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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`APPLE INC., MOTOROLA MOBILITY, LLC, AND TOSHIBA AMERICA
`INFORMATION SYSTEMS, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
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`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S RESPONSE, 37 C.F.R. §42.120
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`Ex. 1037-0001
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`APPLE INC., MOTOROLA MOBILITY, LLC, AND TOSHIBA AMERICA
`INFORMATION SYSTEMS, INC.,
`Petitioners
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S RESPONSE, 37 C.F.R. §42.120
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`Ex. 1037-0001
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`TABLE OF CONTENTS
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`INTRODUCTION
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`TESTIMONY OF PETITIONERS’ EXPERT
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES
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`I.
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`II.
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`III. BEARD, RATHMANN, AND DANIELSON DOES NOT DISCLOSE OR
`SUGGEST “USING THE MICROCHIP TO CONTROL THE CONNECTION OF
`THE POWER SOURCE TO THE LOAD AND THE ACTIVATION OF THE
`INDICATOR” (Independent Claim 52)
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`IV. BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE OR
`SUGGEST “SAID MICROCHIP CONTROLLING A LUMINOUS VISIBLE
`LOCATION INDICATOR THAT IS NOT THE LOAD”
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`(Independent Claim 1)
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`V.
`BEARD IN VIEW OF RATHMANN FAILS TO DISCLOSE OR SUGGEST
`THE VARIOUS CLAIMED FUNCTIONS (Dependent Claims 12 and 19)
`20
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`VI. CONCLUSION
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`i
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`ii
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`2
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`4
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`13
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`24
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`i
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`Ex. 1037-0002
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`TABLE OF AUTHORITES
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`CASES
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`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006)
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`Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC,
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`677 F.3d 1361, 1371 (Fed. Cir. 2012)
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`Digital-Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc.,
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`672 F.3d 1270, 1275 (Fed. Cir. 2012)
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`Grain Processing Corp. v. American-Maize Prods. Co.,
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`840 F.2d 902, 907 (Fed. Cir. 1988)
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`
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`In re NTP, Inc., 654 F. 3d 1279, 1299 (Fed. Cir. 2011)
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`Medtronic, Inc., et al. v. Troy R. Norred, M.D.,
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`Case IPR2014-00110 at Paper No. 23 (PTAB, October 8, 2014)
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`Orthopedic Equip. Co. v. United States,
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`702 F.2d 1005, 1012 (Fed. Cir. 1983)
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`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005)
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`SEB S.A. v. Montgomery Ward & Co., Inc.,
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`594 F.3d 1360, 1369 (Fed.Cir.2010)
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`STATUTES
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`35 U.S.C. §103(a)
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`RULES
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`77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012)
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`14
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`22
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`13
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`12
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`12
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`7
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`12
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`14
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`22
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`2
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`7
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`ii
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`Ex. 1037-0003
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`I.
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`INTRODUCTION
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`Petitioners challenge claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of U.S.
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`Patent No. 7,329,970 (hereinafter “the ‘970 Patent) as obvious 35 U.S.C. §103(a)
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`over combinations of three references, U.S. Patent 5,898,290 to Beard, taken in
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`view of U.S. Patent 5,955,869 to Rathmann, and U.S. Patent 5,710,728 to
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`Danielson. Patent Owner Global Touch Solutions, LLC (hereinafter referred to
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`“Patent Owner”) opposes that Petition, and responds herein to the Petition on three
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`separate bases.
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`First, this Response begins with discussion and analysis of independent
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`claim 52, which recites “using the microchip to control the connection of the power
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`source to the load and the activation of the indicator[.]” None of Beard, Rathmann,
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`and Danielson, whether taken alone or in combination, discloses or suggests one
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`microchip to control both the connection of the power source to the load and the
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`activation of the indicator. Further, one having ordinary skill in the art at the time
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`would not have combined such functionality in the manner alleged by Petitioners as
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`evidenced by Petitioners’ Expert, and Co-Inventor of two of the three cited
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`references, Paul Beard’s decision to separate the control between two microchips –
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`one in a battery and one in a battery-powered device. For Paul Beard to assert
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`2
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`Ex. 1037-0004
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`otherwise today is merely impermissible hindsight construction to fit Petitioners’
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`narrative.
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`Second, the combination of references does not disclose or suggest a
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`luminous visible location indicator as recited in claim 1. Petitioners and Expert
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`Beard appear to ignore the location indicating function of the luminous visible
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`location indicator. However, each operation of the battery capacity indicator
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`display (the alleged luminous visible location indicator) requires a touching of the
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`battery pack such that the location of the battery pack is necessarily known by the
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`user. The indicated location may be, for example, a location of the device or a
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`location of an area for touch input. In order for a location to be indicated, however,
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`the location must be at least partially unknown. And, if a user is touching the
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`device, the user necessarily knows the location of the device.
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`Third, the invention is also characterized by the ability of the microchip to
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`control and direct many functions – turning them on or activating them, and
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`deactivating or turning them off. This is illustrated in dependent claims 12 and 19.
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`Claim 12 ultimately depends upon independent claim 1 and recites a function
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`separate from the activation of the visible indicator. Similarly, claim 19 recites a
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`function separate from the activation of the visible indicator. Because Petitioners
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`allege that the same function from Beard discloses each of the functions of claims 1
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`3
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`Ex. 1037-0005
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`and 12 and claims 1 and 19, Petitioners have failed to demonstrate that the cited
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`combination of references discloses or suggest the claimed features.
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`Patent Owner relies on the Declaration of Morley submitted herewith, Ex.
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`2003, and the references cited therein.
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`II. 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. 2002). 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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`4
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`Ex. 1037-0006
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`Declaration verbatim in lieu of answering. See, e.g., Ex. 2002 at 40:8-42:22 (in
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`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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`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
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`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
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`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.
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`A.
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`So I spent a lot of time on this report, and, you
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`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
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`5
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`Ex. 1037-0007
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`through originally. The diagram on its own is not
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`sufficient to make that determination, and I don't readily
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`see a reference from Figure 11 in the specification that
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`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
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`know, a couple of minutes of reading the specification, I
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`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
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`objections raised by Petitioners' counsel throughout the deposition. For example,
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`Petitioners' counsel repeatedly objected on the grounds of mischaracterization of
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`the testimony or a document, when no such mischaracterization took place. See,
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`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-
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`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:
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`Q.
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`Is it your understanding that Figure 22 corresponds
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`to the system illustrated in Figure 1 of Danielson?
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`MR. GROSS:
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`Objection to form. I'll object that it
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`mischaracterizes the document.
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`Id. at 226:21-25.
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`The PTAB has cautioned that, where counsel violates the Office Patent Trial
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`Ex. 1037-0008
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`Practice Guide's standards for objections during depositions (77 Fed. Reg. 48,756,
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`48,772 (Aug. 14, 2012)), appropriate sanctions include "exclusion of the primary
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`declaration testimony from the witness being deposed." Medtronic, Inc., et al. v.
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`Troy R. Norred, M.D., Case IPR2014-00110 at Paper No. 23 (PTAB, October 8,
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`2014). Patent Owner submits that such a sanction appears warranted in this case,
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`or, at a minimum, the Board should find that the evasive and demonstrably
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`inaccurate responses from Petitioners' expert warrants discounting the weight to be
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`afforded to his testimony, if not disregarding it altogether.
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`III. BEARD, RATHMANN, AND DANIELSON DOES NOT DISCLOSE OR
`SUGGEST “USING THE MICROCHIP TO CONTROL THE CONNECTION
`OF THE POWER SOURCE TO THE LOAD AND THE ACTIVATION OF THE
`INDICATOR” (INDEPENDENT CLAIM 52)
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`Q. Is it part of the battery pack? Let me reword that
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`question.
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`Is the main logic board 219 in Figure 13 part of the
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`battery pack?
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`A. On which Figure again?
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`Q. 13.
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`A. Figure 13 is not a complete assembly of the system,
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`it's just the front case housing to the -- you know, it's
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`not complete, so...
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`Ex. 1037-0009
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`Ex. 2002 at 234:11-19 (ellipses included in transcript) (emphasis added).
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`What Petitioners’ Expert Beard is hesitant to say in the above exchange is that the
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`processes cited as corresponding to the control of the connection between the
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`power source and the load as recited in claim 52 are found in the microchip of the
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`terminal device of Danielson as Expert Beard decided when he was Inventor Beard
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`and preparing the applications that later became the cited Beard and Danielson
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`references. Ex. 1005 (naming Paul Beard as inventor); Ex. 1007 (naming Paul
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`Beard as inventor).
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`Petitioners allege, in Ground 2 of the Petition, that Beard as modified in
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`view of Rathmann and Danielson discloses “using microchip control circuit 223 to
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`control the connection of the power source (batteries 231) to the load (energy
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`consuming parts of the device 203)” as well as controlling the activation of the
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`activation of the indicator. Pet. at 53 and 56. Beard’s control circuit 223 is disposed
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`in the battery pack 201, which is separate from the portable device 203, and
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`controls display 225 to display charge status information. Ex. 1005 at 11:19-61.
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`Beard further discloses that the portable device 203 includes a control circuit 263
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`having a processing unit and memory sufficient to managed processes of the
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`portable device 203. Ex. 1005 at 12:6-24.
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`8
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`Ex. 1037-0010
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`Petitioners argue that one having ordinary skill in the art would modify the
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`control circuit 223 of the battery pack 201 to include Danielson’s low battery
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`management process as illustrated in Danielson’s FIG. 22. Pet. at 53-56. Instead,
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`the natural place to locate the described control processes of Danielson would be in
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`the portable device 203 of Beard just as Danielson actually did by locating such
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`control processes in the corresponding data terminal 10. Ex. 2003 at ¶87.
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`Dispositively, Danielson teaches that the low battery management process of
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`FIG. 22 is specifically located in the memory and microchip of the data terminal 10
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`– not in the battery pack. Ex. 1007 at 23:10-13. “FIG. 22 is a flow chart of an
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`interaction between both a control program as it may reside in memory of the data
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`terminal 10, and certain circuit states of the circuit functions of the circuit board
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`219, for example.” Id. The exact features Petitioners argue would be placed in the
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`control circuit 223 of the battery pack 201 are, instead, described to “reside in the
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`memory of the data terminal 10, and certain circuit states of the circuit functions of
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`the circuit board 219” of the data terminal 10. Id.
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`Expert Beard eventually admitted as much when he stated that the main
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`circuit board 219, which implements the control processes of FIG. 22 as asserted
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`by Petitioners, is located in the data terminal. Ex. 2002 at 234:20-235:14.
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`9
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`Ex. 1037-0011
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`Combining the teachings of Beard and Danielson would result in a device in
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`which the connection of the power source to the load is managed by the microchip
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`in the device. Ex. 2003 at ¶89. Such resultant location of the battery management
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`processes of Danielson in the portable device 203 of Beard, as opposed to the
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`battery pack 201 of Beard, is important because the combination of the references
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`results in the control of the connection of the power source to the load (power
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`source 231 of the battery pack 201 to the circuitry of the portable device 203)
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`being located in the control circuit 263 of the portable device 203. And, the control
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`of the display 225 remains located in the control circuit 223 of the battery pack
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`201. Simply, the combination of references results in the control processes being
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`located in different control circuits. Id. In contrast, claim 52 requires both control
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`processes be provided by one microchip, i.e., “using the microchip to control the
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`connection of the power source to the load and the activation of the indicator[.]”
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`Id. (emphasis added). Because the cited combination of references does not
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`disclose or suggest each of the features of claim 52, Petitioners’ allegations of
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`obviousness and the institution of proceedings with respect to claim 52 should be
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`denied.
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`However, as further evidence, “[b]oth Danielson and Beard relate to
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`Norand’s Pen*KeyTM technology.” Pet. at 17; Ex. 2003 at ¶90. “Danielson’s
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`10
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`Ex. 1037-0012
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`invention is a portable electronic terminal for data entry that is powered by the
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`intelligent battery pack disclosed in Beard.” Id. Expert Beard is listed as an
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`inventor of both Beard and Danielson. Ex. 1005 (naming Paul Beard as inventor);
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`Ex. 1007 (naming Paul Beard as inventor); and Pet. at 17.
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`When considering whether to locate the control processes for managing the
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`connection of the power source to the load and the activation of the indicator in the
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`battery pack of Beard or the portable device of Danielson, Expert Beard, a named
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`inventor in both Beard and Danielson, placed the cited control of the connection
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`between the power source and the load in the main circuit board 219 of the data
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`terminal 10 of Danielson instead of the control circuit 223 of the battery pack 201
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`of Beard. Ex. 1007 at 23:10-13; Ex. 2003 at ¶91. Such inclusion of an inventor in
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`both pieces of cited art indicates one having ordinary skill in the art’s true opinion
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`of the best location of the separate processes. Id. Beard’s placement of the control
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`over the connection between the power source and the load in the portable device
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`and the placement of the activation of the indicator in the battery back is the best
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`evidence of what a PHOSITA would have done. Id.
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`And, now, in hindsight, Mr. Beard and Petitioners are advancing the
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`proposition that one would have modified Beard to locate the control of the
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`connection of the power source to the load of Danielson in the control circuit 223
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`11
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`Ex. 1037-0013
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`of the battery pack 201 instead of where such control was originally placed – in the
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`main circuit board 219 of the data terminal 10 of Danielson corresponding to the
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`control circuit 263 of the portable device 203 of Beard. Ex. 1003 at ¶246-258; and
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`Pet. at 55. "Care must be taken to avoid hindsight reconstruction by using the
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`patent in suit as a guide through the maze of prior art references, combining the
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`right references in the right way so as to achieve the result of the claims in suit." In
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`re NTP, Inc., 654 F. 3d 1279, 1299 (Fed. Cir. 2011), internal quotes omitted
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`(quoting Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907
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`(Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005,
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`1012 (Fed. Cir. 1983)).
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`Petitioners do not allege that Rathmann discloses such features.
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`The teachings of both Beard and Danielson as well as the selection of the
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`location of the battery management processes by Mr. Beard and his co-inventors
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`indicate that such features would be separated between the portable device and the
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`battery pack. Ex. 2003 at ¶¶89-91. Petitioners have failed to demonstrate that a
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`PHOSITA would have constructed the portable device and battery pack of Beard
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`and Danielson any differently than described in the cited references themselves.
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`As such, Petitioners’ arguments should be rejected.
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`12
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`Ex. 1037-0014
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`IV. BEARD IN VIEW OF RATHMANN DOES NOT DISCLOSE OR
`SUGGEST “SAID MICROCHIP CONTROLLING A LUMINOUS VISIBLE
`LOCATION INDICATOR THAT IS NOT THE LOAD” (INDEPENDENT
`CLAIM 1)
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`Beard in view of Rathmann fails to disclose or suggest “said microchip
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`controlling a luminous visible location indicator that is not the load” as recited in
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`independent claim 1 and dependent claims 3-5, 10-14, 19, 48, 49, and 51, which
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`depend upon and incorporate the features of independent claim 1, for at least the
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`following reasons.
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`Petitioners, in Ground 1 of the Petition, appear to have simply ignored that
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`the luminous indicator is a luminous visible location indicator, or Petitioners may
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`merely have assumed that anything luminous indicates a location. Petitioners have
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`not explained how the charge indicator of Beard indicates a location when the charge
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`indicator requires the touching of the contacts of the battery in order to function. Ex.
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`2003 at ¶66. In other words, for the charge indicators to activate and be illuminated,
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`the location of the battery pack or the location of the contacts of Beard are
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`necessarily known such that the location has no reason to be indicated because a user
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`must touch the contacts to operate the indicator.
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`Any interpretation that ignores the location indicating function of the
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`luminous visible location indicator renders claim terms superfluous in
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`contravention of long-standing doctrines of claim construction. See, e.g., Digital-
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`13
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`Ex. 1037-0015
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`
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`Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir.
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`2012), citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006), and
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`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (claim language
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`should not be rendered superfluous).
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`Figure 11 of the ‘970 Patent, provided below, illustrates an embodiment in
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`which luminous visible location indicator is controlled by the microchip to indicate
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`a location. Ex. 1001 at 9:49-50; Ex. 2003 at ¶16.
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`The location indicator device 1104 may be realized as an LED that is
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`illuminated in this embodiment when the microchip 1113 sets the pin connected to
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`the line 1114, which is also connected to the switch 1111, to a high output state.
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`Ex. 1001 at 9:52-57; Ex. 2003 at ¶17. In other embodiments, the pin controlling the
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`indicator 1104 may be a different pin than the pin connected to the switch 1111.
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`Ex. 1001 at 9:50-52; Ex. 2003 at ¶17. Microchip 1113 can activate the LED 1104
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`14
`
`Ex. 1037-0016
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`
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`for a short time, for example, every 100 milliseconds or every 10 seconds. Ex.
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`1001 at 9:60-63; Ex. 2003 at ¶17. This indication will enable fast location of the
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`device in the dark, e.g. in times of emergency. Ex. 1001 at 9:63-66; Ex. 2003 at
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`¶17. As indicated in still other embodiments, the microchip 201 may be
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`programmed to operate the load 105 to indicate an emergency situation, for
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`example, by generating an S.O.S. signal. Ex. 1001 at 7:44-51; Ex. 2003 at ¶17.
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`.Accordingly, the microchip 1113 can control the luminous visible location
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`indicator 1104 to be activated independently of activating or operating the load
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`105. Ex. 2003 at ¶17.
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`In each mention of “location” in the Petition, Petitioners merely conclude or
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`assume that a light that illuminates indicates a location without consideration for the
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`actual operation of the alleged luminous visible location indicator of Beard. As
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`evidence of the extent to which Petitioners considered the location indicating
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`functions as recited in claim 1, Petitioners failed to even mention any location
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`indicating abilities of the charge indicator of Beard in Petitioners’ summary of Beard.
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`Pet. at 11-14; Ex. 2003 at ¶67.
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`Petitioners allege that the capacity indicator display 14 as shown in FIG. 1 of
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`Beard corresponds to the luminous visible location indicator as recited in claim 1.
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`Pet. at 32; Ex. 2003 at ¶68. The battery indicator display 14 is a linear array of four
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`
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`15
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`Ex. 1037-0017
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`light-emitting diodes. Ex. 1005 at 4:63-67. Beard fails to disclose whether the display
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`225 is a luminous display. Petitioners allege that it would have been obvious to
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`combine the different embodiments of Beard or to substitute an LCD having a
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`backlight for the display 225, thereby placing the capacity indicator display 14 in the
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`circuitry of the battery pack 201 as shown in FIG. 11 of Beard. Id.
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`Even assuming that such a combination of embodiments of Beard or
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`substitution of elements for the disclosed features of Beard is appropriate, which
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`Patent Owner does not concede, Beard in view of Rathmann still fails to disclose
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`"said microchip controlling a luminous visible location indicator that is not the load"
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`In order for the display 225 of Beard to be activated, the touch sensors 211 and 213
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`of touch sensing circuitry 221 of the battery pack 201 need to be touched. Ex. 1005 at
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`11:12-14 (“To initiate the display of battery capacity, an operator touches a pair of
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`contacts 211 and 213.”); Ex. 2003 at ¶69. Because the contacts 211 and 213 of the
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`battery pack 201 must be touched to activate the display 225, the location of the
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`contacts 211 and 213 of the battery pack 201 must be known, i.e., literally at the
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`operator’s fingertips, and, therefore, the charge indicator of Beard does not indicate a
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`location of the contacts 211 or the battery pack 201. Ex. 2003 at ¶69. The nature of
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`indicating a location is an indication, at least in part, of a thing unknown and not in
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`contact with the operator. Ex. 2003 at ¶69.
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`
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`16
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`Ex. 1037-0018
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`Beard attempts to decrease inadvertent activation of the display by adjusting
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`the design of the contacts. Ex. 2003 at ¶70. “[T]o prevent unintended display (which
`
`wastes battery power), the contacts 115 and 117 are both recessed and must be
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`"shorted" to enable the display of battery capacity information.” Ex. 1005 at 9:29-33.
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`Such design of the contacts to be intentionally recessed by Beard provides further
`
`indication that the location of the contacts or switch is known (by direct touching as
`
`opposed to unknown inadvertent contact) when touched by an operator. Ex. 2003 at
`
`¶70.
`
`Petitioners cite to Beard Decl., at ¶142, to assert that both a PHOSITA and a
`
`layperson would see the illumination of the LEDs as described in Beard to indicate
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`not only the remaining battery capacity, but also the location of the device containing
`
`the visible LEDs. Pet. at 32. Looking to Beard Decl. at ¶142 only provides the same
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`assertion without providing any evidence or analysis of Beard indicating the location
`
`of the switch or of the battery. Ex. 2003 at ¶71. The same unsupported assertion is
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`found at Beard Decl. at ¶234.
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`
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`Instead of evidence or support, Beard Decl., at ¶¶142 and 234, quotes
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`exactly Beard’s purpose of the illuminating LEDs on the battery:
`
`“The total remaining capacity of the battery pack 10 is
`
`preferably displayed by battery capacity indicator display
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`14 which preferably comprises a linear array of four light
`
`
`
`17
`
`Ex. 1037-0019
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`emitting diodes. As shown in FIG. 5, the LED’s
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`sequentially illuminate to thereby indicate to the
`
`operator the amount of capacity remaining therein.”
`
`Ex. 1005 at 6:67-7:5 (emphasis added).
`
`In fact, each mention by Beard of the charge indicator being illuminated ties
`
`the illumination to indicating the remaining charge capacity of the rechargeable
`
`battery pack 10. Ex. 1005 at 4:65-67; 7:3-40; 8:16-20; and 8:56-9:10; Ex. 2003 at
`
`¶73. Beard provides no disclosure or suggestion of any location indicating
`
`functions of the various charge indicators. Ex. 2003 at ¶73.
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`Moreover, Beard discloses that the battery pack limits the duration of the
`
`display of battery capacity. A timing circuit may be implemented to prevent the
`
`display 157 and associated circuitry from remaining in an active state for more
`
`than ten seconds after the contact 155 is touched. Ex. 1003 at 10:51-54; Ex. 2003
`
`at ¶74. Similarly, the control circuit 223 of the battery pack 201 limits the duration
`
`of the displaying of the charge status information on the display 225 to a five
`
`second time period after the display 225 is activated, i.e., after the contacts 211 and
`
`213 are touched. Ex. 1003 at 11:37-39; Ex. 2003 at ¶74. When the user touches the
`
`contact 155 or the contacts 211 and 213 to activate the respective displays, the user
`
`necessarily knows location of the battery pack or device of Beard, particularly in
`
`view of Beard’s expressed desire to decrease accidental activations as described
`
`
`
`18
`
`Ex. 1037-0020
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`above. The displays are incapable of indicating the location of the battery pack 201
`
`before the displays are deactivated because the location of the battery pack 201
`
`would be known because of the required by the touching of the contacts 155 or the
`
`contacts 211 and 213. And, the displays are incapable of indicating the location of
`
`the battery pack 201 after the displays are deactivated because a deactivated
`
`display indicates nothing. Therefore, regardless of the state of the display, the
`
`displays of Beard do not provide a luminous visible location indicator as recited in
`
`claim 1.
`
`Further, Rathmann does not cure the deficiencies of Beard with respect to
`
`the location indicating function of the luminous visible location indicator limitation
`
`of claim 1 because Rathmann, similar to Beard, merely discloses the illumination
`
`of state of charge (SOC) indicators – not that such indicators indicate any sort of
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`location. Ex. 2003 at ¶75. “The module also includes a series of four (4) LEDS 34
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`driven by an LED drive circuit 53 and a manually actuable switch 35 which may
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`be manually actuated by an end user to determine the state of charge in the
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`battery even when the battery has been removed from the host device 16.”
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`Rathmann at 16:24-29 (emphasis added). See, e.g., id. at 26:15-23; 32:17-27; and
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`58:58-59:32; Ex. 2003 at ¶75.
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`
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`19
`
`Ex. 1037-0021
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`There is no analysis or evidence of the required location indicating functions
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`of the charge indicators of Beard and Rathmann, and Beard and Rathmann,
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`whether taken individually or together, fail to disclose or suggest any location
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`indicating functions of the charge indicators. Ex. 2003 at ¶76.
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`V. BEARD IN VIEW OF RATHMANN FAILS TO DISCLOSE OR SUGGEST
`THE VARIOUS CLAIMED FUNCTIONS (DEPENDENT CLAIM 12 AND 19)
`
`
`As described herein, independent claim 1 of the ‘970 Patent recites “a
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`luminous visible location indicator” that indicates the location of the device and
`
`enables quick location of the device in the dark, for example, in times of
`
`emergency. Ex. 1001 at Abstract; 9:49-51; 9:64-66; Ex. 2003 at ¶76. Petitioners
`
`assert that the shorting of contacts 12 in order to switch on the battery capacity
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`indicator display 14 and the liquid crystal display 157 may be used to display both
`
`available capacity and remaining time estimates of the battery pack 151. Ex. 1001
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`at 6:58-63, 10:37-41; Ex. 2003 at ¶76.
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`Dependent claim 12 of the ‘970 Patent, which depends upon independent
`
`claim 1, recites “wherein a function selected by a user interface activation signal is
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`automatically shut off after a predetermined period of time.” The user interface
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`switch activates the visible location indicator and allows for selection of functions
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`according to activation signals, for example, emergency signal transmission and
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`dimming. Ex. 1001 at Abstract; and 13:15-51; Ex. 2003 at ¶77. Petitioners assert that
`
`
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`20
`
`Ex. 1037-0022
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`
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`
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`the display of remaining battery capacity and time estimates by the battery capacity
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`indicator display 14 and the LCD 157 are each a function as described in claim 12.
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`Pet. at 42.
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`Claim 19 of the ‘970 Patent recites “the microchip also controls upon
`
`receiving a switch activation signal from a touch sensor, at least the activation of a
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`function that automatically shuts off a period after such activation.” Ex. 2003 at
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`¶78. Petitioners assert that the display of remaining battery capacity and time
`
`estimates by the battery capacity indicator display 14 and the LCD 157 are each a
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`function as described in claim 19. Pet. at 44.
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`Beard’s display of the remaining battery capacity and time estimates of the
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`battery are not separate functions. Ex. 2003 at ¶79. Instead, the battery capacity and
`
`time estimates are a single function displaying the same information in different ways
`
`and, sometimes, at the same time. Id. “Instead of (or in addition) displaying the
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`percentage of available battery capacity, the control circuitry 223 interacts with the
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`display 225 to deliver time estimates to the operator.” Ex. 1003 at col. 11, ll. 45-48.
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`The display of the remaining battery capacity and the display of the time estimates
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`are in response to a single input, for example, the touching of contacts touch contacts
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`211 and 213. Ex. 1003 at 11:12-22; Ex. 2003 at 79.
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`
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`21
`
`Ex. 1037-0023
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`
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`IPR2015-01173
`Patent No. 7,329,970 B2
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`
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`Petitioners cite exactly the same features of Beard operating in exactly the
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`same way for both “a luminous visible location indicator” as recited in claim 1 as
`
`those cited for “a function” as recited in claims 12 and 19, namely, display of
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`remaining battery capacity and time estimates. Ex. 2003 at 80. It is well-established
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`that different claim terms are to be construed to convey different meanings.
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`Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1371
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`(Fed. Cir. 2012), citing SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360,
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`1369 (Fed.Cir.2010) (different claim terms convey different meanings). Because
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`different terms are used in the claims, the “function” of claims 12 and 19 cannot be
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`interpreted to be the same as the
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