UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC. AND MOTOROLA MOBILITY, LLC
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`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
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`
`
`Patent Owner
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`
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`Patent No. 8,288,952
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`Issued: Oct. 16, 2012
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`Filed: Nov. 17, 2011
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`
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`Inventor: Frederick Johannes Bruwer
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`Title: INTELLIGENT USER INTERFACE INCLUDING A TOUCH
`SENSOR DEVICE
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`
`
`Inter Partes Review No.: IPR2015-01175
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`
`
`PATENT OWNER'S RESPONSE
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`

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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................... I
`TABLE OF CONTENTS ......................................................................................... .. I
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`TABLE OF AUTHORITIES .................................................................................. IV
`TABLE OF AUTHORITIES ................................................................................ .. IV
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE ......................................... VI
`STATEMENT OF MATERIAL FACTS IN DISPUTE ....................................... .. VI
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`EXHIBIT LIST ...................................................................................................... VII
`EXHIBIT LIST .................................................................................................... .. VII
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`I.
`1.
`
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`STATEMENT OF RELIEF REQUESTED .................................................. ..1
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`II.
`11.
`
`INTRODUCTION ........................................................................................... 3
`INTRODUCTION ......................................................................................... ..3
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`III. TESTIMONY OF PETITIONERS' EXPERT ................................................. 8
`III.
`TESTIMONY OF PETITIONERS' EXPERT ............................................... ..8
`
`IV. THE LAW ..................................................................................................... 11
`IV.
`THE LAW ................................................................................................... .. 11
`
`A.
`A.
`
`CLAIM CONSTRUCTION ................................................................ 11
`CLAIM CONSTRUCTION .............................................................. .. 11
`
`B.
`B.
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`OBVIOUSNESS ................................................................................. 13
`OBVIOUSNESS ............................................................................... .. 13
`
`V.
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 14
`CLAIM CONSTRUCTION ........................................................................ .. 14
`
`A.
`A.
`
`"USER INTERFACE" (CLAIMS 1 AND 26) .................................... 15
`"USER INTERFACE" (CLAIMS 1 AND 26) .................................. .. 15
`
`B.
`B.
`
`C.
`C.
`
`D.
`D.
`
`E.
`E.
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`“ENERGY CONSUMING LOAD” (CLAIMS 1 AND 26) ............... 16
`“ENERGY CONSUMING LOAD” (CLAIMS 1 AND 26) ............. .. 16
`
`“TOUCH SENSOR FUNCTIONS” (CLAIM 1) AND “TOUCH
`“TOUCH SENSOR FUNCTIONS” (CLAIM 1) AND “TOUCH
`SENSING FUNCTIONS” (CLAIM 26) ............................................. 20
`SENSING FUNCTIONS” (CLAIM 26) ........................................... ..2o
`
`“SELECTION AND ACTIVATION OF A FUNCTION OR MODE
`“SELECTION AND ACTIVATION OF A FUNCTION OR MODE
`OF THE PRODUCT IN RESPONSE TO A FURTHER
`OF THE PRODUCT IN RESPONSE TO A FURTHER
`ACTIVATION SIGNAL(S) RECEIVED FROM THE USER
`ACTIVATION SIGNAL(S) RECEIVED FROM THE USER
`INTERFACE” (CLAIM 2) .................................................................. 24
`INTERFACE” (CLAIM 2) ................................................................ ..24
`
`“A FUNCTION THAT WAS ACTIVATED IN RESPONSE TO AN
`“A FUNCTION THAT WAS ACTIVATED IN RESPONSE TO AN
`ACTIVATION SIGNAL RECEIVED FROM SAID USER
`ACTIVATION SIGNAL RECEIVED FROM SAID USER
`INTERFACE” (CLAIMS 3 AND 24) ................................................. 27
`INTERFACE” (CLAIMS 3 AND 24) ............................................... ..27
`
`F.
`F.
`
`“PRODUCT FUNCTIONS” (CLAIM 22).......................................... 29
`“PRODUCT FUNCTIONS” (CLAIM 22) ........................................ ..29
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`
`
`i
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`

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`VI. BEARD IN VIEW OF RATHMANN DOES NOT RENDER CLAIMS 1-3,
`VI.
`BEARD IN VIEW OF RATHIVIANN DOES NOT RENDER CLAHVIS 1-3,
`16, 17, 19, 22-24, 26, 27, AND 38-40 OBVIOUS ........................................ 30
`16, 17, 19, 22-24, 26, 27, AND 38-40 OBVIOUS ...................................... ..30
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`A.
`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE "A
`BEARD IN VIEW OF RATHJVIANN DOES NOT DISCLOSE "A
`PRODUCT COMPRISING A POWER SOURCE, OR A
`PRODUCT COMPRISING A POWER SOURCE, OR A
`CONNECTION FOR A POWER SOURCE, AND AT LEAST ONE
`CONNECTION FOR A POWER SOURCE, AND AT LEAST ONE
`ENERGY CONSUMING LOAD" (CLAIMS 1-3, 16, 17, 19, 22-24,
`ENERGY CONSUMING LOAD" (CLAIMS 1-3, 16, 17, 19, 22-24,
`26, 27, AND 38-40) ............................................................................. 30
`26, 27, AND 38-40) ........................................................................... ..30
`
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE THE
`BEARD IN VIEW OF RATHIVIANN DOES NOT DISCLOSE THE
`“MICROCHIP AT LEAST PARTIALLY IMPLEMENTING THE
`“MICROCHIP AT LEAST PARTIALLY IMPLEMENTING THE
`TOUCH SENSOR FUNCTIONS” (CLAIM 1) OR THE
`TOUCH SENSOR FUNCTIONS” (CLAIM 1) OR THE
`“MICROCHIP AT LEAST PARTIALLY IMPLEMENTING THE
`“MICROCHIP AT LEAST PARTIALLY IMPLEMENTING THE
`TOUCH SENSING FUNCTIONS” (CLAIM 26) (CLAIMS 1-3, 16,
`TOUCH SENSING FUNCTIONS” (CLAIM 26) (CLAIMS 1-3, 16,
`17, 19, 22-24, 26, 27, AND 38-40) ..................................................... 45
`17, 19, 22-24, 26, 27, AND 38-40) ................................................... ..45
`
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`"SELECTION AND ACTIVATION OF A FUNCTION OR MODE
`"SELECTION AND ACTIVATION OF A FUNCTION OR MODE
`OF THE PRODUCT IN RESPONSE TO A FURTHER
`OF THE PRODUCT IN RESPONSE TO A FURTHER
`ACTIVATION SIGNAL(S) RECEIVED FROM THE USER
`ACTIVATION SIGNAL(S) RECEIVED FROM THE USER
`INTERFACE" (CLAIM 2) .................................................................. 48
`INTERFACE" (CLAIM 2) ................................................................ ..48
`
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`"AUTOMATICALLY DEACTIVATING A FUNCTION THAT
`"AUTOMATICALLY DEACTIVATING A FUNCTION THAT
`WAS ACTIVATED IN RESPONSE TO AN ACTIVATION
`WAS ACTIVATED IN RESPONSE TO AN ACTIVATION
`SIGNAL RECEIVED FROM SAID USER INTERFACE, A
`SIGNAL RECEIVED FROM SAID USER INTERFACE, A
`PREDETERMINED PERIOD OF TIME AFTER IT WAS
`PREDETERMINED PERIOD OF TIME AFTER IT WAS
`ACTIVATED" (CLAIMS 3 AND 24) ................................................ 50
`ACTIVATED" (CLAIMS 3 AND 24) .............................................. ..5o
`
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`"WHEREIN THE POWER SOURCE IS ENCLOSED IN THE
`"WHEREIN THE POWER SOURCE IS ENCLOSED IN THE
`PRODUCT HOUSING" (CLAIM 19) ................................................ 51
`PRODUCT HOUSING" (CLAIM 19) .............................................. ..51
`
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE
`"ACTIVATING OR DEACTIVATING PRODUCT FUNCTIONS IN
`"ACTIVATING OR DEACTIVATING PRODUCT FUNCTIONS IN
`RESPONSE TO SIGNALS RECEIVED FROM THE USER
`RESPONSE TO SIGNALS RECEIVED FROM THE USER
`INTERFACE" (CLAIM 22) ................................................................ 54
`INTERFACE" (CLAIM 22) .............................................................. ..54
`
`VII. BEARD IN VIEW OF RATHMANN AND DANIELSON DOES NOT
`VII.
`BEARD IN VIEW OF RATHIVIANN AND DANIELSON DOES NOT
`RENDER CLAIMS 4 AND 14 OBVIOUS................................................... 56
`RENDER CLAIMS 4 AND 14 OBVIOUS ................................................. ..56
`
`
`
`ii
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`

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`
`
`A.
`A.
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`BEARD IN VIEW OF RATHMANN AND DANIELSON DOES
`BEARD IN VIEW OF RATI-HVIANN AND DANIELSON DOES
`NOT CURE THE ABOVE-DESCRIBED DEFICIENCIES OF
`NOT CURE THE ABOVE—DESCRIBED DEFICIENCIES OF
`BEARD IN VIEW OF RATHMANN (CLAIMS 4 AND 14) ............ 56
`BEARD IN VIEW OF RATHMANN (CLAHVIS 4 AND 14) .......... ..56
`
`VIII. CONCLUSION .............................................................................................. 57
`VIII. CONCLUSION ............................................................................................ ..5 7
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`iii
`iii
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`

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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
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`
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`
`
`Alloc, Inc. v. USITC, 342 F.3d 1361 (Fed. Cir. 2003) ............................... 12, 16, 20
`
`Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249 (Fed.
`Cir. 2009) .......................................................................................................25
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed.Cir.2006) ...................................28
`
`CAE Screenplates Inc. v. Heirich Fiedler GmbH & Co. KG, 224 F.3d 1308 (Fed.
`Cir. 2000) .......................................................................................................25
`
`Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361 (Fed. Cir.
`2012) ....................................................................................................... 27, 28
`
`Digital-Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270 (Fed.
`Cir. 2012) .......................................................................................................28
`
`Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir. 2004) ...........................................25
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ........................................................13
`
`Hockerson–Halberstadt v. Converse Inc., 183 F.3d 1369 (Fed. Cir. 1999) ............27
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ..............................................................14
`
`In re NTP, Inc., 654 F.3d 1279 (Fed.Cir.2011) .......................................................12
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed.Cir. 2010) ......................................11
`
`Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 227 USPQ 543 (Fed. Cir.
`1985) ..............................................................................................................53
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ........................................ 13, 14
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) .11
`
`Medtronic, Inc., et al. v. Troy R. Norred, M.D., Case IPR2014-00110 at Paper No.
`23 (PTAB, October 8, 2014) .........................................................................11
`
`Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340 (Fed.Cir.2004) ..............12
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) .....................11
`
`
`
`iv
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`

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`Microsoft Corp. v. Proxyconn, Inc., Case IPR2012-00026 ............................. passim
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................. 11, 28
`
`SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360 (Fed.Cir.2010) .. 27, 28
`
`Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.3d 1017 (Fed. Cir. 1987) .........25
`
`Toro Co. v. White Consol. Indus., 199 F.3d 1295 (Fed.Cir.1999) ..........................12
`
`Watts v. XL Sys., Inc., 232 F.3d 877 (Fed.Cir.2000) ..............................................12
`
`Statutes
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`35 U.S.C. § 103(a) ...................................................................................................13
`
`Rules
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`37 C.F.R. § 42.100(b) ....................................................................................... 11, 16
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`37 C.F.R. §42.23(a) .................................................................................................. vi
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`77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) .........................................................10
`
`
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`v
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`

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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioners did not submit statements of material facts in their petition for
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`Inter Partes Review. Accordingly, no response is due pursuant to 37 C.F.R.
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`§42.23(a), and no facts are admitted.
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`vi
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`

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`EXHIBIT LIST
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`Exhibit
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`DESCRIPTION
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`Deposition Transcript of Paul Beard regarding IPR2015-01171,
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`2001
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`IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-01175,
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`and IPR2015-01603, dated February 11, 2016
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`2002
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`Expert Declaration of Robert E. Morley, Jr.
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`2003
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`Curriculum Vitae of Robert E. Morley, Jr.
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`
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`vii
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`

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`I.
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`STATEMENT OF RELIEF REQUESTED
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`In its Decision, dated November 17, 2015 ("Decision"), the Patent Trial and
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`Appeal Board ("Board") instituted the present Inter Partes Review ("IPR")
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`proceeding with respect to U.S. Patent No. 8,288,952 B2 (Ex. 1001, "the '952
`
`Patent") on the following grounds:
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`• Ground 1: Claims 1-3, 16, 17, 19, 22-24, 26, 27, and 38-40 obvious
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`under 35 U.S.C. § 103(a) over U.S. Patent No. 5,898,290 ("Beard")
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`(Ex. 1005) in view of U.S. Patent No. 5,955,869 ("Rathmann") (Ex.
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`1006); and
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`• Ground 2: Claims 4 and 14 obvious under 35 U.S.C. § 103(a) over
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`Beard in view of Rathmann and U.S. Patent No. 5,710,728
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`("Danielson") (Ex. 1007).
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`Patent Owner, Global Touch Solutions, LLC (“Patent Owner”), respectfully
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`requests the Board to find that Petitioners, Apple Inc. and Motorola Mobility LLC.
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`(collectively, "Petitioners"), have failed to meet their burden of proving by a
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`preponderance of the evidence that: i) Claims 1-3, 16, 17, 19, 22-24, 26, 27, and
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`38-40 are obvious over Beard in view of Rathmann; ii) and Claims 4 and 14 are
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`1
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`

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`obvious over Beard in view of Rathmann and Danielson, at least for the reasons set
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`forth in this Patent Owner's Response, and summarized below.
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`Patent Owner respectfully submits that, with respect to the claimed "energy
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`consuming load," Petitioners rely on a faulty construction that unreasonably
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`defines this term to be so broad that it could include any part of a product that
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`consumes energy. This construction ignores the context of the claim and the use of
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`the term in the specification, which plainly require the energy consuming load to
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`be operable by the microchip of the user interface. Based on this faulty
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`construction, Petitioners improperly cite to any component of the portable
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`electronic device disclosed in FIG. 11 of Beard for an alleged teaching of the
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`claimed load. Paper 3 at p. 28. Under a proper construction of the "energy
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`consuming load," however, these components of Beard's portable electronic device
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`cannot reasonably be said to correspond to the claimed load, since these
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`components are not operable by the microchip of the user interface.
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`Petitioners' erroneous reliance on the cited art is fatally defective to the
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`Petition's proposed rejections of claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-
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`40, as the Petition fails to establish that all of the limitations of the challenged
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`claims are within or obvious from the teachings of the prior art.
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`2
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`II.
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`INTRODUCTION
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`The '952 Patent is directed to an interface unit including a microchip-
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`controlled switch that is capable of managing conducting of current to a load as
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`well as “man-machine-interface” functions (or “MMI” functions) in an electronic
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`device. Ex. 1001 at 3:61-66; see also Ex. 1003 (Declaration of Paul Beard in
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`Support of Petition for Inter Partes Review) at ¶ 60. Central to the invention of the
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`'952 Patent is the microchip controlling power supply from a power source to the
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`load. Ex. 2002 (Declaration of Robert E. Morley, Jr.) at ¶¶ 11-15. According to
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`the '952 Patent, the MMI functions managed by the microchip are controlled by
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`low current signals using touch pads or touch sensors. Ex. 1001 at 3:66-4:1. Low
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`current switches are described as “smaller, more reliable, less costly, easier to seal
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`and less vulnerable to the effects of corrosion and oxidation” than conventional
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`mechanical switches that were used as the actual conductors to provide current to
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`the load. Id. at 3:32-43 and 4:2-4. The '952 Patent explains that utilizing low
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`current switches, such as touch sensors, in connection with the microchip makes it
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`“possible to control the functions of the device in an intelligent manner by the
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`same microchip which provides the MMI functions.” Id. at 4:4-8. As a result,
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`“more reliable, intelligent and efficient electrical devices can be obtained which are
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`cheaper and easier to manufacture than prior art devices.” Id. at 4:8-11.
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`3
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`In one embodiment depicted in Figure 1, above, the '952 Patent describes a
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`
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`circuit 100 of an electronic device including a microchip 103 provided with a
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`“microchip controlled input activator/deactivator 102,” which may be a touch
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`sensor. Id. at 6:47-52 and 7:26-31. When a user activates the input switch 102, it
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`is recognized as a command input to the microchip 103. Id. at 7:15-17. Instead of
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`conducting current to the load, the switch 102 is provided as “only a command
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`input mechanism” that operates on low current. Id. at 7:26-31. Upon activation of
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`the switch 102, the microchip 103 can allow current to pass from power source 101
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`to load 105. Id. at 7:18-23. Load 105 is described in the context of a light in a
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`flashlight device, but the '952 Patent explains that the flashlight is only an example
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`of a device that the circuit can be applied to, and that it is equally applicable to
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`other devices. Id. at 6:56-61.
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`4
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`In addition to controlling the power supply to the load with the low current
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`switch as an input to the microchip, the '952 Patent provides other embodiments in
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`which other functions of the device may also be controlled by the microchip of the
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`user interface. As the '952 Patent explains, “more intelligent functions” can be
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`implemented, “such as, but not limited to, intermittent flashing, the flashing of a
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`conspicuous pattern such as Morse code, dimming functions, battery maintenance,
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`battery strength/level, etc.” Id. at 8:40-47. The '952 Patent teaches that the
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`different functions may be activated by different activation sequences of the low-
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`current switch. Id. at 10:44-47. As an example of the “different commands” that
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`can be implemented, a “single closure” of the switch could cause the microchip to
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`activate the current switch to supply power to the load for a predetermined time,
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`while “two successive closures” can instruct the microchip to intermittently
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`activate the current switch to the load for a different time and/or sequence, such as
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`to display an S.O.S. sequence. Id. at 10:47-52.
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`5
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`In a further embodiment, depicted in Figure 11 above, the '952 Patent
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`describes providing an indicator device to indicate a condition of the device, such
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`as the condition of the battery, or to assist in locating the device. Id. at 9:46-50.
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`The indicator device 1104 may be realized as an LED that is illuminated in this
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`embodiment when the microchip 1113 sets the pin connected to the line 1114,
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`which is also connected to the switch 1111, to a high output state. Id. at 9:52-57.
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`In other embodiments, the pin controlling the indicator 1104 may be a different pin
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`than the pin connected to the switch 1111. Id. at 9:50-52. Accordingly, the
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`microchip 1113 can control the visible indicator 1104 to be activated
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`independently of activating or operating the load 105.
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`Ultimately, by incorporating an intelligent microchip with a low current
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`switch (such as a touch sensor) to control power supply to a load, the '952 Patent
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`provides a user interface that is more practical, durable, and cost efficient than
`
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`6
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`

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`conventional current conducting switches, and that allows a user to selectively and
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`independently control various different functions in a convenient manner.
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`The ‘952 Patent is a continuation of U.S. Patent Application No. 12/855,006
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`("'006 Application"), filed August 12, 2010 and now U.S. Patent No. 7,994,726.
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`The '006 Application is a continuation of U.S. Patent Application No. 12/239,369
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`("'369 Application"), filed September 26, 2008 and now U.S. Patent No. 7,781,980.
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`The '369 Application is a continuation of U.S. Patent Application No. 11/961,723
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`("'723 Application"), filed December 20, 2007 and now U.S. Patent No. 7,443,101.
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`The '723 Application is a divisional of U.S. Patent Application No. 11/060,329
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`("'329 Application"), filed February 17, 2005 and now U.S. Patent No. 7,336,037.
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`The '329 Application is a continuation of U.S. Patent Application No. 10/690,423
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`("'423 Application"), filed October 21, 2003 and now U.S. Patent No. 6,952,084.
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`The '423 Application is a continuation of U.S. Patent Application No. 10/365,042
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`("'042 Application"), filed February 12, 2003 and now U.S. Patent No. 6,650,066.
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`The '042 Application is a continuation of U.S. Patent Application No. 09/793,303
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`("303 Application"), filed February 26, 2001 and now U.S. Patent No. 6,621,225.
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`The '303 Application is a continuation of U.S. Patent Application No. 09/169,395
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`("'395 Application"), filed October 9, 1998 and now U.S. Patent No. 6,249,089.
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`7
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`III. TESTIMONY OF PETITIONERS' EXPERT
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`Patent Owner respectfully requests that the Board assess the weight to be
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`given to the Declaration testimony of Petitioners' expert, Paul Beard, in view of
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`Mr. Beard's deposition testimony (Ex. 2001). On this point, Patent Owner
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`respectfully submits that little to no weight should be given to Mr. Beard's
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`Declaration testimony, as his deposition testimony should raise doubts as to his
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`credibility. This is primarily because throughout his deposition, much of Mr.
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`Beard's testimony was outright inaccurate, particularly as relates to his own prior
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`art references (Beard and Danielson) as will be explained throughout this Patent
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`Owner's Response.
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`Additionally, Mr. Beard was evasive and either unable or unwilling to
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`answer simple questions with respect to the patents at issue and cited prior art
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`references of which he is an inventor (namely, the Beard and Danielson
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`references). For example, when asked to explain certain portions of his
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`Declaration regarding the patents, Mr. Beard would simply read back his
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`Declaration verbatim in lieu of answering. See, e.g., Ex. 2001 at 40:8-42:22 (in
`
`response to repeated questions as to his understanding of whether the microchip-
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`controlled switch of the patents manages current conducting to the load, Mr. Beard
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`simply read back his declaration: "Microchip 103 transfers power to the load.").
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`8
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`At other times, Mr. Beard was unable or simply refused to answer basic
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`questions about the patents at issue without reference to his Declaration (which, at
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`times, he was asked by Patent Owner's counsel to set aside due to his above-
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`described behavior of simply reading back the Declaration). See, e.g., id. at 64:13-
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`71:13 and 234:2-235:14. For example:
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`Q. Okay. So you cannot recall at this moment
`
`without looking at your declaration what your opinion is
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`on whether or not the microchip in Figure 11 manages
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`current conducting from the power source to the load as
`
`described in the specification?
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`MR. GROSS:
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`Object to the form.
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`THE WITNESS: Can I look at the specification?
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`BY MR. KIBLAWI:
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`Q. Yes, yes. But please answer in your own words.
`
`A.
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`So I spent a lot of time on this report, and, you
`
`know, it's difficult for me to give you an accurate answer
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`without, you know, the same level of detail that I went
`
`through originally. The diagram on its own is not
`
`sufficient to make that determination, and I don't readily
`
`see a reference from Figure 11 in the specification that
`
`says whether it is or isn't, right off the bat. So just here,
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`you know, without looking at my declaration and, you
`
`
`
`9
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`

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`
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`
`
`
`
`
`
`
`know, a couple of minutes of reading the specification, I
`
`cannot make that determination for you accurately.
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`Id. at 69:18-70:16.
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`These problems were particularly exacerbated by excessive speaking
`
`objections raised by Petitioners' counsel throughout the deposition. For example,
`
`Petitioners' counsel repeatedly objected on the grounds of mischaracterization of
`
`the testimony or a document, when no such mischaracterization took place. See,
`
`e.g., id. at 41:13-14, 48:23-25, 57:5-6, 62:20-21, 75:11-12, 80:8-9, 82:8-9, 82:19-
`
`20, 83:22-23, 133:9-10, 170:22-23, 174:9-10, 180:1-2, 199:3-4, 201:23-24, 226:24-
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`25, 228:23-24, 232:13-14 (and surrounding portions). One representative example:
`
`Q.
`
`Is it your understanding that Figure 22 corresponds
`
`to the system illustrated in Figure 1 of Danielson?
`
`MR. GROSS:
`
`Objection to form. I'll object that it
`
`mischaracterizes the document.
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`Id. at 226:21-25.
`
`The PTAB has cautioned that, where counsel violates the Office Patent Trial
`
`Practice Guide's standards for objections during depositions (77 Fed. Reg. 48,756,
`
`48,772 (Aug. 14, 2012)), appropriate sanctions include "exclusion of the primary
`
`declaration testimony from the witness being deposed." Medtronic, Inc., et al. v.
`
`Troy R. Norred, M.D., Case IPR2014-00110 at Paper No. 23 (PTAB, October 8,
`
`
`
`10
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`

`
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`2014). In light of Mr. Beard's evasive, non-responsive, and demonstrably
`
`
`
`
`
`
`
`inaccurate testimony, as well as counsel's improper objections, Patent Owner
`
`submits that little, if any, weight should be given to his Declaration testimony.
`
`IV. THE LAW
`
`A. Claim Construction
`
`A claim in an Inter Partes Review proceeding is interpreted according to its
`
`broadest reasonable construction in light of the specification. 37 C.F.R. §
`
`42.100(b). Here, "claims 'must be read in view of the specification of which they
`
`are a part.'" Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en
`
`banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
`
`1995) (en banc)).
`
`Additionally, claim terms should not be construed "during IPR so broadly
`
`that its constructions are unreasonable under general claim construction
`
`principles.... Rather, 'claims should always be read in light of the specification and
`
`teachings in the underlying patent.'" Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
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`1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255,
`
`1260 (Fed. Cir. 2010)). Under the broadest reasonable interpretation standard, "the
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`Board's construction 'cannot be divorced from the specification and the record
`
`evidence.'" Id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)).
`
`
`
`11
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`

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`
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`While impermissible importation of limitations from the specification is to
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`
`
`
`
`
`
`be avoided, a claim will nonetheless be construed to require a feature where the
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`"very character of the invention" as disclosed in the specification requires this
`
`feature. Alloc, Inc. v. USITC, 342 F.3d 1361, 1369-1370 (Fed. Cir. 2003); see also
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`Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1351–52 (Fed. Cir. 2004)
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`(construing claim to require feature “central to the functioning of the claimed
`
`invention[ ]”); Watts v. XL Sys., Inc., 232 F.3d 877, 882–83 (Fed. Cir. 2000)
`
`(construing claim to include limitation, in part, because specification limited
`
`invention to embodiments with that feature); Toro Co. v. White Consol. Indus., 199
`
`F.3d 1295, 1300–01 (Fed. Cir. 1999) (construing claim to require particular
`
`configuration where specification described importance of the configuration and
`
`did not disclose other configurations).
`
`For example, where a particular feature is included in all embodiments and
`
`figures of the specification, it is proper to construe a claim to require this feature.
`
`See Alloc, 342 F.3d at 1370. Additionally, where the specification distinguishes
`
`over the prior art on the basis of a particular feature, it is proper to construe a claim
`
`to require this feature. See id. at 1371.
`
`
`
`12
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`

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`
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`B. Obviousness
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`
`
`
`
`
`
`A patent may not be obtained "if the differences between the claimed
`
`invention and the prior art are such that the claimed invention as a whole would
`
`have been obvious before the effective filing date of the claimed invention to a
`
`person having ordinary skill in the art to which the claimed invention pertains." 35
`
`U.S.C. § 103(a). In determining obviousness a fact-finder must consider (1) the
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`scope and content of the prior art; (2) the differences between the prior art and the
`
`claimed invention; (3) the level of ordinary skill in the art; and (4) objective
`
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966);
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406–407 (2007) (noting that the four
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`Graham factors “continue to define the inquiry that controls”).
`
`As this Board noted in Microsoft Corp. v. Proxyconn, Inc., a finding of
`
`obviousness requires that each claim element be taught or suggested by the prior
`
`art. Microsoft Corp. v. Proxyconn, Inc., Case IPR2012-00026 at Paper No. 19
`
`(PTAB, Dec. 21, 2012 ("To establish obviousness of a claimed invention, all the
`
`claim limitations must be taught or suggested by the prior art."). However, merely
`
`teaching or suggesting each claim element is not sufficient, as "there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`
`
`13
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`

`
`
`conclusion of obviousness." KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d
`
`
`
`
`
`
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`977, 988 (Fed. Cir. 2006)).
`
`V. CLAIM CONSTRUCTION
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`In the Petition, Petitioners proposed constructions of certain claim terms.
`
`The Board construed one of the terms proposed by Petitioners ("mains"). Patent
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`Owner accepts the Board's construction of "mains" for purposes of this Inter
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`Partes Review, and respectfully further submits the following constructions of
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`additional terms. Patent Owner further notes that proposed constructions for one
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`or more other terms are forwarded in the Patent Owner's Response for related
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`IPR2015-01151, but omitted herein since they are not relevant to issues in the
`
`instant IPR.
`
`Patent Owner submits that a person of ordinary skill in the art, at the time of
`
`the invention, would have been a person with a Bachelor of Science degree in
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`electrical engineering or a related field, or some coursework comparable in the area
`
`of circuit design in combination with a year of practical experience with products
`
`containing electronic circuitry. Such an individual would be familiar with the
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`design and application of low-level circuitry and switching functions, and have a
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`working knowledge of microchip-based systems design and operation.
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`
`
`14
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`
`
`A.
`
`"User Interface" (Claims 1 and 26)
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`
`
`
`
`
`
`Claim 1 recites "a microchip and a touch sensor forming part of the user
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`interface." Claim 26 includes a similar recitation. Thus, the plain language of the
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`claims requires the user interface to include at least an MMI mechanism to receive
`
`an input command from an operator (i.e., a touch sensor) and a mechanism to
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`manage the input command (i.e., a microchip).
`
`The specification of the '952 Patent provides further context for the claimed
`
`user interface, consistent with the above-proposed construction. Namely, the touch
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`sensor is disclosed as "a command input mechanism which can, according to the
`
`invention, operate on very low current." Ex. 1001 at 7:26-31. The '952 Patent
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`additionally describes "a microchip controlled switch to manage both the current
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`conducting functions and the [man-machine-interface] functions in an electronic
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`device [emphasis added]," where the "man-machine-interface" is defined as "an
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`interface between the device and its operator." Id. at 3:38-43 and 3:61-66.
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`Accordingly, in view of the plain language of claims 1 and 26 and in light of
`
`the specification, "user interface" should be construed as "an interface between a
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`device and its operator to receive and manage an input command from the
`
`operator."
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`
`
`15
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`

`
`
`
`B.
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`“Energy Consuming Load” (Claims 1 and 26)
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`
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`
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`A claim subject to Inter Partes Review is given its “broadest reasonable
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`construction in light of the specification of the patent in which it appears.” 37
`