing Ex. 1007, 8:55–57, Fig. 1). With respect to
`claims 13 and 51, Petitioner contends Danielson’s data terminal comprises
`“radio frequency circuitry.” Id. at 47–48 (citing Ex. 1007, 11:51–53).
`Independent claim 52 is a method claim with many limitations similar
`to those in claim 1, and Petitioner’s analysis of those limitations is similar to
`its analysis for claim 1. Ex. 1001, 16:31–43; Pet. 48–53, 56–58. In
`addition, claim 52 recites “using the microchip to control the connection of
`the power source to the load.” For this limitation, Petitioner contends that
`Beard discloses using microchip control circuit 223 to control the connection
`of the power source (batteries 231) to the load (energy consuming parts of
`device 203), and that a device becomes fully operational only if sufficient
`power is available. Pet. 53–54 (citing Ex. 1005, 11:67–12:4). For details of
`a power source control process that allows a device to become operational
`only if sufficient battery power is available, Petitioner cites Danielson.
`Id. at 54–55 (citing Ex. 1007, 23:17–39, Fig. 22). Petitioner contends it
`would have been obvious for a person of ordinary skill in the art to
`implement Danielson’s power source control function in the microchip
`control circuit disclosed in Beard to avoid an unsafe shutdown caused by
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`attempting to start up the device without sufficient available power. Id. at 55
`(citing Ex. 1003 ¶¶ 254–55).
`We have reviewed Petitioner’s arguments with respect to each of
`claims 4, 13, 51, and 52. On the present record, Petitioner has shown
`sufficiently that the combination of Beard, Rathmann, and Danielson teaches
`all of the limitations of claims 4, 13, 51, and 52, and Petitioner has
`articulated sufficient reasoning with rational underpinning for combining
`Beard, Rathmann, and Danielson. Pet. 24–27, 46–58. Accordingly, the
`information presented shows a reasonable likelihood that Petitioner would
`prevail in establishing that claims 4, 13, 51, and 52 would have been obvious
`over Beard, Rathmann, and Danielson.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52 of the ’970 patent
`are unpatentable. At this preliminary stage, the Board has not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual and legal issues.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 1, 3–5, 10–14, 19, 48, 49, 51, and 52 of the
`’970 patent on the following grounds of unpatentability:
`
`A.
`Claims 1, 3, 5, 10–12, 14, 19, 48, and 49 under
`35 U.S.C. § 103(a) as obvious over Beard and Rathmann; and
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`Claims 4, 13, 51, and 52 under 35 U.S.C. § 103(a) as
`B.
`
`obvious over Beard, Rathmann, and Danielson; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this decision.
`
`
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`FOR PETITIONER:
`Robert Steinberg
`Matthew Moore
`Gabriel Gross
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`matthew.moore@lw.com
`gabe.gross@lw.com
`
`Phillip Morton
`DeAnna Allen
`Cooley LLP
`pmorton@cooley.com
`dallen@cooley.com
`
`Doris Hines
`Luke McCammon
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`dori.hines@finnegan.com
`luke.mccammon@finnegan.com
`
`
`
`FOR PATENT OWNER:
`Steven Kelber
`skelber@labgoldlaw.com
`
`Nathan Cristler
`ncristler@cristlerip.com
`
`William Mandir
`Peter Park
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`pspark@sughrue.com
`
`
`15
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