Petition for Inter Partes Review of USP 8,288,952
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Review of:
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`U.S. Patent No. 8,288,952
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`Issued: Oct. 16, 2012
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`Application No.: 13/189,865
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`Filing Date: July 25, 2011
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`For: Intelligent User Interface Including A Touch Sensor Device
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`FILED VIA PRPS
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,288,952
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`For ease of reference, Petitioners refer to this petition as “’952 Petition” challeng-
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`ing claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40.
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`Table of Contents
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`Petition for Inter Partes Review of USP 8,288,952
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW .......... 1
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`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 1
`B.
`Notice of Lead and Backup Counsel and Service Information ............. 1
`C.
`Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) .................. 2
`D. Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) .............................. 3
`Fee for Inter Partes Review .................................................................. 3
`E.
`F.
`Proof of Service ..................................................................................... 3
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`III.
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`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) ................................................................................................... 4
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`IV. DESCRIPTION OF THE PURPORTED INVENTION ................................. 5
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`V.
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`CLAIM CONSTRUCTION ............................................................................ 7
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`A. Applicable Law ..................................................................................... 7
`B.
`Construction of Claim Terms ................................................................ 8
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`VI. PERSON HAVING ORDINARY SKILL IN THE ART ............................... 9
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`VII. THE PRIOR ART .......................................................................................... 10
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`A.
`B.
`C.
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`Beard (Ex. 1005) ................................................................................. 10
`Rathmann (Ex. 1006) .......................................................................... 13
`Danielson (Ex. 1007) ........................................................................... 16
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`VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES ......... 16
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`A. Motivation to Combine Beard with Rathmann ................................... 17
`B. Motivation to Combine Beard and Rathmann with Danielson ........... 23
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`IX. PRECISE REASONS FOR THE RELIEF REQUESTED ........................... 26
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`A. Ground 1: Claims 1, 2, 3, 16, 17, 19, 22, 23, 24, 26, 27, 38, 39,
`and 40 are invalid under 35 U.S.C. § 103 on the ground that
`they are all rendered obvious by Beard in view of Rathmann. ........... 27
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`Petition for Inter Partes Review of USP 8,288,952
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`B.
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`Ground 2: Claims 4 and 14 are invalid under 35 U.S.C. § 103
`on the ground that they are rendered obvious by Beard in view
`of Rathmann and Danielson ................................................................ 58
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`X.
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`CONCLUSION .............................................................................................. 60
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`Petition for Inter Partes Review of USP 8,288,952
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`Exhibit List
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`1001 U.S. Patent No. 8,288,952 (“the ’952 patent”)
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`1002 File History Excerpts for the ’952 patent (June 15, 2012 Notice of Allow-
`ance; Apr. 19, 2012 Applicant Remarks; Feb. 1, 2012 Non-Final Rejection)
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`1003 Declaration of Paul Beard in Support of Petition for Inter Partes Review of
`U.S. Patent No. 8,288,952
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`1004 Curriculum Vitae of Paul Beard
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`1005 U.S. Patent No. 5,898,290, “Battery Pack with Capacity and Pre-Removal
`Indicators,” filed Sept. 6, 1996, issued Apr. 27, 1999 (“Beard”)
`
`1006 U.S. Patent No. 5,955,869, “Battery Pack And A Method For Monitoring
`Remaining Capacity Of A Battery Pack,” filed July 9, 1997, issued Sept.
`21, 1999 (“Rathmann”)
`
`1007 U.S. Patent No. 5,710,728, “Portable Work Station-Type Data Collection
`System,” filed June 7, 1995. issued Jan. 20, 1998 (“Danielson”)
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`1008 1989 Sony WM-701C Service Manual
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`1009 1987 Sony WM-DDIII Service Manual
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`1010 Tandy Pocket Scientific Computer PC-6 Service Manual
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`1011 1987 Tandy Computer Catalog
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`1012 U.S. Patent No. 4,818,827
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`1013 U.S. Patent No. 5,747,757
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`1014 U.S. Patent No. 5,743,386
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`1015 U.S. Patent No. 5,294,762
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`1016 Apr. 21, 1994 Press Release, “Duracell and Intel Announce ‘Smart Bat-
`tery’ Specifications for Portable Computers”
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`1017 Mar. 2, 1995 EDN Access Article, “Smart-Battery Technology: Power
`Management’s Missing Link”
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`iii
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`Petition for Inter Partes Review of USP 8,288,952
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`1018 Oct. 2, 1995 Infoworld Article, “New Battery Technologies Mix Brains
`and Chemistry”
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`1019 Jan. 24, 1995 PC Magazine Article, “Batteries That Think”
`
`1020 PMBus Webpage, “PMBus Ancestry: PMBus and the Technologies Pre-
`ceding It”
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`1021 Feb. 15, 1995 Smart Battery Data Specification, Version 1.0
`
`1022 July 2003 Microchip Technology’s Microsolutions eNewsletter
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`1023 USPTO, Rathmann Assignment Details
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`1024 1997 Moody’s Industrial Manual, “Duracell International Inc.”
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`1025 1996 Duracell Form 10-K
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`1026 P&G 2014 Annual Report
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`1027 U.S. Patent No. 5,710,501
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`1028 U.S. Patent No. 5,652,502
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`1029 U.S. Patent No. 5,606,242
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`1030 Load Definition, The IEEE Standard Dictionary of Electrical and Elec-
`tronics Terms 593 (6th ed. 1996)
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`
`iv
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`I.
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`INTRODUCTION
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`Petition for Inter Partes Review of USP 7,994,726
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`Apple Inc. and Motorola Mobility LLC (“Petitioners”), in accordance with
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`35 U.S.C. § 311 and 37 C.F.R. § 42.100, hereby request inter partes review of
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`claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40 of United States Patent No.
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`8,288,952, titled “Intelligent User Interface Including a Touch Sensor Device” (the
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`“’952 patent”). According to USPTO records, the ’952 patent is assigned to Global
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`Touch Solutions, LLC (“Global Touch”). A copy of the ’952 patent is provided as
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`Ex. 1001, and excerpts of its prosecution history as Ex. 1002.
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`II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioners certify that the ’952 patent is available for inter partes review
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`and that Petitioners are not barred or estopped from requesting inter partes review
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`of the challenged claims of the ’952 patent on the grounds identified herein.
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`B. Notice of Lead and Backup Counsel and Service Information
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioners
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`provide the following designation of Lead and Back-Up counsel.
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`LEAD COUNSEL
`Robert Steinberg (Reg. No. 33,144)
`(bob.steinberg@lw.com)
`Postal & Hand-Delivery Address:
`Latham & Watkins LLP
`355 South Grand Avenue
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`BACKUP COUNSEL
`Matthew J. Moore (Reg. No. 42,012)
`(matthew.moore@lw.com)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
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`1
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`Petition for Inter Partes Review of USP 7,994,726
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`T: 202-637-2278, F: 202-637-2201
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`Los Angeles, CA 90071-1560
`T: 213-485-1234, F: 213-891-8763
`BACKUP COUNSEL
`Gabriel S. Gross (Reg. No. 52,973)
`(gabe.gross@lw.com)
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94065
`T: 650-463-2628; F: 650-463-2600
`BACKUP COUNSEL
`DeAnna Allen (Reg. No. 46,516)
`(dallen@cooley.com)
`Cooley LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C. 20004
`T: 202-842-7896; F: 202-842-7899
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for each of the Petitioners is
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`BACKUP COUNSEL
`Phillip E. Morton (Reg. No. 57,835)
`(pmorton@cooley.com)
`Cooley LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C. 20004
`T: 703-456-8668; F: 703-456-8100
`BACKUP COUNSEL
`Joseph M. Drayton (PHV to be filed)
`(jdrayton@cooley.com)
`Cooley LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C. 20004
`T: 212-479-6539; F: 212-849-6275
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`attached.
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`C. Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`The real-parties-in-interest are Apple Inc. and Motorola Mobility LLC. Peti-
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`tioner Motorola Mobility LLC is indirectly a wholly-owned subsidiary of Lenovo
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`Group Limited, which has more than a ten percent ownership of Motorola Mobility
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`LLC. No other parties exercised or could have exercised control over this petition;
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`no other parties funded or directed this petition. (See Office Patent Trial Practice
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`2
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`Guide, 77 Fed. Reg. 48759-60.)
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`Petition for Inter Partes Review of USP 7,994,726
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`D. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`Global Touch Solutions, LLC v. Apple Inc., 2:14-cv-390-MSD (E.D. Va.).
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`Global Touch Solutions, LLC. v. Motorola Mobility LLC, 2:14-cv-391-MSD (E.D.
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`Va.). Global Touch Solutions, LLC. v. Microsoft Corp., 3:14-cv-548-MSD (E.D.
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`Va.). Global Touch Solutions, LLC. v. VIZIO, Inc., 2:14-cv-347-MSD (E.D. Va.).
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`Global Touch Solutions, LLC. v. Toshiba Corp., 2:14-cv-346-MSD (E.D. Va.). Pe-
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`tition for Inter Partes Review of U.S. Patent No. 7,329,970, IPR2015-01173 (to be
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`filed concurrently). Petition for Inter Partes Review of U.S. Patent No. 7,498,749,
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`IPR2015-01172 (to be filed concurrently). Petition for Inter Partes Review of U.S.
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`Patent No. 7,781,980, IPR2015-01174 (to be filed concurrently). Petition for Inter
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`Partes Review of U.S. Patent No. 7,994,726, IPR2015-01171 (to be filed concur-
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`rently). According to USPTO records, the following patents claim priority to the
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`’952 patent: U.S. Patent No. 8,531,120 and U.S. Patent No. 8,823,273.
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`Fee for Inter Partes Review
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`E.
`The Director is authorized to charge the fee specified by 37 C.F.R.
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`§ 42.15(a) to Deposit Account No. 506269.
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`Proof of Service
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`F.
`Proof of service of this petition on the patent owner at the correspondence
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`address of record for the ’952 patent is attached.
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`3
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`III.
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`Petition for Inter Partes Review of USP 7,994,726
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`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B))
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`Claims 1-4, 14, 16, 17, 19, 22-24, 26, 27, and 38-40 of the ’952 patent (the
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`“challenged claims”) are unpatentable in view of the following prior art.
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` United States Patent No. 5,898,290, to Beard and Grabon, entitled “Battery
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`Pack with Capacity and Pre-Removal Indicators,” filed with the USPTO on
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`September 6, 1996, issued April 27, 1999 (“Beard,” attached as Ex. 1005);
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` U.S. Patent No. 5,955,869 to Rathmann, entitled “Battery Pack And A
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`Method For Monitoring Remaining Capacity Of A Battery Pack,” filed with
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`the USPTO on July 9, 1997, issued on September 21, 1999 (“Rathmann” at-
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`tached as Ex. 1006);
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` U.S. Patent No. 5,710,728 to Danielson et al., entitled “Portable Work Sta-
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`tion-Type Data Collection System,” filed with the USPTO on June 7, 1995.
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`issued on January 20, 1998 (“Danielson,” attached as Ex. 1007);
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`
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`Specifically, the challenged claims are invalid under 35 U.S.C. § 103 on the
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`following grounds:
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` Ground 1: Claims 1-3, 16, 17, 19, 22-24, 26, 27, and 38-40 are invalid on
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`the ground that they are rendered obvious by Beard in view of Rathmann.
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` Ground 2: Claims 4 and 14 are invalid on the ground that they are rendered
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`obvious by Beard in view of Rathmann and Danielson.
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`4
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`Petition for Inter Partes Review of USP 7,994,726
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`IV. DESCRIPTION OF THE PURPORTED INVENTION
`Conventional flashlights use mechanically-operated switches to turn a
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`flashlight “on” and “off.” ’952 patent at 1:66-67. These switches do not
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`automatically turn a flashlight off when the switch is accidentally left in the “on”
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`position, which can lead to unnecessary battery drainage and corrosion. Id. at 2:5-
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`12. They are also subject to wear and tear from repeated use. Id. at 3:18-24.
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`Mechanical switches also act as conductors to complete the power circuit that
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`operates the device. Id. at 3:33-35. This current is generally high, which leads to
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`switch failure over time. Id. at 3:35-38. And mechanical switches are “dumb” in
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`the sense that they cannot provide any enhanced functionality other than activating
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`the device. Id. at 3:27-31.
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`The alleged invention of the ’952 patent purports to solve these problems by
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`using a microchip-controlled switch that manages both current-conducting and
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`user-interface functions in an electronic device such as a flashlight without the
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`switch itself conducting current to the load. ’952 patent at 3:61-66; Declaration of
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`Paul Beard in Support of Petition for Inter Partes Review of U.S. Patent 8,288,952
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`(“Beard Decl.”) at ¶ 60. The switch operates on a low-current signal to reduce
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`switch corrosion and may be a touch sensor. ’952 patent at 3:66-4:4; Beard Decl. at
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`¶ 60. It also can be used by the microchip to control the functions of the device in
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`an “intelligent manner.” ’952 patent at 4:5-8; Beard Decl. at ¶ 60. The microchip
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`5
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`can provide additional functionality such as power-saving features like automatic
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`Petition for Inter Partes Review of USP 7,994,726
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`shut-off after a predetermined interval. ’952 patent at 4:12-19; Beard Decl. at ¶ 60.
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`The microchip-controlled switch can be its own device. ’952 patent at 4:63-
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`5:5; Beard Decl. at ¶ 61. Or it may be embedded in an intelligent battery for use
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`with an electronic device. ’952 patent at 4:47-63; Beard Decl. at ¶ 61.
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`As depicted below in Figure 11, a visible indicator such as a light emitting
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`diode (LED) can be used to indicate the battery condition . ’952 patent at 9:46-54;
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`Beard Decl. at ¶ 62. The indicator 1104 may be activated by either microchip 1113
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`or switch 1111. ’952 patent at 9:54-56 and FIG. 11; Beard Decl. at ¶ 62. LED 1104
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`shines when microchip 1113 pulls the line 1114 to high. ’952 patent at 9:54-55 and
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`FIG. 11; Beard Decl. at ¶ 62. LED 1104 also shines when switch 1111 is closed by
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`the user. ’952 patent at 9:55-56 and FIG. 11; Beard Decl. at ¶ 62.
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`The examiner initially rejected all pending claims in the application for the
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`’952 patent on the basis of non-statutory obviousness-type double patenting. Beard
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`Decl. at ¶ 64. The applicant filed a terminal disclaimer, which the examiner
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`approved. Id. at ¶ 65. The examiner then issued a notice of allowance. Id. The
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`examiner never rejected the pending claims as anticipated or obvious in view of
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`6
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`third-party prior art. Id. at ¶ 65.
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`Petition for Inter Partes Review of USP 7,994,726
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`V. CLAIM CONSTRUCTION1
`A. Applicable Law
`In deciding whether to institute inter partes review, “[a] claim in an unex-
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`pired patent shall be given its broadest reasonable construction in light of the speci-
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`fication of the patent in which it appears.” 2 37 C.F.R. § 42.100(b). Any ambiguity
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`regarding the “broadest reasonable construction” of a claim term is resolved in fa-
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`vor of the broader construction absent amendment by the patent owner. Final Rule,
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`77 Fed. Reg. 48680, 48699 (Aug. 14, 2012). “[T]he specification is always highly
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`1 Petitioners expressly reserve the right to challenge one or more claims (and claim
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`terms) of the ’952 patent for failure to satisfy the requirements of 35 U.S.C. § 112,
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`which cannot be raised in these proceedings. See 35 U.S.C. § 311(b). Nothing in
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`this Petition, or the constructions provided herein, shall be construed as a waiver of
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`such challenge, or agreement that the requirements of 35 U.S.C. § 112 are met with
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`for any claim of the ’952 patent.
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`2 The district court, in contrast, affords a claim term its “ordinary and customary
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`meaning . . . to a person of ordinary skill in the art in question at the time of the in-
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`vention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Petitioners
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`expressly reserve the right to argue different or additional claim construction posi-
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`tions under this standard in district court.
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`7
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`relevant to the claim construction analysis.” Phillips v. AWH Corp., 415 F.3d 1303,
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`Petition for Inter Partes Review of USP 7,994,726
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`1315 (Fed. Cir. 2005) (citation and quotation marks omitted). “Usually, it is dis-
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`positive; it is the single best guide to the meaning of a disputed term.” Id. When
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`the specification includes a disclaimer, such revealed intention is dispositive. See
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`id. at 1316.
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`B. Construction of Claim Terms
`All claim terms not specifically addressed in this section have been accorded
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`their broadest reasonable interpretation as understood by one of ordinary skill in
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`the art and consistent with the specification of the ’952 patent. Petitioners respect-
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`fully submit that the following terms should be construed for this IPR:
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`“energy consuming load”
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`1.
`The term “energy consuming load” is used in challenged independent claims
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`1 and 26. Beard Decl. at ¶ 114. A POSITA would have generally understood “en-
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`ergy consuming load,” as used in the claims of the ’952 patent, to have its plain
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`and ordinary meaning. Id. at ¶ 115.
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`A POSITA would have understood this plain and ordinary meaning to be
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`any part of the product that consumes energy when the product is used. Id. at ¶
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`116. The ’952 patent specification uses the term consistent with this meaning. Id. It
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`identifies the load in two embodiments of the alleged invention: a flashlight, where
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`the load is the bulb, and in the context of a wall switch, where the load is the ener-
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`8
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`gy-consuming element the switch controls, like a “light, fan, [or] air conditioner.”
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`Petition for Inter Partes Review of USP 7,994,726
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`’952 patent 7:2-4, 11:45. Each of these loads are parts of the product that consume
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`energy when the product is used. Beard Decl. at ¶ 116.
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`The contemporaneous IEEE Standard Dictionary of Electrical and Electron-
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`ics Terms, which defines the term “load” as “[a]n energy consuming device” or
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`“[a] power consuming device connected to a circuit,” supports this construction.
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`Beard Decl. at ¶ 117.
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`Thus the broadest reasonable construction of the term “energy consuming
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`load” is, consistent its plain and ordinary meaning, “any part of the product that
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`consumes energy when the product is used.” Beard Decl. at ¶ 118. This petition re-
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`lies on the plain and ordinary meaning of the term “energy consuming load” and
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`does not depend on this exact articulation of that meaning. Id. at ¶ 119.
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`VI. PERSON HAVING ORDINARY SKILL IN THE ART
`The purported invention of the ’952 patent reflects an understanding of sev-
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`eral basic principles of electronics and electrical engineering as they apply to prod-
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`uct design, and knowledge of industry practices in 1998 including the use of signal
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`switches and the use of microchips as control circuitry for switches and batteries.
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`Beard Decl. at ¶ 51. A “person of ordinary skill in the art” (“POSITA”) with this
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`knowledge and understanding thus has: a Ph.D. in electrical or electronics engi-
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`neering; or a Masters-level degree in electrical or electronics engineering and
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`1 year of experience designing portable, battery-powered electronic devices con-
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`Petition for Inter Partes Review of USP 7,994,726
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`trolled by microprocessors that used touch sensors or other signal switches; or a
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`Bachelors-level degree in electrical or electronics engineering and 2 years of expe-
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`rience designing such devices. Id. at ¶ 52. This description is approximate, and a
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`higher level of education or skill might make up for less experience, and vice-
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`versa. Id.
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`VII. THE PRIOR ART
`A. Beard (Ex. 1005)
`U.S. Patent No. 5,898,290 (“Beard”), entitled “Battery Pack with Capacity
`
`and Pre-Removal Indicators,” issued to Paul Beard and Robert Grabon and was
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`assigned to Norand Corporation. Beard Decl. at ¶ 67. Beard is prior art to the ’952
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`patent under at least 35 U.S.C. § 102(e) because the application that led to Beard
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`was filed with the USPTO on September 6, 1996. Id. Beard was not before the
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`USPTO during prosecution of the ’952 patent. Id.
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`Beard is directed to an intelligent battery pack with a microcontroller
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`(microchip) and battery indicators for use with a portable electronic device. See,
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`e.g., Beard at 1:18-21; Beard Decl. at ¶¶ 43, 68. The microcontroller responds to a
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`touch-sensing circuit that detects changes in impedance or capacitance when an
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`operator touches two contacts. See, e.g., Beard at 11:12-16; Beard Decl. at ¶ 68.
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`Portable devices of that era suffered from several common battery-related
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`10
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`problems. Beard Decl. at ¶ 70. First, the devices did not allow a user to check
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`Petition for Inter Partes Review of USP 7,994,726
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`battery power levels without turning on the device, which led to data loss from the
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`device if battery charge levels were dangerously low. See, e.g., Beard at 1:44-49;
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`Beard Decl. at ¶ 70; see also Beard Decl. at ¶¶ 26-28. Second, data loss also
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`resulted if users did not complete the “time-consuming” shut down process. See,
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`e.g., Beard at 2:26-28; Beard Decl. at ¶ 70.
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`Beard discloses user interface changes to resolve both problems. Beard Decl.
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`at ¶ 71; see also Beard Decl. at ¶¶ 22-31. First, it provided a user-activated
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`indication of battery capacity that worked without turning on the device. This
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`feature prevented system problems arising from the unexpected loss of power
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`during device startup, because the user could verify that the battery charge was
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`sufficient before turning on the device. See, e.g., Beard at 11:10-12; Beard Decl. at
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`¶ 71. And it worked whether or not the battery pack was inserted into the device,
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`because the battery pack could retrieve charge status information either from the
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`device, or from its own memory. See, e.g., Beard at 11:33-40; Beard Decl. at ¶¶
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`72-74.
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`The touch-activated indication of battery capacity also included time esti-
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`mates of remaining battery life based on the loading characteristics of the device
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`using the battery. See, e.g., Beard at 11:41-45, 11:58; Beard Decl. at ¶ 75. The bat-
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`tery pack initially monitors the device to determine these power-consumption
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`11
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`characteristics. See, e.g., Beard at 11:57-61; Beard Decl. at ¶ 76. The battery pack
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`Petition for Inter Partes Review of USP 7,994,726
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`then stores them in its memory and retrieves them to calculate and display remain-
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`ing battery life in response to a request, via touch sensor, from the operator. See,
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`e.g., Beard at 11:23-30; Beard Decl. at ¶¶ 74, 76.
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`Beard teaches and discloses, among other things, the activation of a visual
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`indication of battery capacity in response to user input detected by a touch sensor
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`that functions regardless of whether or not the battery pack has been inserted into
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`the device, and without turning on the device. Beard Decl. at ¶ 77. Beard’s battery
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`pack indicator is activated without affecting the load of the device and without re-
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`quiring that the user has activated the load of the device. Id.
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`Second, Beard added “pre-removal” circuitry that allowed a user to
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`gracefully deactivate and activate a device merely by removing or inserting the
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`battery, respectively. This circuitry prevented data loss arising from the unexpected
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`loss of power during operation. See Beard Decl. at ¶ 71.
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`Beard accomplishes this goal by including a sense contact between the
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`device and battery pack, in addition to the ground and voltage contacts that connect
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`battery power to the device. See, e.g., Beard at 11:63-67; Beard Decl. at ¶ 78.
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`When a user removes the battery pack from the device, the connection between
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`sense contacts breaks first. See, e.g., Beard at 12:4-6; Beard Decl. at ¶ 79. In
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`response to that first break, removal-sensing circuitry causes a control circuit to
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`save the operational status and any pending data in the device and complete
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`Petition for Inter Partes Review of USP 7,994,726
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`removal processing and deactivation of the device before the ground and voltage
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`contacts break and the device loses power. See, e.g., Beard at 12:8-13; Beard Decl.
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`at ¶ 79. When the user reinserts the pack, the control circuit retrieves the saved
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`operational state and data and resumes normal operation of the device. See, e.g.,
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`Beard at 12:19-22; Beard Decl. at ¶ 80. Thus, Beard discloses deactivating and
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`activating a device in response to the user’s removal and re-insertion of the
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`device’s battery pack. Beard Decl. at ¶ 79.
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`B. Rathmann (Ex. 1006)
`The prior art U.S. Patent No. 5,955,869 to Rathmann (“Rathmann”) entitled
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`“Battery Pack And A Method For Monitoring Remaining Capacity Of A Battery
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`Pack,” was originally assigned to Duracell, Inc. Rathmann (cover sheet); Beard
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`Decl. at ¶ 82. Duracell is a leading manufacturer of high-performance alkaline and
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`rechargeable batteries, and has a tradition of innovation in battery development and
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`smart power systems. Beard Decl. at ¶ 82. Rathmann is prior art to the ’952 patent
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`under at least 35 U.S.C. § 102(e) because it issued from a divisional application of
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`U.S. Patent App. No. 08/890,665, which was filed with the USPTO on July 9,
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`1997. Id. Rathmann was not before the USPTO during prosecution of the ’952
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`patent. Id.
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`Rathmann discloses a “smart battery for use in an intelligent device having
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`power management capabilities,” Rathmann at 1:12-16; 1:65-3:30, like the ’952
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`Petition for Inter Partes Review of USP 7,994,726
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`patent’s “intelligent battery for use with an electronic device” and “intelligent
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`current switching devices.” ’952 patent at 1:44-46, 4:57-58; Beard Decl. at ¶ 85.
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`The battery pack includes a microcontroller, battery-power indicator, and user-
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`interface switch, broadly similar to those disclosed by Beard and the ’952 patent.
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`See, e.g., Rathmann at Abstract, 1:51-56, 1:65-2:2, 3:1-7, 24:21-23; Beard Decl. at
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`¶¶ 83, 86.
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`The microchip in Rathmann is a CMOS 8-bit microcontroller sold in the
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`U.S. by Microchip Technology, Inc. with an advanced RISC architecture, and
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`optimizations for low power consumption, just like the microchip in Beard. See,
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`e.g., Rathmann at 16:57-17:5; Beard Decl. at ¶ 86. Rathmann’s indicator is
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`comprised of LEDs, which are also disclosed as an indicator in Beard. See, e.g.,
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`Beard at 4:63-66. In response to a signal from battery pack’s user interface, four
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`LEDs illuminate sequentially to indicate remaining battery charge. See, e.g.,
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`Rathmann at FIG. 3, 16:24-36; Beard Decl. at ¶ 87. And like the touch sensors of
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`Beard the ’952 patent, the manual switch of Rathmann does not act as a conductor
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`to complete the power circuit to power the load. See, e.g., Rathmann at FIG. 3
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`(showing that there is no power circuit connected to switch 35); Beard Decl. at ¶
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`87.
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`But Rathmann differs from Beard by disclosing in more detail how the
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`microchip is adapted to control the operation of the battery pack and indicator
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`Petition for Inter Partes Review of USP 7,994,726
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`using software. Beard Decl. at ¶ 88. In particular, Rathmann discloses the
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`“Duracell Battery Operating System (DBOS)” for intelligent battery packs, which
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`is designed as an operating system for Smart Battery System (SBS) battery packs,
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`a standard Duracell developed with Intel in 1994. See, e.g., Rathmann at 5:47-48,
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`13:64-67; Beard Decl. at ¶ 84. Rathmann provides step-by-step instructions for
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`many smart battery functions,
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`including how
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`the microchip
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`implements
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`illumination of the correct number of LEDs based on battery charge. See, e.g.,
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`Rathmann at FIG. 34 (§ IX.A.1, infra), 58:31-59:32; Beard Decl. at ¶¶ 88-89.
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`Rathmann describes displaying the appropriate number of LED lights to
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`indicate remaining battery charge without requesting information from, or
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`otherwise affecting, the operation of the load. See, e.g., Rathmann at 58:31-59:32;
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`Beard Decl. at ¶ 90. Rathmann discloses using the battery pack’s microchip to
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`estimate battery capacity and storing
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`the device’s power consumption
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`characteristics in battery memory, rather than device memory. See, e.g., Rathmann
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`at 24:24-33; Beard Decl. at ¶ 90. A user thus may press the switch “to determine
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`the state of charge in the battery even when the battery has been removed from the
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`host device 16.” See, e.g., Rathmann at 16:26-29; Beard Decl. at ¶ 91.
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`Rathmann thus discloses the activation of a visual indicator of battery capac-
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`ity in response to user input that functions regardless of whether or not the battery
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`pack is inserted into the device, and without turning on the device.
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`Petition for Inter Partes Review of USP 7,994,726
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`C. Danielson (Ex. 1007)
`The prior art U.S. Patent No. 5,710,728 to Danielson et al., entitled “Portable
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`Work Station-Type Data Collection System,” another patent that relates to Mr.
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`Beard’s work, also was assigned to Norand Corporation. Beard Decl. at ¶ 93. Mr.
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`Beard is co-inventor of the Danielson patent. Id. Danielson is prior art to the ’952
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`patent under at least 35 U.S.C. §§ 102(a) and 102(e) because it was filed with the
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`USPTO on June 7, 1995 and issued on January 20, 1998. Id. Danielson was not
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`before the USPTO during prosecution of the ’952 patent. Id.
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`Both Danielson and Beard relate to Norand’s Pen*KeyTM technology. Id. at
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`¶ 94. Danielson’s invention is a portable electronic terminal for data entry that is
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`powered by the intelligent battery pack disclosed in Beard. See, e.g., Danielson,
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`FIG. 2 (depicting the underside of data terminal device 10, including battery door
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`41); Beard, FIG. 11 (depicting portable electronic device 203 powered by
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`intelligent battery pack 201); Beard Decl. at ¶ 94. Danielson additionally describes
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`various aspects of such terminal devices, including embodiments that have audio
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`and radio frequency circuitry, a keyboard, or an on/off switch. See, e.g., Danielson
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`at 8:55-57, 22:58-60, 22:65-66; Beard Decl. at ¶ 92.
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`VIII. MOTIVATIONS TO COMBINE THE PRIOR ART REFERENCES
`The obviousness inquiry takes “an expansive and flexible approach” to de-
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`termine the scope and content of the prior art, differences between the prior art and
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`Petition for Inter Partes Review of USP 7,994,726
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`the claims at issue, and the level of ordinary skill in the pertinent art. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 407, 415 (2007). It considers “interrelated teachings
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`of multiple patents; the effects of demands known to the design community or pre-
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`sent in the marketplace; and the background knowledge possessed by a person hav-
`
`ing ordinary skill in the art, all in order to determine whether there was an apparent
`
`reason to combine the known elements in the fashion claimed by the patent at is-
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`sue.” Id. at 418. “A person of ordinary skill is also a person of ordinary creativity,
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`not an automaton.” Id. at 421. Thus a patent is obvious when it “simply arranges
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`old elements with each performing the same function it had been known to perform
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`and yields no more than one would expect from such an arrangement,” as long as
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`there is reason to combine the elements. Id. at 417-18. For instance, “[c]ombining
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`two embodiments disclosed adjacent to each other in a prior art patent does not re-
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`quire a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554
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`F.3d 982, 991 (Fed. Cir. 2009). Similarly, “if a technique has been used to improve
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`one device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using the technique is obvious unless its
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`actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
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`A. Motivation to Combine Beard with Rathmann
`A POSITA would have been strongly motivated to combine the teachings of
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`Beard with Rathmann because both patents are directed to the same problem—
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`Petition for Inter Partes Review of USP 7,994,726
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`enabling the user of a portable battery-pack to readily determine the current state of
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`battery charge. Beard Decl. at ¶ 95.3 A POSITA would have looked to their
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`complementary disclosures to achieve their combined advantages.
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`Beard and Rathmann solve the same problem: readily determining and
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`indicating remaining battery charge status information to a user of a portable
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`device powered by a battery pack. Beard Decl. at ¶ 96. Beard primarily focuses on
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`the hardware aspects of the solution and some of the software aspects, while
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`Rathmann primarily describes a software operating system for intelligent batteries,
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`the Duracell Battery Operating System, that is used with a variety of different
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`hardware options and devices. Id.
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`Beard and Rathmann use