Tria1s@us_1:_>to.gov
`571-272-7822
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`Paper 12
`A
`Entered: October 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD,
`
`Petitioner,
`
`V.
`
`UUSI, LLC d/b/a NARTRON,
`A Patent Owner.
`
`Case IPR2016-00908
`
`Patent 5,796,183
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`
`KAl\/[RAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative PatentJudge.i
`
`DECISION
`
`*
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`EXHIBIT 2008
`
`
`571-272-7822
`
`Paper 12
`A
`Entered: October 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD,
`
`Petitioner,
`
`V.
`
`UUSI, LLC d/b/a NARTRON,
`A Patent Owner.
`
`Case IPR2016-00908
`
`Patent 5,796,183
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`
`KAl\/[RAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative PatentJudge.i
`
`DECISION
`
`*
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`EXHIBIT 2008
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`IPR2016—00908
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`Patent 5,796,183
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`I.
`
`INTRODUCTION
`
`Petitioner Samsung Electronics Co., Ltd. filed, on April 15, 2016, a
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`request for inter partes review of claims 37-41, 43, 45, 47, 48, 61-67, 69,
`
`83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 (the “Challenged Claims”) of
`
`U.S. Patent No. 5,796,183 (“the ’183 patent”). Paper 2 (“Petition” or
`
`“Pet.”). On July 20, 2016, Patent Owner UUSI, LLC d/b/a Nartron filed a
`
`Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless it is determined that there is “a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” Based on the information presented in the Petition and
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`Preliminary Response, we are persuaded that there is a reasonable likelihood
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`Petitioner would prevail with respect to claims 40, 41, 43, 45, 47, 48, 61-67,
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`69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102. We are not persuaded,
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`however, that there is a reasonable likelihood Petitioner would prevail with
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`respect to claims 37-39.
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`Accordingly, we institute inter partes review of claims 40, 41, 43, 45,
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`47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 on the
`
`grounds specified below. Our factual findings and conclusions at this stage
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`of the proceeding are based on the evidentiary record developed thus far.
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`This is not a final decision as to patentability of claims for which inter
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`partes review is instituted. Further, we decline to institute inter partes
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`review of claims 37-39 for the reasons set forth below.
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`11.
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`BACKGROUND
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`A.
`
`The ’I83 patent (Ex. I 001)
`
`The ’ 183 patent relates to a “capacitive responsive electronic
`
`switching circuit used to make possible a ‘zero force’ manual electronic
`
`switch.” Ex. 1001, 1:6-9. According to the ’183 patent, zero force touch
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`switches have no moving parts and no contact surfaces that directly switch
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`loads. Id. at 1:40-41. Instead, such switches detect an operator’s touch and
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`use solid state electronics to switch loads or activate mechanical relays. Id.
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`at 1:42-44. “A common solution used to achieve a zero force touch switch
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`has been to make use of the capacitance of the human operator.” Id. at 3:12-
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`l4. The ’183 patent recites three methods of capacitive touch switches use .
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`to detect an operator’s touch, one of which relies on the change in capacitive
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`coupling between a touch terminal and ground. Id. at 3:14-15, 3:44-46. In
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`this method, “[t]he touch of an operator then provides a capacitive short to
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`ground via the operator’s own body capacitance that lowers the amplitude of
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`oscillator Voltage seen at the touch terminal.” Id. at 3252-56. Significantly,
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`the operator of a capacitive touch switch using this method need not come in
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`conductive contact with the touch terminal. Id. at 3:57-59. Rather, the
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`operator needs only to come into close proximity of the switch. Id.
`
`The ’ 183 patent recognizes that placing the capacitive touch switches
`
`described above in dense arrays can result in unintended actuations. Id. at
`
`3:65-4:3. One method of addressing this problem known in the art involves
`
`placing guard rings around each touch pad. Id.-at 4:4-10. Another known
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`method of addressing this problem is to adjust the sensitivity of the touch
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`pad to a point where the operator’s finger must entirely overlap a touch
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`terminal. Id. at 4:10-14. “Although these methods (guard rings and
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`sensitivity adjustment) have gone a considerable way in allowing touch
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`switches to be spaced in comparatively close proximity, a susceptibility to
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`surface contamination remains as a problem.” Id. at 4: 14—18.
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`The ’ 183 patent seeks to overcome the problem of unintended
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`actuation of small capacitive touch switches “by using the method of sensing
`
`body capacitance to ground in conjunction with redundant detection
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`circuits.” Id. at 5:33—35. Specifically, the ’l83 patent’s touch detection
`
`circuit operates at frequencies at or above 50 kHz, and preferably at or above
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`800 kHz, in order to minimize the effects of surface contamination on the
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`touch pads. Operating at these frequencies also improves sensitivity,
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`allowing close control of the proximity required for actuation of small sized
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`touch terminals in a close array, such as a keyboard. Id. at 5:48-57.
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`The ’183 patent has been subject to two reexaminations: Ex Parte
`
`Reexamination Control Nos. 90/012,439, certificate issued April 29, 2013
`
`(“Reexam 1”) and 90/013,106, certificate issued June 27, 2014 (“Reexam
`
`2”). Claims 37, 38, and 39 were added to the ’183 Patent during Reexam 1
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`and all other Challenged Claims were added during Reexam 2. See
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`generally Exs. 1005 and 1006.
`
`B.
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`Illustrative Claims
`
`Petitioner presents its arguments concerning Ground I primarily in the
`
`context of independent claim 37. Pet. 39-60 (referring to Petitioner’s
`
`analysis of claim 37 and its dependent claims 38 and 39). Patent Owner
`
`similarly presents its arguments primarily in the context of independent
`
`claim 37. Prelim. Resp. 33. Claims 37 and 40 illustrate the claimed subject
`
`matter and are reproduced below with bracketed material added.
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`37. A capacitive responsive electronic switching circuit for a
`controlled device comprising:
`a
`[37a] an oscillator providing a periodic output signal
`having a predefined frequency, wherein an oscillator voltage is
`greater than a supply voltage;
`a
`[3 7b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a closely spaced array of input
`touch terminals of a keypad, the input touch terminals
`comprising first and second input touch terminals;
`[370] the first and second touch terminals defining areas
`for an operator to provide an input by proximity and touch; and
`[37d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal fromsaid oscillator, and
`coupled to said first and second touch terminals, said detector
`circuit being responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said first and second touch
`terminals when proximal or touched by the operator to provide
`a control output signal for actuation of the controlled device,
`said detector circuit being configured to generate said control
`output signal when the operator is proximal or touches said
`second touch terminal after the operator is proximal or touches
`said first touch terminal.
`
`40. A capacitive responsive electronic switching circuit
`comprising:
`[40a] an oscillator providing a periodic output signal
`having a predefined frequency;
`[40b] a microcontroller using the periodic output signal
`from the oscillator, the microcontroller selectively providing
`signal output frequencies to a plurality of small sized input
`touch terminals of a keypad, wherein the selectively providing
`comprises the microcontroller selectively providing a signal
`output frequency to each row of the plurality of small sized
`input touch terminals of the keypad;
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`[40c] the plurality of small sized input touch terminals
`defining adjacent areas on a dielectric substrate for an operator
`to provide inputs by proximity and touch; and
`[40d] a detector circuit coupled to said oscillator for
`receiving said periodic output signal from said oscillator, and
`coupled to said input touch terminals, said detector circuit being
`responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said touch terminals when
`proximal or touched by the operator to provide a control output
`signal,
`
`[40e] wherein said predefined frequency of said oscillator
`and said signal output frequencies are selected to decrease a
`first impedance of said dielectric substrate relative to a second
`impedance of any contaminate that may create an electrical path
`on said dielectric substrate between said adjacent areas defined
`by the plurality of small sized input touch terminals, and
`wherein said detector circuit compares a sensed body
`capacitance change to ground proximate an input touch terminal
`to a threshold level to prevent inadvertent generation of the
`control output signal.
`
`C.
`
`Cited References
`
`Petitioner relies on the following references:
`
`1. Ingraham, U.S. Patent No. 5,087,825, issued Feb. 11, 1992,
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`(Ex. 1007, “Ingraham I”) along with portions of Ingraham, U.S.
`
`Patent No. 4,731,548, issued Mar. 15, 1988 (Ex. 1008, “Ingraham
`
`II”) incorporated by reference.
`
`2. Caldwell, U.S. Patent No. 5,594,222, issued Jan. 14, 1997
`
`(Ex. 1009, “Caldwell”).
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`3. Gerpheide et al., U.S. Patent No. 5,565,658, issued Oct. 15, 1996
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`(Ex. 1012, “Gerpheide”).
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`4. Wheeler et al., U.S. Patent No. 5,341,036, issued Aug. 23, 1994
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`(Ex. 1015, “Wheeler”).
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`D.
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`Proposed Grounds of Unpatentabilily C
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`Petitioner advances two grounds of unpatentability under 35 U.S.C.
`
`§ 103(a) (Pet. 3):
`
`
`
`
`
`37—41, 43, 45, 61, 64—67, 69,
`
`
`
`83, 85, 86, 88, 90, 91, 94, 96,
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`97, 99,101, and 102
`
`
`
`
`Ingraham I, Caldwell,
`Gerpheide
`
`
`
`
`Ingraham I, Caldwell, 47, 48, 62, 63, and 84
`Gerpheide, Wheeler
`
`E.
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`Additional Evidence
`
`Petitioner further supports its challenges with a Declaration by Dr.
`
`Vivek Subramanian (Ex. 1002). In addition to filing a preliminary response,
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`Patent Owner supports its assertions in response to Petitioner’s challenges
`
`with a Declaration byDr. Darran Cairns (Ex. 2002).
`
`F.
`Related Proceedings
`2
`The ’ 183 patent is the subject of ongoing litigation between the parties
`in the Western District of Michigan: UUS], LLC d/b/a Nartron v. Samsung
`
`Electronics Co., Ltd.) and Samsung Electronics America, Inc.,iCase No. 2.
`1:15-cV—00146—JTN, originally filed on February 13, 2015 (W.D. Mich.) (the
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`“District Court litigation”). Pet. 1.
`
`111.
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`CLAIM CONSTRUCTION
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`The ’183 patent expired on January 31, 2016. Pet 11; Prelim. Resp. 7.
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`Our review of the claims of an expired patent is “similar to that of a district
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`court’s review,” wherein claim terms are given their ordinary and customary
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`meaning as understood by a person of ordinary skill in the art at the time of
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`the invention, as set forth by the Court in Phillips v. AWI-I Corp., 415 F.3d
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`1303, 1312-14 (Fed. Cir. 2005) (en banc). In re Rambus, Inc., 694 F.3d 42,
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`46 (Fed. Cir. 2012); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
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`2131, 2144—45 (2016). Any special definition for a claim term must be set
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`forth in the specification with reasonable clarity, deliberateness, and
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`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Petitioner urges that we need not construe the terms of the Challenged
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`Claims. Pet 12. To the extent we construe a particular term, Petitioner urges
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`that we adopt the constructions it set forth in the District Court litigation. Ia’.
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`Patent Owner seeks construction of the three sets of claim limitations
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`discussed below.
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`A.
`
`The supply voltage limitations
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`Patent Owner seeks construction of the limitations: “oscillator
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`voltage is greater than a supply voltage,” as recited in independent claim 37
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`and “peak voltage of the signal output frequencies is greater than a supply
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`voltage” as recited in each of independent claims 61, 83, and 94
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`(collectively, the “supply voltage limitations”). Prelim. Resp. 14~l7. Patent
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`Owner proposes the following construction of the supply voltage limitations:
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`“the oscillator, and its supply signal and periodic output signal having a
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`predefined frequency, must be within the capacitive responsive electronic
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`switching circuit, not outside of the switching circuit such as an external
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`commercial power supply from the wall.” Id. at 14.
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`Petitioner did not seek construction of the supply voltage limitations
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`in the District Court litigation. See Pet. 12—15.
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`Independent claim 37 recites, in relevant part, “an oscillator providing
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`a periodic output signal having a predefined frequency, wherein an
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`oscillator voltage is greater than a suppbz voltage” (emphasis added). We
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`determine, based on the context of the supply voltage limitation in this
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`claim, that one of ordinary skill in the art would understand the term
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`“oscillator voltage” as referring to the “periodic output signal” and the term a
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`“supply voltage” as referring to a supply voltage of the oscillator. Such an
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`understanding is consistent with the Specification, which discloses voltage
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`regulator 100 provides supply voltages 104, 105, and 106 to oscillator 200.
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`Ex 1001, 11:64-12:29, Figs. 4, 5. Contrary to Patent Owner’s contention,
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`the claim languagedoes not restrict the supply voltage to exclude an external
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`commercial power supply. Rather, the Specification teaches: A
`
`A
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`It will be apparent to those skilled in the art that various
`components of voltage regulator 100 may be added or
`excluded depending upon the source of power available
`to power the oscillator 200. For example, if the available
`power is a 110 V AC 60 Hz commercial power line, a
`transformer may be added to convert the 110 V AC
`power to 24 V AC. Alternatively, if a DC battery is used,
`the AC/DC convertor among other components may be
`eliminated.
`
`Id. at l3:23~31. Thus, the Specification discloses supply voltages of
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`oscillator 200 including batteries and commercial power lines. Because
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`Patent Owner’s proposed construction is contrary to this disclosure, we are
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`not persuaded by Patent Owner’s argumentsand do not adopt Patent
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`Owner’s construction of the supply voltage limitation recited in claim 37.
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`Independent claims 61, 83, and 94 each recite in relevant part, “a
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`microcontroller using the periodic output signal from the oscillator, the
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`microcontroller selectively providing signal output frequencies .
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`.
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`. wherein
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`a peak voltage ofthe signal outputfrequencies is greater than a supply
`
`voltage” (emphasis added). We determine, based on the context of the
`
`supply voltage limitations in these claims, that one of ordinary skill in the art
`
`would understand the term “supply Voltage” as referring to a supply voltage
`
`of the claimed microcontroller. Contrary to Patent Owner’s contention, the
`
`claim language does not restrict the supply voltage to exclude an “external
`
`commercial power supply.” Indeed, dependent claims 64, 90, and 101 each
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`recite “wherein the supply voltage is a battery supply voltage.” Because
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`Patent Owner’s proposed construction seeking to exclude external supply
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`voltages is contrary to the explicit language of these dependent claims, we
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`are not persuaded by Patent Owner’s arguments and do not adopt Patent
`
`Owner’s construction of the supply Voltage limitations recited in claims 61,
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`83, and 94.
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`B.
`
`The input touch terminals limitations
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`Patent Owner seeks construction of the limitations: “the “closely
`
`spaced array of input touch terminals of a keypad,” as recited in each of
`
`independent claims 37, 83, and 94 and “small sized input touch terminals of
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`a keypad,” as recited in each of independent claims 40 and 61 (collectively,
`
`the “input touch terminals limitations”). Prelim. Resp. 9—14. Patent Owner
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`proposes the following construction of the input touch limitations: “touch
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`terminals that are closely-spaced or smal1—sized without requiring physical
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`structures to isolate the touch terminals.” Id. at 9.
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`We do not adopt Patent Owner’s construction. The plain language of
`
`the Challenged Claims does not foreclose physical structures isolating
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`adjacent touch terminals. The Specification recites:
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`9 The use of a high frequency in accordance with the
`present invention provides distinct advantages for circuits
`such as the multiple touch pad circuit of the present
`invention due to the manner
`in which crosstalk is
`
`requiring any physical
`substantially reduced swithout
`structure to isolate the touch terminals.
`Further,
`the
`reduction in crosstalk afforded by the present invention,
`allows the touch terminalssin the array to be more closely
`spaced together.
`
`Ex 1001, l8:66—l9:6. This passage indicates a skilled artisan would be able
`
`to remove the isolating structures and, nevertheless, use the present
`
`invention in order to space the touch terminals close together without
`
`creating crosstalk. This passage, however, does not require that the touch
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`terminals must exclude isolating structures, and Patent Owner’s construction
`
`seeks to create such a requirement. We do not import into the claim
`
`language. non—limiting statements from the Specification such as the
`
`disclosure addressed herein. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d
`
`1359, 1369 (Fed. Cir. 2004). Further, we note the “use of a high
`
`frequency”—the very element that enables one to exclude physical isolating
`
`structures——is not recited in independent claims 37, 40, 61, 83, and 94.
`
`Accordingly, we are not persuaded by Patent Owner’s arguments and do not
`
`adopt Patent Owner’s construction seeking to require that the input touch
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`terminal limitations of independentclaims 37, 40, 61, 83, and 94 exclude
`
`physical isolating structures.
`
`C.
`
`.
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`“selectively providing signal outputfirequencies ”
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`Patent Owner seeks construction of the limitation “selectively
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`providing signal output frequencies,” as recited in each of independent
`
`claims 37, 40, 61, 83, and 94. Prelim. Resp. 17—19. Patent Owner proposes
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`the following construction for this limitation: “selectively sending signals
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`selected from various frequencies from a microcontroller to the input touch
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`terminals.” Id. at 17-18.
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`We decline to construe this limitation as Patent Owner contends
`
`because Patent Owner fails to explain persuasively why such a construction
`
`would clarify the plain and ordinary meaning of the claim language. Vivid
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`Techs, Inc. v. Am. Sci. & Eng ’g, 1110., 200 F.3d 795, 803 (Fed. Cir. 1999)
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`(explaining that only claim terms in controversy need to be construed, and
`
`only to the extent necessary to resolve the controversy). To the extent Patent
`
`Owner argues the scope of this limitation precludes Petitioner’s prior art
`
`contentions, we address these arguments in Section IV.B.2.b. below.
`
`Thus, having reviewed Patent Owner’s arguments and evidence, we
`
`do not agree with Patent Owner’s constructions of the supply voltage
`
`limitations, the input touch terminal limitations, or the limitation “selectively
`
`providing signal output frequencies.” Although we address Patent Owner’s
`
`proposed constructions of these limitations above, we do not construe further
`
`these limitations because additional construction is not necessary to our
`
`analysis on whether to institute a trial. Vivid Techs., 200 F.3d at 803.
`
`IV. ANALYSIS
`
`Petitioner contends claims 37-41, 43, 45, 61, 64—67, 69, 83, 85, 86,
`
`88, 90, 91, 94, 96, 97, 99, 101, and 102 would have been obvious over the
`
`combination of Ingraham I, Caldwell, and Gerpheide. Pet. 3. Petitioner also
`
`contends that claims 47, 48, 62, 63, and 84 would have been obvious over
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`Ingraham I, Caldwell, Gerpheide, and Wheeler. Id. For the reasons that
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`follow, we are persuaded that Petitioner has demonstrated a reasonable
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`likelihood of prevailing on its challenges with respect to claims 40, 41, 43,
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`45, 47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102.
`
`Petitioner has not demonstrated, however, a reasonable likelihood of
`
`prevailing with respect to claims 37-39.
`A.
`Overview ofCited References
`I.
`Iingraham I (Ex. I007) and Ingraham II (Ex. I008)
`Ingraham I discloses a capacity response keyboard consisting of
`
`7
`
`2
`
`2
`
`switches that respond to the change in capacity from a user touching the
`
`switch. EX. 1007 at 1:5-9. Each switch includes a touch plate assembly and
`
`a control circuit. Id. at 2:28-35, Figs. 2, 3. Each touch plate assembly
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`includes a guard band that reduces interference between the switches. Id. at
`
`2:46-49, Abstract. When a keyboard user touches the outer surface of the
`
`switch, the capacity-to-ground for the switch’s touch plate increases. Id. at
`3:1-6, 3:21-47. This increase is detected by the switch’s touch sensing,
`circuit, which sends an output signal to a microcomputer. Id.
`
`The ’ 183 Patent Specification makes several references to Ingraham 1,
`including describing Ingraham I as operating at relatively lower frequencies
`than the invention of the ’ 183 Patent. Ex. 1001, 8:11-14; see also id. at
`
`3:44-50,423-8, 6:6—l6, 18:1-10. According to the ’l83 patent:
`
`The specific touch detection method of the present
`invention has similarities to the devices of U.S. Pat. No.
`
`4,758,735 aI1d.U.S. Pat. No. 5,087,825 [Ingraham 1].
`However, significant
`improvements are offered in the
`means of detection and in the development of an overall
`system to employ the touch switches in a dense array and
`in an improved zero force palm button.
`The touch
`detection circuit of the present
`invention features
`operation at
`frequencies at or above 50 kHz and
`preferably at or above 800 kHz to minimize the effects of
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`surface contamination from materials such a skin oils and
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`water.
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`Id. at 5:43-53.
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`Ingraham I incorporates by reference certain portions of prior art
`
`patent Ingraham 11, upon which Petitioner relies as meeting certain
`
`limitations of the Challenged Clams. Pet. 9 (citing EX. 1007, 3:21-24 as
`
`incorporating Ingraham II’s control circuit 14 (“A detailed description of
`
`control circuit 14 is provided in U.S. Pat. No. 4,731,548, issued Mar. 15,
`
`1988 to Ronald Ingraham, the disclosure of which is hereby incorporated
`
`herein by reference.”)).
`
`2.
`
`Caldwell (Ex. I009)
`
`Caldwell discloses a touch pad system, including a touch sensor that
`
`detects user contact, for use in kitchens. EX. 1009, 126-9, 1:42-44, 2:45-48.
`
`Caldwe1l’s touch pad includes “an active, low impedance touch sensor
`
`attached to only one side of a dielectric substrate.” Id. at 2:22-23. Figure 6
`
`of Caldwell shows a matrix of touch pads comprising a touch panel. Id. at
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`5:60-61. To monitor the touch pads, Caldwell’s system sequentially
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`provides an oscillating square wave signal to a row or column of touch pads
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`and then sequentially selects columns or rows of sense electrodes 24 to sense
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`the signal output from the touch pad. Id. at 4:39-51, 6:40-63.
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`3.
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`Gerpheide‘ (Ex. 1012)
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`Gerpheide discloses a capacitive touch responsive system that detects
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`the location of a touch. EX. 1012, 1:10-14, 2:61-3:12. To reduce electrical
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`interference regardless of its frequency, Gerpheide varies the oscillator
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`signal frequency provided to an array of input touch terminals. Id. at Figs. 4,
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`7, 625-8, 6:19-26, 8:22-9:33.
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`9 4.
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`Wheeler (Ex. 1015)
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`Wheeler describes a two-hand industrial machine operator control
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`station having capacitive proximity switches. Ex. 1015, 4:40-42.
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`According to Wheeler, safety considerations in certain environments require
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`a machine operator to activate two switches in sequence in order to operate
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`an industrial machine. Id. at 117-18. Wheeler replaces the palm button
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`switches of such industrial machines with capacitive. proximity switches, so
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`that the operator must activate two capacitive proximity switches in
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`sequence within a certain time interval to operate an industrial machine. Id
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`at 1:63-2:5, 6:10-46.
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`B.
`
`Ground Islngraham I, Caldwell, and Gerpheide
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`Below, we address the parties’ arguments first in the context of claim
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`37 and then in the context of the other Challenged Claims.
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`I .
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`Asserted Obviousness of Claims 3 7-39
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`Petitioner’s analysis, as supported by the Subramanian Declaration,
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`demonstrates where Petitioner contends each element of claim 37 is taught
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`or suggested in Ingraham I, Caldwell, and Gerpheide. Pet. 15-36. In
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`particular, Petitioner contends Ingraham I’s power supply 70 generates a
`
`15V supply voltage for microcomputer 80. Pet. 19; Ex. 1002 1] 50.
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`According to Petitioner, this 15V supply voltage for microcomputer 80
`
`meets the supply voltage limitation of claim 37. Id. The supply voltage
`
`limitation of claim 37, however, refers to a supply voltage ofthe claimed
`
`oscillator, not the claimed microcontroller. As discussed above (Section
`
`III.A.), one of ordinary skill in the art would understand the term “supply
`
`Voltage” in claim 37, read in the context of the entire claim, refers to the
`
`supply voltage ofthe oscillator. Such an understanding is consistent with .
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`the Specification, which discloses that voltage regulator 100 provides supply
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`Voltages 104, 105, and 106 to oscillator 200. See, e. g., EX 1001, 11:64-
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`12:29, Figs. 4, 5. Because Petitioner fails to identify in the cited references a
`
`teaching or suggestion of the supply voltage limitation as properly
`
`construed, we determine Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its obviousness challenge to independent claim
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`37 and its dependent claims 38 and 39.
`
`2.
`
`Asserted Obviousness of Claim 40
`
`Petitioner’s analysis, as supported by the Subramanian
`
`Declaration, demonstrates where each element of claim 40 is taught or
`
`suggested in Ingraham I, Caldwell, and Gerpheide. Pet. 3949. More
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`specifically, Petitioner refers to its analysis of element 37a and
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`contends that Ingraham I and Caldwell teach or suggest the oscillator
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`of element 40a. Id. at 39. Unlike element 37a, element 40a does not
`
`recite a supply voltage limitation, and thus Petitioner’s analysis of
`
`element 40a does not suffer the deficiency described above with
`
`regard to element 37a. See supra Section IV.B.l.
`
`With respect to element 40b, Petitioner refers to its analysis of
`
`element 37b and contends that Ingraham I’s microcomputer 80 meets
`
`the claimed microcontroller and input portions 13 meet the claimed
`
`“small sized input touch terminals of a keypad.” Pet. 39 (citing id. at
`
`19-20). Relying on Dr. Subramanian’s testimony, Petitioner contends
`
`that it would have been readily apparent to one of ordinary skill to
`
`modify the microcomputer and input portions of Ingraham 1 given the
`
`teachings of Caldwell such that “rows of input portions 13 would be
`
`selected sequentially and the oscillator signal provided to the selected
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`row.” Id. at 24 (citing EX. 1002 1] 64; EX. 1009, 6:40-63). According
`
`to Petitioner, a system so modified would selectively provide the
`
`oscillator signal frequency to the input touch terminals of a keypad,
`
`thereby meeting the claimed “selectively providing a signal output
`
`frequency to each row of the plurality of small sized input touch
`
`terminals of the keypad.” Id at 26, 39. The sameoscillator signal
`
`would be sequentially provided to each row of Ingraham I’s input
`
`portions 13 until all rows are scanned. Id. at 55 (citing EX. 1009,
`
`6:40-63, 8:20-23; EX. 1002, 1[ 132). Petitioner further asserts that
`
`Gerpheide teaches varying the oscillator signal frequency provided to
`
`an electrode array in order to account for electrical interference. Id at
`
`28 (citing Ex. 1012, 625-8, 6:19-26, 8:22-9:33, Figs. 4, 7; EX. 1006,
`
`329-30, 333-34). Again relying on Dr. Subramanian, Petitioner
`
`alleges, “one of ordinary skill in the art would have been motivated to
`
`incorporate interference negating functionality similar to that
`
`described by Gerpheide in the above discussed Ingraham I-Caldwell
`
`3
`
`system.” Id. at 28 (citing EX. 1002, 11 72). Thus, Petitioner contends
`
`the system of Ingraham I-Caldwell-Gerpheide selectively provides
`
`signal output frequencies, as opposed to only a single frequency. Id.
`at 29, 40.
`0
`Petitioner refers to its analysis of element 37c and contends that
`
`Ingraham I’s input portions 13 meet the input touch terminals of
`element 40c because each input portion 13 defines an area of
`dielectric member 26 where the user can provide an input by
`
`proximity and touch. Id. at 30 (citing EX. 1007 at 2:64-67, 3:1-6,
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`3:30-36), 41.
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`As to element 40d, Petitioner refers to its analysis of element
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`37d and contends that each of Ingraham I’s touch sensing circuits
`
`within input portions 13—as modified in light of Caldwell to the
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`oscillator signal via the microcontroller—-meets this limitation. Id. at
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`32-35, 41-42.
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`Petitioner contends the following limitations of element 40e constitute
`
`statements of intended use and, therefore, “should not be given any
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`patentable weight given that claim 40 is an apparatus claim”: “to decrease a
`
`first impedance of said dielectric substrate relative to a second impedance of
`
`any contaminate that may create an electrical path on said dielectric
`
`substrate between said adjacent areas defined by the plurality of small sized
`
`input touch terminals” and “to prevent inadvertent generation of the control
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`output signal.” Id. at 43, 48. Nevertheless, Petitioner asserts that the
`
`microcontroller of a combined Ingraham I—Caldwell—Gerpheide system
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`selectively varies the oscillator signal frequency provided to the input
`
`portions 13. Id. at 42—43. Relying on Dr. Subramanian’s testimony,
`
`Petitioner further contends that:
`
`[O]ne of ordinary skill in the art would have been motivated to
`configure the oscillator of the combined Ingraham I-Caldwell-
`Gerpheide system to provide a frequency between 100 kHz and
`200 kHz, or a frequency greater than 200 kHz because such a
`high frequency range would have provided a low impedance
`touch sensor.
`
`Id. at 43-44 (citing Ex. 1002 W 96-97; Ex. 1009, 4:39—50, 6:41-43).
`
`Thus, according to Petitioner, it would have been obvious to one of
`
`ordinary skill to optimize and select an oscillator frequency to
`
`“decrease a first impedance of said dielectric substrate relative to a
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`second impedance of any contaminate that may create an electrical
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`path.” Id. at 44-47. Again relyingon Dr. Subramanian’s testimony,
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`Petitioner also contends that Ingraham I teaches or suggests the
`
`claimed “detector circuit compares a sensed body capacitance change
`
`to ground proximate an input touch terminal to a threshold level”
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`because ‘‘when a user touches or is proximal to the input portion 13,
`
`the user’s body capacitance to ground 42 decreases the voltage level
`
`on base 52 of transistor50, which translates into an increase in the
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`voltage difference between the emitter and base (V13B).” Id. at 47
`(citing EX. 1007, 3:34~39; Ex. 1002 ‘H 100). Thus, according to
`
`Petitioner and Dr. Subramanian:
`
`[O]ne of ordinary skill in the art would have found it obvious to
`configure the circuitry used in the combined Ingraham I-
`Caldwell—Gerpheide system as discussed above to take into
`account inadvertent touch detections,including any caused by 7
`contaminates, position of a user’s finger, etc., by using
`threshold values that refine the sensitivity of the touch
`detections for particularapplications and environments.
`
`Id. at 48-49 (citing EX. 1002 11 101).
`
`We have reviewed the information provided by Petitioner,
`including the relevant portions of the supporting Subramanian
`
`Declaration. We decline Petitioner’s suggestion to disregard the
`
`“intended use” limitations within element 40e and, instead, accord all
`
`limitations of claim 40 patentable weight. Nevertheless, having
`
`reviewed the information provided by Petitioner and based on the
`
`record at this stage of the proceedings, we are persuaded that
`
`Petitioner has demonstrated a reasonable likelihood of prevailing on
`
`this challenge.
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`Re
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