UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. AND MOTOROLA MOBILITY, LLC
`
`
`
`
`
`Petitioners
`
`
`
`v.
`
`
`
`GLOBAL TOUCH SOLUTIONS, LLC
`
`
`
`Patent Owner
`
`
`
`Patent No. 8,288,952
`
`Issued: Oct. 16, 2012
`
`Filed: Nov. 17, 2011
`
`
`
`Inventor: Frederick Johannes Bruwer
`
`Title: INTELLIGENT USER INTERFACE INCLUDING A TOUCH
`SENSOR DEVICE
`
`
`
`Inter Partes Review No.: IPR2015-01175
`
`
`
`DECLARATION OF ROBERT E. MORLEY, JR.
`
`GLOBAL EX. 2002
`Apple Inc., et al. v. Global Touch Solutions, LLC
`IPR2015-01175
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. AND MOTOROLA MOBILITY, LLC
`
`
`
`
`
`Petitioners
`
`
`
`v.
`
`
`
`GLOBAL TOUCH SOLUTIONS, LLC
`
`
`
`Patent Owner
`
`
`
`Patent No. 8,288,952
`
`Issued: Oct. 16, 2012
`
`Filed: Nov. 17, 2011
`
`
`
`Inventor: Frederick Johannes Bruwer
`
`Title: INTELLIGENT USER INTERFACE INCLUDING A TOUCH
`SENSOR DEVICE
`
`
`
`Inter Partes Review No.: IPR2015-01175
`
`
`
`DECLARATION OF ROBERT E. MORLEY, JR.
`
`GLOBAL EX. 2002
`Apple Inc., et al. v. Global Touch Solutions, LLC
`IPR2015-01175
`
`
`
`I.
`
`I, Robert E. Morley, Jr. do hereby declare and state that:
`
`
`1. My name is Robert Morley. I am a Professor in the Electrical
`
`INTRODUCTION
`
`and Systems Engineering Department at Washington University in St. Louis,
`
`Missouri. I hold the degrees of BS, MS, and D.Sc. all conferred on me by
`
`Washington University in St. Louis in 1973, 1975, and 1977, respectively.
`
`Prior to joining the faculty of Washington University in St. Louis, I worked
`
`in the industry addressing electronics and micro-electronics. I have remained
`
`active in industry during my appointment to the faculty of Washington
`
`2.
`
`University in St. Louis.
`
`I have been retained as an expert witness by counsel on behalf
`
`of Global Touch Solutions (“GTS”) in connection with a series of Inter
`
`Partes Reviews (“IPR”) of a number of patents held by GTS. These patents
`
`include, in no particular order, U.S. Patent Nos. 7,265,494; 7,994,726;
`
`7,772,781; 7,498,749; 7,329,970; 7,781,980; 8,035,623; and 8,288,952. I
`
`understand that this proceeding involves U.S. Patent No. 8,288,952 (“the
`
`‘952 Patent”). It is my understanding that the other patents are the subject of
`
`related IPRs and that the subject matter specific to each is considered in each
`
`separate Declaration.
`
`- 2
`
`
`
`3. While I have prepared a separate and distinct Declaration for
`
`that proceeding and the other related proceedings as well, it is easy to see
`
`that there is a substantial amount of technical overlap in the subject matter of
`
`these proceedings, and consequently, I have considered this family of
`
`patents together.
`
`I have reviewed and am familiar with the ‘952 Patent as well as
`
`4.
`
`its prosecution history. I also have reviewed and am familiar with the
`
`Petition filed in IPR2015-01175 (“Petition”) and the Beard, Rathmann, and
`
`Danielson patents. I also have reviewed and am familiar with the
`
`Declaration of Paul Beard, provided to me as Ex. 1003. I have also reviewed
`
`the decision of the Patent Trial and Appeal Board identified as Paper 8,
`
`dated November 17, 2015. While it is the opinion expressed in Paper 8 that
`
`the combination of Beard and Rathmann or Beard, Rathmann, and
`
`Danielson, as would have been made by one of skill in the art, renders the
`
`challenged claims obvious, in this Declaration I express the opinion that one
`
`of skill in the art would not have combined those references in the fashion
`
`relied upon, and that the challenged claims are not obvious over that
`
`combination of art as considered by a person of skill in the art around 1998.
`
`As noted above, I am familiar with the type of technology
`
`addressed in the ‘952 Patent as of 1998, which I understand to be the year in
`
`- 3
`
`5.
`
`
`
`which the patent application from which priority is claimed in the ‘952
`
`Patent was originally filed. I have been asked to provide my technical
`
`review, analysis, insights, and opinions regarding the assertions in the
`
`Petition concerning the alleged obviousness of the challenged claims of the
`
`‘952 Patent by the Beard, Rathmann, and Danielson Patents. I am being
`
`compensated for my work in connection with the GTS Patents and the
`
`several IPRs at my established rate of $500 per hour. My compensation does
`
`not depend on the outcome of this proceeding.
`
`6.
`
`In forming the opinions and beliefs expressed herein, I have
`
`relied on my own experience and knowledge, my review of the ‘952 Patent
`
`and its file history, and my review of the materials cited in the Petition filed
`
`against the ‘952 Patent, including the Beard, Rathmann, and Danielson
`
`patents. Although the other IPRs directed at the GTS patents and the art
`
`cited therein form a backdrop for my opinions, if I have relied on art other
`
`than that cited in this proceeding for my opinions in a specific or selective
`
`way, it is specifically mentioned in my Declaration.
`
`7. My experience relied on in arriving at the opinions expressed in
`
`this Declaration includes my work as a Professor of Electrical Engineering,
`
`my work in industry including the development of various microprocessor-
`
`based technologies, and my research in the area of computer architecture and
`
`- 4
`
`
`
`magnetic media. My experience and education is spelled out more fully in
`
`my curriculum vitae, submitted herewith as Exhibit 2003. My own personal
`
`experience in assisting other lawyers in the prosecution of patent
`
`applications and the enforcement of U.S. Patents naming me as the inventor
`
`or one of the inventors over the years, has allowed me to develop a
`
`fundamental understanding of the concepts underlying obviousness.
`
`i.
`
`Other Relevant Qualifications
`
`As noted above, I have had significant involvement in the
`
`8.
`
`9.
`
`preparation and prosecution of United States Patents and patent applications
`
`as well as the enforcement of United States Patents, including 17 naming me
`
`as inventor. Obviousness of claims over the prior art is a question I have
`
`addressed in fields and technologies both related to and distinct from those
`
`presented in the above-captioned IPR.
`
`I have previously served as an expert witness in litigation
`
`matters and as a consultant to companies involved in research and
`
`development of electrical devices, particularly in conjunction with the
`
`development of microprocessor-based systems. As noted above, my
`
`curriculum vitae includes a compilation of my publications and patents and
`
`relevant experience.
`
`- 5
`
`
`
`II. THE '952 PATENT
`10. The referenced Petition seeks invalidation of certain claims of
`
`the ‘952 Patent. The subject matter of this patent is generally directed to
`
`devices powered by exhaustible power source such as a battery, and
`
`specifically including a microprocessor or microchip to control electrical
`
`switching of power to a load. By reliance on a microchip or integrated
`
`circuit based switching system for a load, multiple functions can be
`
`features may be realized.
`
`combined into one device, and power savings and other advantageous
`
`11. The innovation specifically addressed in the ‘952 Patent is
`
`putting microchip control between the exhaustible power supply and the
`
`load that consumes that power supply. As indicated in the Abstract of the
`
`‘952 Patent, “the microchip is in communication with the exhaustible power
`
`source of the electronic device and controls (i) the power on/off function of
`
`the device, (ii) at least one other function of the device in response to
`
`activation and deactivation signals from the switch, and (iii) an automatic
`
`shut off function in response to the receipt of an activation signal from the
`
`switch.” The microchip controls the activation and deactivation of the
`
`energy consuming function of the device, referred to throughout the ‘952
`
`Patent as the “energy consuming load.”
`
`- 6
`
`
`
`12. The invention of the ‘952 Patent is most often illustrated as a
`
`flashlight with the consumption of the exhaustible power supply (battery) by
`
`the “power consuming load” (bulb) under the control of the microchip, as
`
`well as other functions associated with the flashlight. While the terms of the
`
`patent are applied directly to a flashlight, such that the bulb of the flashlight
`
`constitutes the electrical “load” of the device, in fact the patent makes it
`
`clear that this is for purposes of illustration only and in no way limiting of its
`
`application. For example, at Col. 6, ll. 56–61, the ‘952 Patent makes it clear
`
`that the application of the invention to a flashlight is for purposes of
`
`illustration, and the invention is applicable to many other devices by using
`
`the ‘952 Patent’s electrical switching design.
`
`13. Many other devices may be envisioned. Many devices have
`
`multiple modules that require energy. Those in the ‘952 Patent referred to as
`
`“energy consuming load” are the modules that are under the on/off control
`
`of the microchip. A load placed under the control of the microchip to limit
`
`diminishing the power supply is referred to throughout the specification and
`
`claims of the ‘952 patent as an “energy consuming load.”
`
`14. This emphasis on the advancement reflected in the invention,
`
`putting draw on the exhaustible power supply by the “energy consuming
`
`load” under the control of the microchip is reflected throughout the
`
`- 7
`
`
`
`specification. See for example Col. 1, lines 44 – 46 and the reference to
`
`“microchip controlled electrical current switching devices” as well as Col. 4,
`
`lines 30 – 46, which refers to the invention as featuring “a microchip for
`
`flashlight.”
`
`controlling the on/off function and at least one other function of the
`
`15. The nature of the invention can be further confirmed by
`
`reference to the Figures. Although many of the Figures illustrate related
`
`aspects of the same invention, the invention may be clearly viewed by
`
`reference to Figure 5. As can be clearly seen the load (indicated at 105) that
`
`draws on the battery is able to do so only through the control circuit
`
`provided by the microchip. This is most clearly set forth in text at Col. 7,
`
`lines 23 – 29 which provides: “It is important to recognize, however, that it
`
`is control circuit 201 which activates current switch 202 upon acting on an
`
`input from MMI switch 102. Unlike heretofore known prior art devices,
`
`activating switch 102 does not conduct current to load 105, but is only a
`
`command input mechanism which can, according to the invention, operate
`
`on very low current.” Clearly, control over significant draws on the
`
`exhaustible power supply – in the words of the ‘952 Patent “energy
`
`consuming loads” – is through the microchip.
`
`- 8
`
`
`
`16. Claims 1 and 26 specify a product including a power source or
`
`a connection for a power source, a microchip, a touch sensor forming a part
`
`of a user interface, and a visible indication activated by the microchip
`
`responsive to a signal from the user interface. My understanding is that the
`
`“product” of Claims 1 and 26 is the “device” or “unit” of the product claims,
`
`which as noted is illustrated in the ‘952 Patent as a flashlight. My
`
`understanding is reinforced by the fact that the interface is said to be for a
`
`product which comprises a power source or a connection for a power source
`
`(such as a battery) and at least one energy consuming load. An example of
`
`the product is illustrated in FIG. 11 of the '952 Patent, in which there is
`
`included a power source 101, a visible indication 1104, a user interface
`
`including a touch sensor 1111 and a microchip 1113, and an energy
`
`17. As noted, the ‘952 Patent illustrates the invention of the Claims
`
`consuming load 105.
`
`of the patent by reference to a flashlight, in which case the “load” is the bulb
`
`of the flashlight. Other devices are identified, and the particular device
`
`described by the patent is not limited except that it has connections to a
`
`power source and an energy consuming load of some type, with a microchip-
`
`controlled user interface device to manage both man-machine-interface
`
`(MMI) functions and conducting of current to the load.
`
`- 9
`
`
`
`18. The ‘952 Patent refers frequently to “activation.” This term
`
`seems to be used consistently to indicate turning something on.
`
`"Deactivation" would, of course, mean turning something off. Everywhere
`
`the ‘952 Patent disclosure refers to “activating” or “deactivating” it appears
`
`to refer to turning a module on or off, as opposed to merely providing some
`
`information to that module. I have set forth my opinions below, consistent
`
`with this understanding.
`
`MY OPINION
`
`III. LIST OF DOCUMENTS CONSIDERED IN FORMULATING
`19.
`
`In formulating my opinion, I have considered all of the
`
`following documents:
`
`Exhibit
`
`Description and Designation
`
`(Paper 3) Petition for Inter Partes Review of U.S. Patent No. 8,288,952,
`IPR2015-01175, (“Petition”) (Paper 3)
`1001 U.S. Patent No. 8,288,952
`1002
`File history excerpts for U.S. Patent 8,288,952
`1003 Declaration of Paul Beard
`1005 U.S. Patent 5,898,290 (“Beard”)
`1006 U.S. Patent 5,955,869 (“Rathmann”)
`1007 U.S. Patent 5,710,728 (“Danielson”)
`(Paper 8) Decision of the PTAB to Institute (Paper 8)
`2001 Deposition Transcript of Paul Beard regarding
`IPR2015-01171, IPR2015-01172, IPR2015-01173,
`IPR2015-01174, IPR2015-01175, and IPR2015-01603,
`dated February 11, 2016
`
`- 10
`
`
`
`
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`20.
`
`I am informed that it is permissible to determine the level of
`
`ordinary skill in the art from a review of relevant prior art references. For
`
`purposes of this Declaration, I am relying on the 1998 priority date listed on
`
`the face of the ‘952 Patent to establish the appropriate level of ordinary skill.
`
`21.
`
`In my view, the level of ordinary skill relevant to the ‘952
`
`Patent is evident from a review of the prior art references cited in the
`
`Petition and related art. These and other contemporaneous references invoke
`
`a limited body of knowledge in electronics and microchip controlled
`
`circuitry and related art. A student of electrical engineering with an
`
`undergraduate degree in electronics, electrical circuitry or equivalent degree,
`
`is representative of the person of skill in this art. Such an individual would
`
`be familiar with the design and application of low-level circuitry and
`
`switching functions, and have a working knowledge of microchip-based
`
`22. A degree alone does not confer on an individual real world
`
`systems design and operation.
`
`knowledge and understanding of how circuits and electronics are designed
`
`and implemented. Thus, the undergraduate degree would be augmented, in
`
`someone of ordinary skill in the art, with a year or so of work in the field
`
`- 11
`
`
`
`(such as laboratory work for hire by a private corporation or postgraduate
`
`study) preferably in the design, construction and implementation of
`
`microchip-based electronic circuitry.
`
`with or knowledge of microprocessor-based software design, as well as an
`
`understanding of then available microchips and their application.
`
`23. A person of ordinary skill in this art would have experience
`V. LEGAL STANDARDS
`24.
`
`I have not been asked to offer an opinion on the law; however, I
`
`understand that I am obliged to follow existing law. I have therefore been
`
`asked to apply the following legal principles to my analysis, and I have done
`
`so.
`
`A. Anticipation
`25.
`
`I understand that to be valid, a patent claim must be “novel,”
`
`and is invalid if “anticipated” by a single prior art reference. I further
`
`understand a reference anticipates if it discloses each and every element as
`
`arranged in the claim, so as to enable a person of ordinary skill in the art to
`
`make and use the claimed invention without undue experimentation.
`
`I understand that the express, implicit, and inherent disclosures
`
`26.
`
`of a prior art reference may be relied upon when analyzing anticipation.
`
`However, I understand the fact that a certain result or characteristic may
`
`- 12
`
`
`
`occur or may be present in the prior art is not sufficient to establish the
`
`inherency of that result or characteristic.
`
`I also understand the disclosure in an allegedly anticipating
`
`27.
`
`reference must provide an enabling disclosure of the desired subject matter.
`
`The considerations I evaluated in assessing whether a reference sets forth the
`
`elements of a claim in a sufficient manner such that a person of ordinary
`
`skill in the art could have readily made and used the claimed invention
`
`without undue experimentation include: the breadth of the claim, the nature
`
`of the invention, the state of the prior art, the level of one of ordinary skill,
`
`the level of predictability in the art, the amount of direction provided by the
`
`reference, the existence of working examples, and the quantity of
`
`experimentation needed to make or use the invention based on the content of
`
`the disclosure.
`
`B. Obviousness
`28.
`
`I understand that even if a patent is not anticipated, it is still
`
`invalid if the differences between the claimed subject matter and the prior art
`
`are such that the subject matter as a whole in my view would not have been
`
`innovative at the time the invention was made to a person having ordinary
`
`skill in the pertinent art.
`
`- 13
`
`
`
`29.
`
`I understand a person having ordinary skill in the art (i.e., a
`
`PHOSITA) is a hypothetical person who is presumed to have known the
`
`relevant art at the time of the invention was made. I understand the
`
`requirement “at the time the invention was made” is to avoid impermissible
`
`hindsight. I also understand an expert is to analyze the prior art from the
`
`perspective of a person of ordinary skill in the art and not simply provide his
`
`own personal conclusions.
`
`30.
`
`I also understand that an obviousness determination includes
`
`31.
`
`several factual inquiries, including (1) determining the scope and content of
`
`the prior art; (2) ascertaining the differences between the claimed invention
`
`and the prior art; (3) resolving the level of ordinary skill in the pertinent art;
`
`and (4) taking into consideration any secondary indicia of non-obviousness.
`
`I am informed that secondary indicia of non-obviousness may
`
`include (1) a long felt but unsolved need that was satisfied by the claimed
`
`invention; (2) commercial success attributable to the claimed invention; (3)
`
`unexpected results achieved by the claimed invention; praise by experts of
`
`the claimed invention with factual support; (4) taking of licenses under the
`
`patent by others for reasons related to the alleged nonobviousness of the
`
`claimed invention; and (5) evidence that competitors in the marketplace are
`
`copying the invention instead of using the prior art. I also understand that
`
`- 14
`
`
`
`there must be a relationship, or nexus, between any such secondary indicia
`
`and the claimed invention, i.e., objective evidence of nonobviousness must
`
`be attributable to the claimed invention. I further understand that near
`
`simultaneous invention by two or more equally talented inventors working
`
`independently may or may not be an indication of obviousness when
`
`considered in light of all the circumstances.
`
`Combining prior art elements according to known methods
`
`to yield predictable results;
`
`Simple substitution of one known element for another to
`
`obtain predictable results;
`
`Use of known technique to improve similar devices
`
`(methods, or products) in the same way;
`
`Applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results;
`
`“Obvious to try” – choosing from a finite number of
`
`identified, predictable solutions, with a reasonable
`
`expectation of success;
`
`- 15
`
`I understand a conclusion of obviousness can be based on a
`
`combination of multiple prior art references. I understand that exemplary
`
`rationales that may support a conclusion of obviousness include:
`
`32.
`(A)
`(B)
`(C)
`(D)
`(E)
`
`
`
`(F)
`
`(G)
`
`33.
`34.
`
`trends.
`
`Known work in one field of endeavor may prompt
`
`variations of it for use in either the same field or a different
`
`one based on design incentives or other market forces if the
`
`variations are predictable to one of ordinary skill in the art;
`
`Some teaching, suggestion, or motivation in the prior art
`
`that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`I further understand that an obviousness analysis recognizes
`
`I understand that if a technique has been used to improve one
`
`that market demand, rather than scientific literature, often drives design
`
`device, and a person of ordinary skill in the art would recognize it would
`
`improve similar devices in the same way, using the technique is obvious
`
`35.
`
`unless its actual application is beyond his or her skill.
`
`I also understand that practical and common sense
`
`considerations should guide a proper obviousness analysis, because familiar
`
`items may have obvious uses beyond their primary purposes. I further
`
`understand that applying common sense does not require a “specific hint or
`
`- 16
`
`
`
`suggestion in a particular reference,” only a reasoned explanation that avoids
`
`36.
`
`conclusory generalizations.
`
`I understand a person of ordinary skill in the art addressing a
`
`problem will often be able to fit the teachings of multiple publications
`
`together like pieces of a puzzle. In this regard, I understand that an
`
`obviousness analysis may take into account the inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`I understand a particular combination may be proven obvious
`
`37.
`
`38.
`
`merely by showing that it was obvious to try the combination. For example,
`
`when there is a design need or market pressure to solve a problem and/or
`
`there is a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success, a person of ordinary skill in the art has good reason
`
`to pursue the known options within his or her technical grasp. I understand
`
`that if this leads to anticipated success, it is likely the result not of innovation
`
`but of ordinary skill and common sense.
`
`I understand the combination of familiar elements according to
`
`known methods is likely obvious when it does no more than yield
`
`predictable results. When work is known in one field of endeavor, it may
`
`prompt variations of that work for use in either the same field or a different
`
`one, based on design incentives and other market forces. If a technique has
`
`- 17
`
`
`
`been used to improve one device, and a person of ordinary skill in the art can
`
`implement a predictable variation, it is likely unpatentable.
`
`It is further my understanding that to be proper for use in an
`
`39.
`
`obviousness analysis, a reference must be analogous art to the claimed
`
`invention. Accordingly, I understand that under the correct analysis, any
`
`need or problem known in the field of endeavor at the time of the invention
`
`and addressed by the claimed invention can provide a reason for combining
`
`the elements in the manner claimed.
`
`40.
`
`I understand a claim can be obvious in light of a single
`
`41.
`
`reference, without the need to combine references, if the elements of the
`
`claim that are not found explicitly or inherently in the reference can be
`
`supplied by the common sense of one of skill in the art. For example,
`
`combining two embodiments disclosed adjacent to each other in a prior art
`
`patent does not require a leap of inventiveness.
`
`I understand a claimed invention may be obvious if it involves
`
`merely simple substitution of one known element for another to obtain
`
`predictable results. I understand further that the prior art need not be like
`
`two puzzle pieces that must fit together perfectly. For example, a claimed
`
`invention may be found obvious if a person of ordinary skill in the art would
`
`view rearrangement as an obvious matter of design choice.
`
`- 18
`
`
`
`obviousness analysis requires a comparison of the properly construed claim
`
`42. Finally, I have been informed and understand that the
`VI. BEARD, RATHMANN, AND DANIELSON
`43. The Petition seeks to invalidate Claims 1-3, 16, 17, 19, 22-24,
`
`language to the prior art on a limitation-by-limitation basis.
`
`26, 27, and 38-40 in view of the combination of U.S. Patent No. 5,898,290
`
`to Beard and U.S. Patent No. 5,955,869 in view of Rathmann. The Petition
`
`also seeks to invalidate Claims 4 and 14 in view of the combination of
`
`Beard, Rathmann, and U.S. Patent No. 5,710,728 to Danielson. The
`
`Decision to Institute, Paper No. 8, refers to these references by the last name
`
`of the first named inventor, and I shall refer to them in the same fashion in
`
`this Declaration.
`
`44. Beard describes an intelligent battery pack with a
`
`microcontroller and a battery status indicator for use with a portable
`
`electronic device. Ex. 1005, Col. 1, ll. 18–21; 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, Col. 6, ll. 57–67, Col. 7, ll. 16-33, Col. 11, ll. 12–16; Ex. 1003 ¶ 72.
`
`Figure 11 of Beard is reproduced below.
`
`- 19
`
`
`
`45. Figure 11 depicts battery pack 201, and display 225 which
`
`
`
`provides an operator with an indication of battery capacity whether or not
`
`the battery pack is inserted into portable electronic device 203. Ex. 1005,
`
`Col. 11, ll. 10–13. When fully inserted, battery pack contacts 241, 243, and
`
`245 engage with 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 Col. 11, ll. 67– Col. 12, l. 4.
`
`46. Rathmann describes a “smart battery for use in an intelligent
`
`device having power management capabilities.” Ex. 1006, Col. 1, ll. 12–16,
`
`Col. 1, l. 65– Col. 3, l. 7. The battery pack in Rathmann includes a
`
`microcontroller, a battery-power indicator comprising LEDs, and a user-
`
`- 20
`
`
`
`interface switch. Id. at Col. 1, l. 65– Col. 2, l. 2, Col. 3, ll. 1–7, Col. 16, ll.
`
`24–38, 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 Col. 16,
`
`ll. 24–38; Ex. 1003 ¶ 91. Rathmann provides detailed instructions on how
`
`the microprocessor implements illumination of the correct number of LEDs
`
`1003 ¶¶ 89–90.
`
`based on battery charge. Id. at Col. 58, l. 31– Col. 59, l. 32, Fig. 34; Ex.
`
`47. Beard and Danielson complement each other, with Beard
`
`primarily directed to the battery pack and Danielson primarily directed to the
`
`corresponding portable electronic terminal device. Ex. 1003, ¶ 94; Ex. 2001
`
`p. 218, ll. 16-24. Danielson is cited to identify specific features of
`
`48. While the specific features recited in certain dependent claims
`
`dependent Claims 4 and 14.
`
`are reflected, in isolation, in Danielson, none of these references really
`
`impact the question of obviousness of independent Claims 1 and 26 which
`
`are said to be rendered obvious by reliance on Beard and Rathmann alone.
`
`Accordingly, I have focused my consideration of the arguments presented
`
`with respect to Claims 1 and 26 on whether Beard taken in view of
`
`Rathmann renders Claims 1 and 26 obvious.
`
`- 21
`
`
`
`VII. BEARD AND RATHMANN DO NOT RENDER CLAIMS 1, 3, 5,
`49. The Decision to Institute concludes that the evidence then-
`
`6, 10, 19, AND 27 OBVIOUS
`
`considered supports a conclusion that, more likely than not, the combination
`
`of Beard and Rathmann would render Claims 1-3, 16, 17, 19, 22-24, 26, 27,
`
`and 38-40 obvious. The Board’s Decision appears to preliminarily accept
`
`the arguments set forth in the Petition, including 1) the claimed “load” is
`
`simply an energy consuming component of the terminal device 203, 2) the
`
`claimed “product housing” can include a combination of housings of two
`
`self-contained devices, and 3) the functions of Claims 2, 3, 23, and 24 may
`
`be the same as activation of a visible indication in Claim 1. Paper 8, pp. 6-
`
`11. On these points, I disagree with Petitioner’s contentions, as will be
`
`A. Beard in view of Rathmann Does Not Suggest the Load
`50. Both of Independent Claims 1 and 26 recite a product
`
`explained below.
`
`of the ‘952 Patent
`
`comprising an energy consuming load, a power source (or connection for a
`
`power source), a microchip, a touch sensor forming part of a user interface,
`
`and a visible indication activated by the microchip. An example of such a
`
`product is shown in FIG. 11 of the ‘952 Patent, as well as its corresponding
`
`- 22
`
`
`
`description, where there is provided a microchip that can operate the visible
`
`indication and the load independently of each other.
`
`51.
`
`I disagree with the Petitioner’s contention that the “load” of the
`
`claims can be any energy consuming component in a system. Paper 3 at p.
`
`23, Ex. 1003 at ¶ 126. Such a construction completely ignores the context of
`
`the Patent which, as described above, uses the term carefully and
`
`consistently in relation to the microchip of the user interface, i.e., as an
`
`energy consuming component operable by the microchip of the user
`
`interface that controls current from a power supply to it.
`
`52. None of the components in the terminal device 203 of Beard are
`
`operable by the control circuit 223 of the battery pack 201, and none are
`
`provided power under control of the control circuit 223. Instead, Beard
`
`suggests, at most, the power regulation/supply 257, the removal sensing
`
`circuitry 261, and the control circuit 263 (all located within the terminal
`
`device 203 and operated independently of the control circuit 223 of the
`
`battery pack 201) as controlling power supply to terminal device 203 from
`
`the battery pack 201. In other words, the “load” in Beard (the components
`
`in the terminal device 203) is detached and independent, functionally and
`
`structurally, from the control circuit 223 and user interface of the battery
`
`pack 201. Beard, Col. 11, l. 7 – Col. 12, l. 25 and FIG. 11. For at least this
`
`- 23
`
`
`
`reason, the combination of Beard and Rathmann would not render obvious,
`
`to one of ordinary skill in the art, claims 1-3, 16, 17, 19, 22-24, 26, 27, and
`
`53. On this point, I disagree with the testimony of Petitioner’s
`
`38-40.
`
`expert, Paul Beard, that the Beard reference discloses the control circuit 223
`
`controlling power supply current to or operations of components of the
`
`terminal device 203. Ex. 2001 p. 164, l. 5- p. 165, l. 11, p. 166, l.1- p. 167, l.
`
`12, p. 180, l. 6- p. 181, l. 21 and p. 182, l. 17- p. 187, l. 4. I am perplexed as
`
`to how Mr. Beard, himself an inventor of the Beard reference, has reached
`
`this conclusion. The sole function of the battery pack control circuit 223 in
`
`Beard is to provide charge status information of the battery in battery pack
`
`201, with no functionality directed at power supply to or control of the
`
`terminal device 203. This is further confirmed by the disclosure of Beard
`
`itself, which discloses the charge status information function being provided
`
`whether or not the battery pack 201 is even connected to the terminal device
`
`54. Contrary to Mr. Beard’s testimony, Ex. 2001 at p. 164, l. 5-p.
`
`203. Col. 11, ll. 41-50.
`
`167, l. 12, the Beard reference does not suggest any shutdown command sent
`
`from the control circuit 223 of the battery pack 201 to the terminal device
`
`203. While the reference, Col. 11, l. 67 – Col. 12, l. 4, does disclose the
`
`- 24
`
`
`
`terminal device 203 entering a fully operational state when the operator so
`
`desires (by installing the battery pack 201 into the terminal device 203), one
`
`of ordinary skill in the art would not consider that to require any command
`
`sent from the battery pack 201. In fact, the complimentary Danielson
`
`reference makes clear that the shutdown operation is performed within the
`
`terminal device in response to the terminal device detecting a low voltage
`
`condition of its power source, which could be the battery pack of Beard.
`
`Danielson, Col. 23, ll. 10-66.
`
`55.
`
`I also disagree with Mr. Beard’s testimony that the pre-removal
`
`shutdown function of the terminal device 203 involves the control circuitry
`
`223 of the battery pack 201. This mischaracterization is particularly
`
`puzzling, given that the Beard reference clearly describes this function as
`
`being performed by the terminal device 203, when the terminal device 203
`
`power. Ex. 1005, Col. 12, ll. 4-13.
`
`detects that the contacts 245 and 255 are separated removing the source of
`
`56. Furthermore, there is no reason to believe that a pre-removal
`
`shutdown function in the alternate embodiment in Figure 12 of Beard is any
`
`different. In any case, the embodiment of Figure 12 is not applicable to the
`
`claims of the ‘952 Patent, since the touch sensors are deactivated when the
`
`- 25
`
`
`
`battery pack in that embodiment
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
