trials@uspto.gov
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`571-272-7822
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`IPR2015-01171 Paper No. 32
`IPR2015-01174 Paper No. 32
`IPR2015-01175 Paper No. 33
`IPR2015-01172 Paper No. 53
`IPR2015-01173 Paper No. 51
`IPR2015-01613 Paper No. 20
`IPR2015-01616 Paper No. 36
`September 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01171 (Patent 7,994,726 B2)
`Case IPR2015-01174 (Patent 7,781,980 B2)
`Case IPR2015-01175 (Patent 8,288,952 B2)
`____________
`
`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01172 (Patent 7,498,749 B2)
`Case IPR2015-01173 (Patent 7,329,970 B2)
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`571-272-7822
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`IPR2015-01171 Paper No. 32
`IPR2015-01174 Paper No. 32
`IPR2015-01175 Paper No. 33
`IPR2015-01172 Paper No. 53
`IPR2015-01173 Paper No. 51
`IPR2015-01613 Paper No. 20
`IPR2015-01616 Paper No. 36
`September 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01171 (Patent 7,994,726 B2)
`Case IPR2015-01174 (Patent 7,781,980 B2)
`Case IPR2015-01175 (Patent 8,288,952 B2)
`____________
`
`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01172 (Patent 7,498,749 B2)
`Case IPR2015-01173 (Patent 7,329,970 B2)
`
`
`
`
`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`____________
`
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC. and
`APPLE INC.
`Petitioner,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01603 (Patent 7,498,749 B2)
`Case IPR2015-01616 (Patent 7, 265,494 B2)
`
`____________
`
`Held: August 3, 2016
`____________
`
`
`
`
`
`BEFORE: JUSTIN BUSCH, LYNNE E. PETTIGREW and
`BETH Z. SHAW, Administrative Patent Judges.
`
`
`
` The above-entitled matter came on for hearing on Wednesday,
`August 3, 2016, commencing at 10:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER (APPLE):
`
`
`
`JAMES R. BENDER, ESQ.
`MATTHEW J. MOORE, ESQ.
`Latham & Watkins LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, DC 20004-1304
`
`
`
`
`
`
`ON BEHALF OF THE PETITIONER (TOSHIBA):
`
`
`
`LUKE J. McCAMMON, ESQ.
`DORIS JOHNSON HINES, ESQ.
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`
`901 New York Avenue, N.W.
`
`Washington, DC 20001-4413
`
`
`
`ON BEHALF OF THE PETITIONER (MOTOROLA):
`
`PHILIP MORTON, ESQ.
`Cooley LLP
`1299 Pennsylvania Avenue, N.W., Suite 700
`Washington, DC 20004
`
`WILLIAM H. MANDIR, ESQ.
`FADI N. KIBLAWI, ESQ.
`PETER S. PARK, ESQ.
`BRIAN K. SHELTON, ESQ.
`NATHAN CRISTLER, ESQ.
`Sughrue Mion, PLLC
`2100 Pennsylvania Avenue, N.W.
`Washington, DC 20037-3213
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`ON BEHALF OF PATENT OWNER:
`
`
`
`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE PETTIGREW: Good morning, everyone. This
`is a consolidated hearing for seven cases, IPR2015-01171, 01172,
`01173, 01174, 01175, 1603 and 1616. Global Touch Solutions is
`the Patent Owner in all cases, Apple is a Petitioner in all cases,
`Motorola Mobility is a Petitioner in some of the cases, and
`Toshiba America Information Systems is a Petitioner in some of
`the cases.
`Each side has 120 minutes to argue. Petitioners have
`the ultimate burden of establishing unpatentability and will argue
`first. Patent Owner then will present its opposing argument, and,
`finally, Petitioners may use any time they have reserved for
`rebuttal to respond to Patent Owner's argument.
`We plan to take a recess of about one hour for lunch at a
`convenient breaking point, either after Petitioners' opening
`argument, or after Patent Owner's argument, depending on how
`much time has passed. Judge Busch is joining us by video from
`our Detroit office, and won't have the benefit of the visual cues in
`the room, so when you speak about an exhibit or demonstrative,
`please begin by clearly identifying it with a particular page or
`slide number. Also, please be sure to speak into the microphone
`for the benefit of both Judge Busch and the court reporter.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`Before we begin, we have many people here, let's have
`counsel for each party identify themselves and the party they
`represent for the record, beginning with Petitioners.
`MR. BENDER: Yes, Your Honor, James Bender for
`
`Apple.
`
`MR. MOORE: Matt Moore for Apple.
`JUDGE PETTIGREW: Thank you.
`MS. HINES: Good morning, Dori Hines for Toshiba.
`MR. McCAMMON: Luke McCammon for Toshiba.
`MR. MOORE: I should also state Chris Schmoller with
`the graphics, and from Apple, Cyndi Wheeler.
`JUDGE PETTIGREW: And for Motorola Mobility?
`MR. MORTON: Philip Morton for Motorola Mobility.
`JUDGE PETTIGREW: Thank you.
`And for Patent Owner?
`MR. MANDIR: William Mandir, Your Honor.
`MR. KIBLAWI: Fadi Kiblawi, Your Honor.
`MR. CRISTLER: Nathan Cristler.
`MR. PARK: Peter Park.
`MR. SHELTON: Brian Shelton.
`JUDGE PETTIGREW: All right. Petitioner, you may
`begin when ready. Do you wish to reserve any rebuttal time, and
`how much?
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`MR. BENDER: Yes, Your Honor, I expect that we will
`reserve about 40 minutes for rebuttal.
`JUDGE PETTIGREW: Okay. In which case I expect
`we will likely take a break after your opening argument for lunch
`before Patent Owner's argument.
`MR. BENDER: Thank you, Your Honor.
`May I start? I have hard copies of our slides, may I
`hand them up?
`JUDGE PETTIGREW: Yes. Thank you. When you're
`
`ready.
`
`MR. BENDER: Thank you, Your Honor. My name is
`James Bender, representing Petitioner Apple. My colleague,
`Matthew Moore and I will be addressing six of the seven petitions
`before you this morning. The seventh relating to the '494 patent
`will be addressed by Mr. McCammon representing Toshiba.
`Slide 1 here, you can see the six petitions that Apple
`will be addressing today. Moving to slide 2, this is our agenda
`for this morning. We're going to start with a brief overview of
`the patents and then a brief overview of the prior art references
`and I will be addressing both of those points. Then we will turn
`to the undisputed issues and the reported deficiencies raised by
`Patent Owner; Mr. Moore will address those points.
`Moving to slide 4, you'll see that we're not going to
`address every slide this morning in our opening presentation,
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`we'll be skipping ahead through some, so we'll announce the
`numbers as we go. And also, just for background, as we're going
`through, you will see on the bottom left corner of the slides, for
`example here it says, in the gray border, "See, e.g.,
`IPR2015-001171, Petition at 5-6, 29." We have included
`citations in the lower left-hand corner of each slide to where in
`the briefing the argument presents on the slide was addressed.
`There are six patents at issue today, Apple will be
`addressing five of them, as I mentioned, all except the '494. All
`five of those patents are very similar. They all have exactly the
`same figures and very similar specifications. We chose as an
`example for the overview the '726 patent.
`You can see on the top here is an excerpt from the
`abstract of the '726 patent, it states that the present invention,
`according to a preferred embodiment, is directed at portable
`electronic devices which operate on exhaustible battery sources,
`for example, batteries. In the lower right-hand corner of slide
`number 4, you can see figure 12 from the '726 patent, and figure
`12 is an example of one such portable electronic device, it's a
`flashlight. The flashlight embodiment is used throughout the
`specification of the patents. It's not the only embodiment in the
`patent, but it's one that's most commonly used and appears
`throughout the specification.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`The lower left-hand corner is figure 1. This is an
`internal or circuit-level diagram of one embodiment of the
`invention. On top is element 102, that's a user interface switch;
`for example, a touch sensor switch. The specification describes a
`touch sensor as one example of a user interface switch, and all or
`perhaps most -- nearly all of the claims at issue today recite a
`touch sensor switch.
`Below that, element 103 is a microchip. The microchip
`is connected to the user interface switch and it receives
`commands from the user interface switch. On the right side, the
`element 105 kind of looks like a corkscrew, is the energy
`consuming load; for example, in figure -- the embodiment of
`figure 12, that would be the bulb of the flashlight.
`Moving ahead to slide 6, this is the family tree, just to
`orient Your Honors about the patents we'll be discussing. On the
`left side, the '980, '726, '952 and '749 patents are all straight
`continuations, they all have exactly the same specifications and
`figures. On the right side you see the '970 patent. The '970 is a
`continuation in part, it has the same figures as the other patents,
`and nearly the same specification, but it does have some small
`amount of additional material.
`For the purposes of today, though, we can think of all
`five as having the same specification. The additional matter in
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`the '970 patent, neither party has argued that additional matter is
`relevant.
`Back to our agenda, slide 8, I'm going to turn to the
`brief overview of the prior art references. Slide 9, these are the
`three prior art references that Apple will be addressing today.
`You'll see when Mr. McCammon from Toshiba addresses the
`'494, he will also be talking about the Layman reference, but for
`the beginning of the presentation, these are the three key
`references. And it's really one reference that's the focus of the
`vast majority of the claim limitations, and that's the Beard '290
`patent in the top row.
`The Beard '290 patent describes a smart battery pack,
`and a portable electronic device for use with that battery pack, but
`it focuses mostly on the battery pack. It mentions the device, but
`focuses largely on the battery pack. It was invented by Mr. Paul
`Beard. Mr. Beard is Petitioner's expert in these proceedings, he
`provided two declarations and testified at deposition. It was
`assigned to Norand Corporation, that's where Mr. Beard was
`working at the time that he invented this patent.
`The middle row, the second prior art reference is the
`Danielson '728 patent. The Danielson patent complements Beard
`by describing in more detail an example of portable device. So,
`Beard describes a portable device, but mostly focuses on the
`battery pack. Danielson provides more about the portable device.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`Mr. Beard is also one of the inventors of Danielson, and
`Danielson was also assigned to Norand Corporation.
`The bottom row, the Rathmann '869 patent describes
`another smart battery pack, but focuses largely on the Duracell
`battery operating system. This is a Duracell reference and
`focuses on the software operating system to work with the smart
`battery pack.
`Slide 10, this is figure 8 from Beard. On top you can
`see the battery pack, element 103. On bottom -- on the bottom
`you can see element 101. This is just one example of a device
`described in the Beard reference.
`Slide 11, you can still see figure 8 along the right side,
`along the left we have a portion of the specification describing
`one of the features of Beard. In particular, it's describing the use
`of the battery capacity indicator. The way this worked is
`elements 115 and 117, which are highlighted in yellow on the
`right side, in figure 8, were touch sensors, so a user would press
`one finger over each of those touch sensors, and that would
`activate the battery capacitor indicator. In this embodiment, the
`capacity indicator is the fuel gauge type indicator.
`Slide 12, figure 11, this is structurally the same as figure
`8, but it's sort of the internal or circuit-level view, again on the
`left side we have the battery pack, on the right side we have the
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`device. So, figure 8 is the external view, figure 11 is the internal
`view.
`
`Slide 13, this is still figure 11 on the right side, on the
`left side are some portions of the specification describing some
`more detail about the features of Beard. You can see in the figure
`we have highlighted element 225, that's a display. The Beard
`reference -- it's a display in the battery pack. And the Beard
`reference teaches that that display in the battery pack can show
`two pieces of information, it can show the battery capacity, it can
`show the remaining operational time. If you look at the excerpt
`on the lower left-hand corner, this is from the 1171 proceeding,
`Exhibit 1005, Beard at 11, 45 through 48.
`"Instead of (or in addition) displaying the percentage of
`available battery capacity, the control circuitry 223 interacts with
`the display 225 to deliver the time estimates to the operator." So,
`Beard discloses that instead of or in addition to displaying
`capacity, it can display time remaining.
`Slide 14, these are some more features of the Beard
`reference. We still have figure 11 on the right. On the left we
`have different excerpts from the specifications. On the top left
`you can see that the Beard reference teaches that the battery pack
`can display battery capacity whether or not it's inserted into the
`portable device. In the lower left, it talks about what happens
`when you insert the battery pack into the device. "When fully
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`inserted, the battery pack contacts" -- you can see those in figure
`11 -- "241, 243 and 245 engage the corresponding contacts ... in
`the device ... and, if sufficient power is available, the device 203
`may enter a fully operational state when the operator so desires."
`So, when you place the battery pack into the device,
`Beard describes checking two things. First, if sufficient power is
`available; second, whether the operator desires to startup.
`JUDGE PETTIGREW: Does Beard explain how the
`operator will start the device?
`MR. BENDER: Beard explains in this passage that it
`starts up when the operator desires. It doesn't provide much
`additional detail beyond that. The Danielson reference describes
`more detail on that, and we've relied on the Danielson reference
`for some of the limitations relating to that.
`Slide 15 is figure 1 of Danielson. It's just an example of
`a device that could have been used with a battery pack like the
`one in Beard.
`And slide 16 is Rathmann, this is the Duracell reference
`that describes more details of the software Duracell battery
`operating system.
`That brings us to slide 17, and with this I'll turn it over
`to Mr. Moore.
`MR. MOORE: Good morning, Your Honors, Matt
`Moore on behalf of Apple and the Petitioner.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`Starting where Mr. Bender left off, undisputed issues,
`there's two undisputed issues I just want to make sure the Court is
`aware of. First, that the three pieces of prior art that Mr. Bender
`just introduced, Beard, Danielson and Rathmann, there's no
`dispute that they're all prior art to all the patents at issue in these
`petitions. That's slide 18.
`Moving to slide 19, there's also no dispute that
`somebody of ordinary skill in the art would have been motivated
`to combine Beard and Rathmann and Danielson. It's been laid
`out clearly in the original petition and in Mr. Beard's declaration,
`but there has been no dispute by the Patent Owners.
`Moving to slide 20. We are now going to talk about the
`issues the Patent Owner does raise with the prior art. Moving to
`slide 21, because many of the issues that the Patent Owner raises
`goes across many patents, instead of doing this by patent, we've
`grouped the issues collectively into the eight issues identified on
`slide 21. And these eight issues, you can see some of them relate
`to all the patents, some of them relate to one patent.
`So, next to each issue, we have put in parentheses which
`patent that issue relates to. And moving to slide 22, 22 does that
`same -- those same eight issues, down the left-hand axis and
`across the top axis you have the patent numbers and the petition
`numbers where those issues are raised for the convenience of the
`Board.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`Moving to slide 23. The common mistakes you'll see in
`addressing the deficiencies raised by the Patent Owner are shown
`here on slide 23. First common mistake when somebody is trying
`to resurrect a patent that's made obvious based on the prior art is
`reading limitations in from the spec. They also try to read
`limitations into the claims that simply aren't present in the claim
`language. And sometimes they just misread the prior art.
`Moving to slide 24, our first issue is does the prior art
`disclose the claimed "energy consuming load?" And this relates
`to the '726, '749, '952 and '980 patents. There's three parts to this
`issue. The first part is, for clarification, that if the term "energy
`consuming load" is given plain and ordinary meaning or the plain
`and ordinary meaning prescribed to it by the Petitioner, as the
`Board did in its institution decision, then there's no dispute that
`Beard satisfies all the energy consuming load issues. So, if the
`Board decides to give "energy consuming load" its plain and
`ordinary meaning, or the plain and ordinary meaning espoused by
`the Petitioner, there's no dispute that Beard satisfies all these
`limitations.
`Now, we can see that in slide 28. Slide 28 is where
`Dr. Morley, the Patent Owner's expert, admits that if the Board
`rejects the Patent Owner's narrow construction of "energy
`consuming load," then Beard will disclose that limitation.
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`Case IPR2015-01171, IPR2015-01174, IPR2015-01175,
`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
`01616
`
`
`The second part of the energy consuming load issue
`would be claim construction, and you can see on slide 29, the
`Petitioners have said that energy consuming load should be given
`its plain meaning or should just mean any part of a product that
`consumes energy during use. The Patent Owners have espoused
`a narrow, special definition for the term "energy consuming
`load," where they add that it must receive power from a power
`source under control of a microchip, clearly not from the plain
`meaning.
`The issue here is whether the specifications change the
`meaning of "energy consuming load" so that it means what the
`Patent Owner suggests. And the Patent Owners agree with that.
`If you look at their '726 slides, slide 7, they themselves say the
`real issue here is whether the specification narrows this term.
`First, the Patent Owner argues the term is limited based
`on specification because every embodiment describes a
`microchip-controlled switch that manages conducting current to a
`load. On slide 33, we're going to start off by showing first they're
`wrong as a matter of fact because the specification doesn't
`support their construction; and two, they're wrong as a matter of
`law, because as you can see from the Thorner case, which we've
`quoted at the bottom of slide 33, it's not enough for the patentee
`to use a word in the same manner in all embodiments. As
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`IPR2015-01172, IPR2015-01173, IPR2015-01613, IPR2015-
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`Thorner explains, the patentee must clearly express an intent to
`redefine the term.
`And, so, here you're going to see first the specification
`doesn't clearly express an intent to redefine the term; and second,
`just as a matter of law, even if every embodiment did use the term
`that way, it wouldn't be sufficient.
`Moving to slide 34. This is the passage the Patent
`Owner is relying on most to support their narrow definition of
`"energy consuming load," and what they say here is that the very
`character of the invention -- this is on slide 34 -- is that the
`microchip-controlled switch manages conducting current to the
`load using a man-machine interface. The man-machine interface
`is just a user interface. But first of all, you can see what they cite
`for that. They cite the '726 patent, Exhibit 1001, columns 3, line
`61 through 66, but the very passage they cite doesn't say anything
`about the very character of the invention, it says, "according to
`one embodiment."
`This patent makes very clear and the very passage they
`cite makes very clear that it's just describing an exemplary
`embodiment. Further, when you read what they cite to this in this
`passage, all it says is the microchip controls current-conducting
`functions and user interface functions. That's all it says. It
`doesn't say the term "energy consuming load" must be defined to
`require receiving power from a power source under control of a
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`microchip. The specification simply doesn't support the Patent
`Owner's construction.
`Slide 36 is the passage that the Patent Owners rely on
`the second most and it's got the same problems. First, they say
`this is central to the invention, but again, the passage they cite
`isn't central to the invention, it only relates to one embodiment.
`And all they say is central to the invention is that they distinguish
`conventional configurations by providing a low-current user
`interface switch.
`Simply by providing a low-current user interface switch
`doesn't mean the term "energy consuming load" must be limited
`to their narrow construction. And if you read what the passage
`says, it's even more clear. The first passage just says, "the control
`indicator," which is the microchip, "activates a current switch
`upon an input from a user interface." That doesn't support their
`construction.
`And the last part of the passage talks about, unlike
`conventional prior art systems, the activating switch. It's not even
`talking about the microchip, it's talking about the activating
`switch does not conduct current to the load. It has nothing to do
`with the term "energy consuming load" and putting a special
`definition for it.
`Moving to slide 37, not only does that passage not
`support it, slide 37 shows in plain and ordinary meaning is the
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`passage that they quoted, and it shows it's in context of the '726
`patent. And you can see it's very clear that that passage isn't
`meant to be central to the invention at all, it's simply meant to
`describe the embodiment in figure 2, which is clearly and
`repeatedly shown by the specification to be one exemplary
`embodiment.
`Moving to slide 39, not only does the specification not
`support Patent Owner's construction, Patent Owner's construction
`is also wrong because it's inconsistent with the claim language,
`and it can't be applied consistently throughout the patent family.
`As the claims on slide 39 show, the '726 patent, for
`example, claim 1, includes an energy consuming load, it includes
`a microchip, and it tells you what the microchip is supposed to
`do. The microchip is supposed to control the activation of the
`visible indication. It doesn't say anything about receiving power
`from a power source under control of a microchip. It specifies a
`completely different function.
`Then on the right you've got claim 21, that just has the
`term "energy consuming load." This shows when the Patent
`Owner wanted the microchip to be a limitation, it knew how to
`include it. And when the Patent Owner wanted to specify what
`functions the microchip performed, it would specify them. In
`neither of these claims did they specify that the microchip was
`required to control and receive any power from the load.
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`Further, slide 40 shows the same thing. Here you've got
`claim 1 of the '726 patent on the right and claim 52 of the '970
`patent on the left. They both include an energy consuming load,
`they both include a microchip, they both specify that the
`microchip controls the activation of a visible indication. But
`here, claim 52 of the '970 patent, when they -- there they add the
`limitation that controls the connection of the power source to the
`load. So, when the Patent Owner wanted the claims to control
`power to the load, it specified it directly in the claims.
`So, Patent Owner's construction is inconsistent with the
`claim language, and what's important here, if you look at slide 41,
`the Patent Owners conveniently violated a fundamental rule of
`claim construction. On the left in the '726 patent and the straight
`continuations, it says the term "energy consuming load" has their
`specialized definition.
`On the right, the '970 patent, because of that claim 52,
`they don't propose a construction of "energy consuming load."
`So, they concede the term "energy consuming load" cannot, based
`on their construction, be given a definition consistently across the
`family of patents. And they can't because claim 52, it wouldn't
`make sense.
`When the energy consuming load adds that microchip
`limitation, is it the same microchip that's referred to in the body
`of the claim? And when it adds that limitation of controlling
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`power to the load, is that different than the controlling power to
`the load that's already in the claims? It would create more
`confusion than assistance.
`Lastly, they're wrong as a matter of law because the
`case they rely on is Alloc, says exactly what the Thorner case
`says. And in Alloc, the Court makes clear that it's impermissible
`to read the one and only disclosed embodiment into a claim
`without other indicia. It's that other indicia where the patentee
`clearly intends to change the definition of a term. Here they're --
`JUDGE SHAW: We don't have any prosecution history
`here, is that correct, that would indicate the patentee intended to
`limit the invention in this way?
`MR. MOORE: Correct, there is none and the Patent
`Owner doesn't cite to any.
`Now we're going to move to the third part, on slide 48,
`we're going to move to the third part of the energy consuming
`load limitation, which is energy consuming load satisfied even
`under the Patent Owner's construction which we say is incorrect.
`And you can see on slide 49, it is satisfied. You can see the
`energy consuming components are the interface circuitry and the
`infrared transceiver. You can see that they receive power from
`the power source, the power source being the batteries, the green
`line showing that the batteries can convey power to those
`components, and that they do it under control of a microchip
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`because the only thing in between the batteries and the energy
`consuming load in figure 11 is the microchip, the control
`circuitry.
`Important here, you can see that under Patent Owner's
`construction, what the Petitioners argue is the energy consuming
`load is the interface circuitry and the infrared transceiver. It's on
`the battery pack side of figure 11.
`There's about 10 slides, I think there are eight slides
`from 25 to 32 in Global Touch's presentation that take us to task
`because the device can't be the energy consuming load, but it's
`important here, the Petitioners contend that the device on the right
`side of figure 11 is the energy consuming load, under the plain
`meaning, or under the Petitioners' construction, but what we
`contend is the energy consuming load under the Patent Owner's
`construction is the interface circuitry and infrared transceiver.
`So, if we're talking about the Patent Owner's construction, all
`that's relevant is what's on the left-hand side of figure 11.
`JUDGE PETTIGREW: Did you cite that disclosure in
`the petition or only in the reply?
`MR. MOORE: Only in the reply. And that's simply
`because we didn't expect such a narrow definition of "energy
`consuming load." You can see on slide 50 that the Patent
`Owner's own expert agrees with us, on this slide 50, you can see
`the deposition testimony where the Patent Owner's expert admits
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`that the infrared transceiver and the interface circuitries are
`energy consuming load and that they receive power from the
`power source.
`And then on slide 51, you can see the excerpt from the
`Beard declaration, which clearly explains when the only thing
`that's between the batteries and the interface circuitry and the
`infrared transceiver is the control circuitry. The control circuitry
`would be controlling that.
`Moving to slide 52 and issue 2. Issue 2 is does the prior
`art disclose a microchip controlling both the energy consuming
`load and the visible indicator, and this issue is unique to the '970
`patent.
`
`Moving to slide 53, you can see the claim that it comes
`up in, claim 52. Moving to slide 54, you're going to see that
`there's no issue that both the Beard reference discloses a
`microchip that controls the visible indication, and the Danielson
`reference discloses a microchip that controls power to the load.
`On slide 54, you can see the excerpt where figure 22 of
`Danielson controls -- has a microchip that controls power to the
`load. And you can see, is the voltage okay; if it is, the microchip
`starts up; if it isn't, it doesn't start up, it removes the power
`because it doesn't want to lose data. And there's no dispute
`Danielson describes that.
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`Case IPR2
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