Paper No. __
`Filed: February 13, 2017
`
`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
`Patent Owner
`
`____________________
`
`Case IPR2016-00908
`Patent No. 5,796,183
`____________________
`
`
`
`
`
`
`
`
`DECLARATION OF DR. DARRAN CAIRNS
`IN SUPPORT OF PATENT OWNER RESPONSE
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
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`EXHIBIT 2010
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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
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`II. BACKGROUND AND QUALIFICATIONS .............................................. 1
`
`III. MATERIALS REVIEWED .......................................................................... 3
`
`IV. PERSON OF ORDINARY SKILL IN THE ART ...................................... 4
`
`V. OVERVIEW OF THE ’183 PATENT ......................................................... 5
`
`VI. PROPER CLAIM CONSTRUCTION ......................................................11
`
`A.
`
`“closely spaced array of input touch terminals of a keypad” /
`“small sized input touch terminals of a keypad” ...........................13
`
`VII. REFERENCES RELIED ON BY PETITIONER ....................................17
`
`A.
`
`B.
`
`C.
`
`The Problem Solved by the ‘183 Patent ..........................................18
`
`Ingraham I ..........................................................................................20
`
`Caldwell ...............................................................................................27
`
`D. Gerpheide ............................................................................................36
`
`VIII. RESPONSE TO GROUND I ......................................................................40
`
`A. A Skilled Artisan Would Not Have Had A Motivation to Combine
`Ingraham I, Caldwell and Gerpheide. ...............................................40
`
`1.
`
`2.
`
`No Motivation to Combine Caldwell with Ingraham I ........40
`
`No Motivation to Combine Gerpheide with Caldwell and
`Ingraham I ...............................................................................43
`
`B. A Skilled Artisan Would Not Have Expected Succeess In
`Combining the Asserted References. ...............................................48
`
`1.
`
`2.
`
`No Expectation of Success in Combining Caldwell with
`Ingraham I ...............................................................................48
`
`No Expectation of Success in Combining Gerpheide with
`Caldwell and Ingraham I ........................................................50
`
`C.
`
`Petitioner Does Not Show That All Elements Exist In The Art
`When The Claimed Invention Is Viewed As A Whole. ..................52
`
`1.
`
`Claim Element 40(a): an oscillator providing a periodic
`output signal having a predefined frequency .......................52
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`2.
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`3.
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`4.
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`5.
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`Claim Element 40(b): 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 . . . ...........53
`
`Claim Element 40(c): plurality of small sized input touch
`terminals/closely spaced array of small sized input touch
`terminals ..................................................................................58
`
`Claim Element 40(d): 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 .........................................61
`
`Claim Element 40(e): 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
`. . . 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 .................................64
`
`D.
`
`The Remaining Arguments Also Fail Under Petitioner’s Flawed
`Analysis of Claim 40. .........................................................................67
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`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 61 .............................................................67
`
`Independent Claim 83 .............................................................68
`
`Independent Claim 94 .............................................................68
`
`Dependent Claims 41, 43, 45, 64-67, 69, 85, 86, 88, 90, 91, 96,
`97, 99, 101, 102 .........................................................................68
`
`IX. RESPONSE TO GROUND II ....................................................................71
`
`A. A Skilled Artisan Would Not Have Had A Motivation to Combine
`Ingraham I, Caldwell, Gerpheide, and Wheeler. ..............................71
`
`B. A Skilled Artisan Would Not Have Expected Any Success In
`Combining The Asserted References. .............................................73
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`C.
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`Petitioner Does Not Show That All Elements Of The Claims At
`Issue In The Combined Art. .............................................................73
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`X. CONCLUSION ............................................................................................75
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`I, Darran Cairns, declare as follows:
`
`I.
`
`
`INTRODUCTION
`
`1.
`
`I have been retained by UUSI, LLC d/b/a/ Nartron (“Patent Owner” or
`
`“Nartron”) as an independent expert consultant in this proceeding before the Patent
`
`Trial and Appeal Board (“PTAB” or “Board”).
`
`2.
`
`I am being compensated at a rate of $490/hour for my work. I have
`
`no other interest in this proceeding.
`
`3. My compensation is in no way contingent on the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of this
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`proceeding.
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`4.
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`I have been asked to consider the allegations made in the Petition for
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`Inter Partes Review of U.S. Patent No. 5,796,183 (“the ’183 Patent”) (the
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`“Petition”), the declaration of Dr. Subramanian in support of that Petition, and the
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`asserted prior art. My opinions are set forth below.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`
`5.
`
`I am the CEO of Tailored Surfaces, a technology development and
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`consulting company focused on functional coatings for the technology industry,
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`and an Adjunct Associate Professor of Mechanical and Aerospace Engineering at
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`West Virginia University, where I have served on the faculty since 2006. I was an
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`Associate Professor with Tenure at West Virginia University until August 2014.
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`6. My undergraduate degree in Physics (1995) and PhD in Materials
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`Science and Engineering (1999) are from the University of Birmingham in the
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`United Kingdom. From 1998 to 2001 I was a postdoctoral research associate in the
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`Display Laboratory at Brown University. During my time at the University of
`
`Birmingham, I performed research related to optical fibers and optical fiber sensors
`
`and worked closely with engineers at Pirelli Cables. During my time at Brown
`
`University, I performed research on optoelectronic and display devices including
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`flexible electronics, conformable displays, encapsulated liquid crystal devices, and
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`touch sensors.
`
`7.
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`At West Virginia University my research focused on the fabrication of
`
`flexible electronic devices. My work was funded by both federal agencies,
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`including the National Science Foundation, NASA, the Air Force Office of
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`Sponsored Research, and the Department of Energy, and private companies,
`
`including EuropTec USA, Grote Industries, Kopp Glass, Eastman Chemical and
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`Articulated Technologies. I have worked closely with engineers at each of these
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`companies and assisted them in developing and commercializing electronic devices
`
`including electronic lighting for automotive use; and flexible backlights for
`
`displays.
`
`8.
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`In my own research program, I am developing patented technologies
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`on functional coatings for electronic and energy applications. I am a named
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`inventor on 11 issued U.S. patents in the field of touch sensors, displays, and liquid
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`crystal materials.
`
`9.
`
`Prior to joining the faculty at West Virginia University, I worked for
`
`five years as a Research Specialist at 3M Touch Systems. My research there
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`focused on capacitive touchscreen applications. My work at 3M included the
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`development of patented and proprietary technologies on capacitive touch sensors.
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`10.
`
`I am a member of the Society of Information Display (SID), the
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`Institute of Physics (IOP) and the American Society of Mechanical Engineers.
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`11. My students have been awarded prestigious fellowships for work
`
`performed in my laboratory including NSF Graduate Fellowships (3 students),
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`NDSEG Fellowship (1 student) and the RUBY graduate Fellowship (1 student).
`
`12. My curriculum vitae documents more than 79 scientific publications
`
`in journals, books, and peer-reviewed conferences, as well as invited presentations
`
`on my work in polymer materials for electronic devices and surfaces, and is
`
`provided as Exhibit 2003.
`
`III. MATERIALS REVIEWED
`
`
`13.
`
`I have reviewed the following materials for the purpose of preparing
`
`this declaration: Petition of Inter Partes Review of U.S. Patent No. 5,796,183;
`
`U.S. Patent No. 5,796,183 including reexamination certificates issued on April 29,
`
`2013 and June 27, 2014 (Ex. 1001); declaration of Dr. Vivek Subramanian (Ex.
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`1002); Prosecution History of U.S. Patent No. 5,796,183 (Ex. 1004); Prosecution
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`History of Reexamination Control No. 90/012,439 (Ex. 1005); Prosecution History
`
`of Reexamination Control No. 90/013,106 (Ex. 1006); U.S. Patent No. 5,087,825
`
`to Ingraham (“Ingraham I”) (Ex. 1007); U.S. Patent No. 4,731,548 to Ingraham
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`(“Ingraham II”) (Ex. 1008); U.S. Patent No. 5,594,222 to Caldwell (“Caldwell”)
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`(Ex. 1009); U.S. Patent No. 4,758,735 to Ingraham (“Ingraham III”) (Ex. 1010);
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`U.S. Patent No. 5,565,658 to Gerpheide et al. (“Gerpheide”) (Ex. 1012); U.S.
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`Patent No. 5,341,036 to Wheeler et al. (“Wheeler”) (Ex. 1015); U.S. Patent No.
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`5,572,205 to Caldwell et al. (“Caldwell ’205”) (Ex. 1016 and 2006); U.S. Patent
`
`No. 5,463,388 to Boie et al. (“Boie”); List of Patents and Applications Citing U.S.
`
`Patent 5,796,183 (Ex. 2004); and Nartron “Industry Firsts” (Ex. 2005); Institution
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`Decision in this IPR (Ex. 2008); Deposition transcript of Dr. Subramanian (Ex.
`
`2009); U.S. Patent 5,305,017 (Ex. 2011 (Gerpheide ‘017)); U.S. Patent 4,639,720
`
`(Ex. 2012 (Rympalski)).
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`
`14.
`
`I have been informed that factors relevant to determining the level of
`
`ordinary skill may include: the educational level of the inventor; the type of
`
`problems encountered in the art; the prior art solutions to those problems; the
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`rapidity with which innovations are made; the sophistication of the technology; and
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`the educational level of the active workers in the field. On this basis, one of
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`ordinary skill in the art of capacitive touch sensors would have had at least a
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`bachelor’s degree in physics or electrical engineering or equivalent industry
`
`experience in the field.
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`V. OVERVIEW OF THE ’183 PATENT
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`15. The ’183 Patent, issued in 1998, is exemplary of the efforts Nartron
`
`undertook as a pioneer in touchscreen technology. The ’183 Patent builds upon
`
`and provides significant improvements over Ingraham I, Petitioner’s primary
`
`reference, as well as Ingraham II and III. Filed over 20 years ago, the ’183 Patent
`
`provides the foundation upon which today’s touch screen technology is built. See
`
`Ex. 1014, at 1.
`
`16. The ‘183 Patent has been cited at least 196 times by patents and patent
`
`applications and is referenced in at least 148 issued US patents. See
`
`https://patents.google.com/patent/US5796183A/en#citedBy. Many of these
`
`patents are assigned to companies such as Cypress Semiconductor, Samsung
`
`Electronics, Touchscreen Technologies Inc., Microsoft, Nokia and Intel. See Ex.
`
`Ex. 2004.
`
`17. The ’183 Patent issued on August 18, 1998 from an application filed
`
`on January 31, 1996. The ’183 Patent has been reexamined twice. Ex. 1005-1006.
`
`Three of the challenged claims, Claims 37, 38 and 39, were added during the first
`
`reexamination. See Ex. 1001 at 35-36. The remainder of the challenged claims
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`were added during the second reexamination. See Ex. 1001 at 38-41. The ’183
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`Patent generally relates to a capacitive responsive electronic switching circuit
`
`including an oscillator providing a periodic output signal, an input touch terminal
`
`defining an area for an operator to provide an input by proximity and touch, and a
`
`detector circuit coupled to the oscillator for receiving the periodic output signal
`
`from the oscillator, and coupled to the input touch terminal. See, e.g., Ex. 1001,
`
`’183 Patent, Abstract.
`
`18. Capacitive touch keypads at the time of the invention (including the
`
`prior art cited in the Petition) were largely limited to use in kitchen appliances such
`
`as stoves and microwaves. Indeed, the filing date of the application (January 1996)
`
`predates the release of the widely used Palm Pilot 1000 in March 1996. The touch
`
`screen interface for the Palm Pilot was a relatively crude resistive touch sensor that
`
`was not capable of multi touch input.
`
`19.
`
`In early 1996 when the application from which the ‘183 Patent issued
`
`was filed, due to physical space constraints, there was a drive to make capacitive
`
`touch keypads smaller and smaller while increasing the number of touch terminals
`
`on the keypad. Yet, a substantial barrier existed in that the more densely the touch
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`terminals were spaced and the smaller the touch terminals became, the greater the
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`risk of coupling adjacent touch terminals, resulting in multiple actuations of touch
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`terminals or keys where only a single one is desired. This problem is described in
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`the specification of the ‘183 Patent. See Ex. 1001 at 3:64-4:8.
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`20. At the time, the only way that was known to put touch pads as closely
`
`together as possible was to use physical structures to prevent inadvertent actuation
`
`of adjacent touch pads or cross talk. These physical structures included guard
`
`rings, guard bands, or a combination of electrodes with opposing electric fields
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`(collectively referred to as “guard rings”) included as a part of each touch terminal.
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`Id. However, guard rings presented a barrier to developing a truly compact device
`
`because they require additional space and therefore limit the proximity and size of
`
`the touch terminals. There was no known way to overcome this problem until the
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`invention disclosed and claimed in the ’183 Patent.
`
`21. Today’s cell phones and tablets offer a rich user input interface in
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`very large part due to the innovations taught in the ’183 Patent. These devices
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`require a very closely spaced array of sensitive small-sized multi-touch input
`
`sensors that can be rapidly controlled using a microprocessor. In addition, these
`
`devices must be able to recognize multi-touch gestures and differentiate these
`
`gestures from noise, contamination and unintentional touches. The ’183 Patent
`
`was the first to teach the combination of all these things.
`
`22.
`
`In particular, the teachings of the ’183 Patent were crucial to the
`
`elimination of the physical structures used in the prior art to prevent crosstalk
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`between adjacent input touch terminals and an increase in sensitivity that allowed
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`for the reduction in the size of individual input touch terminals. In addition, I
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`understand that the ’183 Patent also teaches how to minimize noise due to
`
`contaminants and how to select oscillator frequencies. This is another critical
`
`contribution that is widely used in today’s cell phones and tablets. The ability to
`
`differentiate between a touch and a partial touch and reject unintentional touches is
`
`essential to the ability to recognize the multi-touch gestures, which led to the rich-
`
`user interface that has driven the rapid adaptation of smart phones and cell phones
`
`utilizing multi-touch capacitive sensors. The ’183 Patent enabled this innovation.
`
`23. By eliminating the need for guard rings in a multi touch pad
`
`configuration, the ’183 Patent offers improvements in detection sensitivity that
`
`allow and enable employment of a multiplicity of small sized touch terminals in a
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`physically close array such as a keyboard. Id. at 5:53-57. This increased
`
`sensitivity is accomplished by using an oscillator circuit in combination with a
`
`floating common operating at a voltage 5V different from the output of the
`
`oscillator and used as a reference for the touch input circuitry and by using high
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`frequency signals (preferably greater than 800 kHz) to drastically reduce the
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`impact of supply noise and noise due to contaminants on the screen. Thus, the
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`combination of the innovative sensor design combining an oscillator and floating
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`common with the implementation of a microprocessor to selectively provide output
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`frequencies to a closely spaced array of touch input points opened up the
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`development and commercialization of today’s multi touch capacitive sensors in
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`cell-phones and tablets that replaced crude resistive sensors for mobile devices.
`
`This innovative touch sensor design allows for input touch terminals to be very
`
`small and densely arranged together. With the use of a microprocessor to send the
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`oscillator signal to each of these small, closely spaced input touch terminals, it was
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`possible to create for the first time a keypad we now see in cell phones and tablets.
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`24. Accordingly, the ’183 Patent paved the way for today’s touch screen
`
`devices. The ’183 Patent achieves detection sensitivity without the need for guard
`
`rings in several ways described below.
`
`25. First, the ’183 Patent offers “enhanced sensitivity” because it
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`minimizes “susceptibility to variations in supply voltage and noise” by use of high
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`oscillator frequencies and by “use of a floating common and supply that follow the
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`oscillator signal to power the detection circuit.” Id. at 6:1-22; 18:66-19:6. The
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`floating common provides a reference that is only 5V away from the high-
`
`frequency oscillator output signal, enabling the system to compare the signals that
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`are only 5V apart. This 5V differential thus minimizes noise that otherwise would
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`be generated due to the presence of contaminants on the touch pad, such as liquids
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`or skin oils. Ex. 1001 at 4:18-20; 5:48-53; 16:12-24.
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`26. Second, the ’183 Patent discloses that this “enhanced sensitivity” of
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`the detection circuit also uses an oscillator that outputs a signal with a voltage that
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`is as high as possible, for example a 26V peak square wave, while at the same time
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`is low enough to obviate the need for expensive components and testing to
`
`alleviate safety concerns. Id. at 6:6-13; 12:6-23.
`
`27. Third, the ’183 Patent’s detection circuit “operates at a higher
`
`frequency than prior art touch sensing circuits” which “is not a benign choice”
`
`relative to the prior art detection circuits. Id. at 8:9-14. The ’183 Patent discloses
`
`extensive testing that was performed in order to determine the required frequency
`
`ranges. With reference to Figure 3A, the ’183 Patent discloses that the tests were
`
`designed to find the ideal frequency ranges that would provide a substantial
`
`enough “impedance difference between the paths to ground of the touched pad 57
`
`and adjacent pads 59.” Id. at 11:1-9. “This . . . result[s] in a much lower incidence
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`of inadvertent actuation of adjacent touch pads to that of the touched pad.” Id.; see
`
`also id. at 11:19-25.
`
`28. Thus, the ’183 Patent discloses a circuit with very high frequencies, a
`
`floating common generator, and as high an oscillator voltage as possible so as to
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`bring the input touch terminals in closer proximity and make them smaller, while
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`still providing enhanced detection sensitivity, without the need for physical
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`structures like guard rings to isolate the touch terminals, which therefore permits
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`touch terminals to be spaced extremely close together and yet avoid inadvertent
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`actuations. Id. at 8:9-11:60. A schematic of the essential elements of the invention
`
`is shown in Figure 11 reproduced below.
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`
`
`29. The inventions of the ‘183 Patent therefore made a groundbreaking
`
`contribution to the art as it existed at the time the application was filed. To my
`
`knowledge, no other device existed that allowed for the combination of smaller
`
`input terminals with enhanced detection sensitivity. The invention of the ‘183
`
`Patent represented a marked departure from the prevailing approach at the time.
`
`VI. PROPER CLAIM CONSTRUCTION
`
`
`30.
`
`I understand that Dr. Subramanian has applied what he has concluded
`
`is the “plain and ordinary meaning” of claim terms for which neither Nartron nor
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`Petitioner previously offered constructions in the related District Court litigation.
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`Ex. 1002, ¶ 25. For these terms, Dr. Subramanian has not proposed any
`
`constructions, and it is not clear what constructions he applied.
`
`31.
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`It is my opinion that, for purposes of this proceeding only, the scope
`
`of each claim limitation, under its plain meaning in light of the specification as
`
`understood by a person of skill in the art, precludes Petitioner’s obviousness
`
`contentions as addressed below. To the extent I have been able to understand how
`
`Dr. Subramanian is construing these critical terms, I disagree with his
`
`constructions for the reasons explained below.
`
`32.
`
`I understand that the claims are to be interpreted according to how
`
`they are understood by one of ordinary skill in the art based on the claim language
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`itself, the specification and the file history, which I understand is considered the
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`“intrinsic evidence.” I understand that, although Nartron proposed constructions of
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`three terms in its preliminary response and the Board addressed these terms in the
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`Institution Decision, Paper 12 at 8-12, the Board did not construe any specific
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`terms and disagreed with Nartron’s proposed constructions. To preserve the
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`arguments, I nevertheless address one of these three terms again here. I have
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`carefully reviewed and considered this intrinsic evidence, and based on that review
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`and consideration, I believe that the critical terms I have identified should be
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`construed as set forth below.
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`A.
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`“closely spaced array of input touch terminals of a keypad” /
`“small sized input touch terminals of a keypad”
`
`33.
`
`It is my opinion that “closely spaced array of input touch terminals of
`
`a keypad” / “small sized input touch terminals of a keypad” should be construed as
`
`touch terminals that are closely-spaced or small-sized without requiring physical
`
`structures to isolate the touch terminals. My reasons are as follows.
`
`34. The claim language makes clear that input touch terminals are either
`
`“small” or in a “closely spaced array.” Claims 37, 83, and 94 (and their dependent
`
`claims) recite a “closely spaced array of input touch terminals of a keypad” and
`
`claims 40, 61 (and their dependent claims) recite “small sized input touch terminals
`
`of a keypad.” These limitations appear only in the multi touch claims.
`
`35. The ’183 Patent teaches both single touch pad and multi touch pad
`
`embodiments. With respect to the multi touch pad embodiment, the specification
`
`is unequivocal that this embodiment is different from the prior art in that it does
`
`not require the use of guard rings. Indeed, the problem that the ’183 Patent solves
`
`is making a highly sensitive detection circuit without the requirement of guard
`
`rings in a multi touch pad system.
`
`36. For example, in the background of the invention, the ’183 Patent
`
`explains that “[a]n additional consideration in using zero force switches resides in
`
`the difficulties that arise in trying to employ dense arrays of such switches.” Ex.
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`1001 at 3:54-4:3. The ’183 Patent further teaches that the prior art Ingraham I
`
`patent “employs conductive guard rings around the conductive pad of each touch
`
`terminal in an effort to decouple adjacent touch pads and prevent multiple
`
`actuations where only a single one is desired.” Id. at 4:3-8. The ’183 Patent
`
`discourages guard rings because, in a multi touch embodiment that requires guard
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`rings, the sensitivity of the detection circuits is such that it requires the operator’s
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`finger to substantially overlap the touch terminal. Id. at 4:10-14. The ’183 Patent
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`discloses that even with the use of guard rings, susceptibility to surface
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`contaminants, cross talk, and multiple actuations of adjacent touch pads remains a
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`problem. Id. at 4:14-24. The ‘183 Patent strives to improve upon the prior art by
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`the use of sensitive detection circuitry, disclosing that “[s]mall touch terminals
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`placed in close proximity by necessity require sensitive detection circuits.” Ex.
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`1001 at 4:24-25.
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`37. FIG. 11 of the ’183 Patent, reproduced below, depicts a multiple touch
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`pad embodiment:
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`The multiple touch pad circuit of Figure 11 is a variation of the embodiment shown
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`in Figure 4. It contains some, but not all, of the elements of the single touch pad
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`circuit of Figure 4. The specification discloses that “the touch circuit 400 shown in
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`FIGS 4 and 8 and the input touch terminal pad 451 (FIG 4)” are included in the
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`Figure 11 embodiment. Not included is Figure 4’s guard ring 460. Id. at 18:39-43.
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`The components that are similar to those in Figure 4 are designated with the same
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`reference numerals and other components are discussed in greater detail at columns
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`18 and 19. Id. at 18:34-19:6. The multiple touch pad embodiment includes an
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`array of touch detection circuits designated as 9001 through 900nm. Id. at 18:34-41.
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`38. Figure 8, reproduced below, depicts the touch detection circuitry that
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`is used for touch circuits 9001 through 900nm in the multi touch pad embodiment.
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`Ex. 1001, Figure 8. As seen in Figure 8, the touch detection circuit does not
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`include a guard ring. The ’183 Patent explains that “[t]ouch circuit 400, as shown
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`in FIG. 8, preferably includes a transistor 410 having a base connected to touch
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`pad 450 via resistor 413 and line 451.” Ex. 1001 at 14:47-49. Thus, in the multi
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`touch pad embodiment, line 451 is connected directly to the touch pad itself,
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`without requiring any extra components such as guard rings. With respect to FIG.
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`11, the ’183 Patent explains that:
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`The use of high frequency in accordance with the present invention
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`provides distinct advantages for circuits such as the multiple touch pad
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`circuit of the present invention due to the manner in which crosstalk is
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`substantially reduced without requiring any physical structure to
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`isolate the touch terminals. Further, the reduction in crosstalk afforded
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`by the present invention allows the touch terminals in the array to be
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`more closely spaced together.
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`Id. at 18:66-19:6 (emphasis added). Thus, guard rings are not required in a multi
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`touch pad configuration in stark contrast to the prior art that requires the use of
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`guard rings to prevent unwanted actuation of adjacent touch pads.
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`39. Thus, for the touch terminals to be both in a “closely spaced array”
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`and “small sized” as taught and claimed in the ‘183 Patent, physical structures to
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`isolate the touch terminals, such as guard rings that are part of the terminals
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`themselves, must be eliminated.
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`VII. REFERENCES RELIED ON BY PETITIONER
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`40.
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`It is my opinion that the prior art asserted by Petitioner is wholly
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`distinct from the claimed invention in numerous ways. The prior art being asserted
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`also was attempting to solve different problems. At the time of the invention,
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`critical questions remained about how to bring touchpads closer together and yet
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`retain high sensitivity. One barrier to sensitivity was crosstalk, which occurs when
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`touchpads are sufficiently close such that a neighboring touchpad is inadvertently
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`actuated. Another barrier to sensitivity was susceptibility to surface
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`contamination.
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`41. At the time of the invention, a person of skill in the art would have
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`believed that one solution would solve both problems, the solution being either to
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`use guard rings around each touchpad (which prevented the touchpads from being
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`sufficiently small or in a dense array) or to make sensitivity adjustments such that a
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`user’s finger would have to overlap the touch terminal or come into contact with
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`the face plate (which prevented the touchpads from being activated by proximal
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`touch). Id. 4:4-14.
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`42.
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`It is my opinion that, as of the time of the invention, a person of skill
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`in the art would not have expected to overcome these problems in one circuit
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`design that did not employ either of the known solutions. Rather, conventional
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`wisdom at the time would have suggested focusing on sensitivity and using guard
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`rings (thus sacrificing small touch pad size and touch pad density), or sensitivity
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`adjustment (thus sacrificing the ability to detect touch when proximate a
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`touchpad). The patented claims go the opposite way in that they teach a dense
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`array of small sized touch pads that can detect proximal touch with improved
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`sensitivity, reduction of crosstalk and improved resistance to contaminants.
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`A. The Problem Solved by the ‘183 Patent
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`43. The specification of the ‘183 Patent explains the problems existing at
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`the time of the invention. For one, the prior art utilized means such as conductive
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`guard rings around the touchpads or adjustments in the detection voltage to prevent
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`unintentional actuations. Ex. 1001 3:64-4:15. But, in my opinion, guard rings
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`necessarily require space in order for the system to function as intended.
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`Moreover, even with guard rings, sensitivity to contaminants that can capacitively
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`couple adjacent touchpads remained a problem. Ex. 1001 4:14-23. The prior art
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`also used sensitivity adjustment. Id. 4:8-14. But sensitivity adjustment necessarily
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`required the user’s finger to touch the face plate or entirely overlap the touchpad.
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`Id.
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`44.
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`It is my opinion that the ‘183 Patent solves these problems in a unique
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`and surprising way. The surprising discovery of the ‘183 Patent is the
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`development of a very dense array of small sized capacitive touch terminals that
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`are sensitive enough to detect proximate touch but yet avoid crosstalk and are able
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`to work in the presence of contaminants. Ex. 1001 5:33-42. Existing technologies
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`at the time of the invention had struggled with this and failed to find a way to
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`address these problems. The ‘183 Patent accomplished this