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
`____________________
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`Before THOMAS L. GIANNETTI, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II.
`
`THE ‘183 PATENT ....................................................................................... 3
`
`A.
`
`B.
`
`Specification ......................................................................................... 3
`
`Claims ................................................................................................... 5
`
`III. PROPER CLAIM CONSTRUCTION ........................................................ 6
`
`IV. THE ASSERTED PRIOR ART IS DISTINCT FROM THE
`INVENTION. ................................................................................................. 7
`
`A.
`
`B.
`
`C.
`
`The Problem Solved by the ‘183 Patent ............................................ 8
`
`Ingraham I is Distinct From the Inventions. ................................... 10
`
`Caldwell is Distinct from the Inventions.......................................... 13
`
`D. Gerpheide is Distinct from the Claimed Inventions. ...................... 16
`
`V. RESPONSE TO GROUND I ...................................................................... 19
`
`A. A Skilled Artisan Would Not Have Had A Motivation to Combine
`Ingraham I, Caldwell and Gerpheide. ............................................... 19
`
`1.
`
`2.
`
`No Motivation to Combine Caldwell with Ingraham I ........ 20
`
`No Motivation to Combine Gerpheide with Caldwell and
`Ingraham I ............................................................................... 23
`
`B.
`
`A Skilled Artisan Would Not Have Expected Succeess In
`Combining the Asserted References. ............................................... 26
`
`1.
`
`1.
`
`No Expectation of Success in Combining Caldwell with
`Ingraham I ............................................................................... 27
`
`No Expectation of Success in Combining Gerpheide with
`Caldwell and Ingraham I ........................................................ 30
`
`C.
`
`Petitioner Does Not Show That All Elements Exist In The Art
`When The Claimed Invention Is Viewed As A Whole. .................. 31
`
`1.
`
`2.
`
`Claim Element 40(a): an oscillator providing a periodic
`output signal having a predefined frequency ....................... 33
`
`Claim Element 40(b): a microcontroller using the periodic
`output signal from the oscillator, the microcontroller
`
`
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`i
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`

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`3.
`
`4.
`
`5.
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`Case IPR2016-00908
`Patent No. 5,796,183
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`selectively providing signal output frequencies to a plurality
`of small sized input touch terminals of a keypad . . . ........... 34
`
`Claim Element 40(c): plurality of small sized input touch
`terminals/closely spaced array of small sized input touch
`terminals .................................................................................. 39
`
`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 ......................................... 41
`
`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 ................................. 45
`
`D.
`
`The Remaining Arguments Also Fail Under Petitioner’s Flawed
`Analysis of Claim 40. ......................................................................... 49
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 61 ............................................................. 49
`
`Independent Claim 83 ............................................................. 50
`
`Independent Claim 94 ............................................................. 50
`
`Dependent Claims 41, 43, 45, 64-67, 69, 85, 86, 88, 90, 91, 96,
`97, 99, 101, 102 ......................................................................... 51
`
`VI. RESPONSE TO GROUND II .................................................................... 54
`
`A.
`
`B.
`
`C.
`
`A Skilled Artisan Would Not Have Had A Motivation to Combine
`Ingraham I, Caldwell, Gerpheide, and Wheeler. .............................. 54
`
`A Skilled Artisan Would Not Have Expected Any Success In
`Combining The Asserted References. ............................................. 56
`
`Petitioner Does Not Show That All Elements Of The Claims At
`Issue In The Combined Art. ............................................................. 56
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`VII. CONCLUSION ............................................................................................ 58
`
`
`
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`ii
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`

`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`
`Co.,464 F.3d 1356, 80 USPQ2d 1641 (Fed. Cir. 2006) ...................................... 27
`
`Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902 (Fed.
`
`Cir. 1988) ............................................................................................................. 32
`
`In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) ................................................... 27, 30
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 32
`
`In re Rambus Inc., 694 F.3d 42 (Fed. Cir. 2012) ....................................................... 6
`
`In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959) ........................................ 27
`
`In re Rinehart, 531 F.2d 1048 (CCPA 1976) .......................................................... 27
`
`In re Sponnoble, 405 F.2d 578 (CCPA 1969) .......................................................... 33
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................. 23, 26, 27, 32
`
`Microboards Tech., LLC d/b/a Afinia v. Stratasys, Inc., IPR2015-
`
`00287, Paper 13 (May 28, 2015) ......................................................................... 19
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................6, 7
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) ........................ 32
`
`Statutes
`
`35 U.S.C. § 103 ................................................................................................. 32, 33
`
`
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`
`LIST OF EXHIBITS
`
`Declaration of Dr. Darran Cairns in support of Patent Owner
`Preliminary Response
`
`Curriculum Vitae of Dr. Darran Cairns
`
`2002
`
`2003
`
`2004
`
`List of Patents and Applications Citing U.S. Patent 5,796,183
`
`2005
`
`Nartron “Industry Firsts”
`
`2006
`
`U.S. Patent 5,572,205 (Caldwell et al.)
`
`2007
`
`Notice of Deposition of Dr. Vivek Subramanian
`
`2008
`
`Institution Decision in IPR2016-00908
`
`2009
`
`2010
`
`2011
`
`Deposition transcript of Dr. Vivek Subramanian in IPR2016-
`00908, February 3, 2017
`
`Declaration of Dr. Darran Cairns in support of Patent Owner
`Response
`
`U.S. Patent 5,305,017 (Gerpheide ‘017)
`
`2012
`
`U.S. Patent 4,639,720 (Rympalski)
`
`
`
`iv
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`
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`

`

`INTRODUCTION
`
`I.
`
`
`On April 15, 2016, Petitioner filed a petition for inter partes review
`
`(“Petition”) seeking cancellation of claims 37-41, 43, 45, 47, 48, 61-67, 69, 83-86,
`
`88, 90, 91, 94, 96, 97, 99, 101, and 102 of U.S. Patent No. 5,796,183 (the “’183
`
`Patent”). The Board instituted inter partes review of certain claims and determined
`
`that “Petitioner has not demonstrated a reasonable likelihood of prevailing on its
`
`obviousness challenge to independent claim 37 and its dependent claims 38 and 39.”
`
`(Paper 12 at 16). Petitioner filed a Request for Rehearing with respect to claims 37-
`
`39. (Paper 14). On December 13, 2016, the Board again refused to institute review
`
`of claims 37-39. (Paper 17). The Petition fails for the following reasons.
`
`The patent claims are to circuits—circuits that prevent inadvertent actuation
`
`of touchpads due to crosstalk and surface contaminants. At the time the patent
`
`application was filed, the skilled artisan reviewing the prior art would never have
`
`expected the claimed circuit to be successful—it did not utilize guard rings but
`
`instead combined high frequencies and an unknown manner of dynamically sending
`
`multiple signal frequencies to a densely spaced array of small sized touchpads,
`
`which differed from conventional wisdom, and did not require a finger to entirely
`
`overlap a touch terminal.
`
`The Petition filters out unknowns, failures, and critical differences that the
`
`inventors had to overcome to construct a flawed argument of obviousness over three
`
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`1
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`references: (1) Ingraham I (Ex. 1007), about an elementary 150 V, 60 kHz circuit
`
`designed for an appliance such as a lamp that can turn on or off by touch; (2)
`
`Caldwell (Ex. 1009), about a single sided sensor design to be placed on the back side
`
`of a substrate that can replace mechanical switches and requires that the user’s finder
`
`actually touch the large buttons on the substrate; and (3) Gerpheide, which pertains
`
`to a single touch pad device and was known at the time of the invention to be
`
`incompatible with multi-touchpad devices.
`
`Compounding the errors in Petitioner’s approach, evaluation of the totality of
`
`Petitioner’s arguments reveals them to be composed via hindsight. For Ground One,
`
`to shoehorn it into the claims, the Ingraham I-Caldwell-Gerpheide combination
`
`would need to be modified to fill a chasm that the prior art combination leaves
`
`vacant. The prior art references would have to be modified to permit proximate
`
`touching of a dense array of touchpads while avoiding crosstalk and susceptibility
`
`to contaminants. Not one of the references gives reason to make this modification
`
`or believe it would be successful. Petitioner uses the ’183 Patent as a roadmap to
`
`cobble together disparate prior art references for an obviousness combination
`
`without any regard to how the references would function as a whole.
`
`Similarly, for Ground Two, Petitioner tries to shore up Wheeler, an even
`
`further removed and non-analogous reference, by combining it with the references
`
`in Ground One. But far from matching up, Wheeler discusses different applications
`
`
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`2
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`Patent No. 5,796,183
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`(two-handed industrial machine control versus sophisticated dense array of control
`
`switches). Just as in Ground One, Petitioner provides no reason for a skilled artisan
`
`to make the modifications that would be necessary to combine and each modification
`
`carries with it no reason to expect success.
`
`The claims should be upheld.
`
`II. THE ‘183 PATENT
`
`
`A.
`
`Specification
`
`
`
`The ’183 Patent generally relates to a capacitive responsive electronic
`
`switching circuit including an oscillator providing a periodic output signal, a
`
`microcontroller that selectively provides signal output frequencies to small sized
`
`input touch terminals, and a detector circuit that is responsive to signals from the
`
`oscillator via the microcontroller and the presence of an operator’s capacitance to
`
`ground. Ex. 1001, ’183 Patent, Abstract; Ex. 2010 ¶¶15-17.
`
`The ’183 Patent offers “enhanced sensitivity” because it minimizes
`
`“susceptibility to variations in supply voltage and noise” by use of high oscillator
`
`frequencies and “a floating common and supply that follow the oscillator signal to
`
`power the detection circuit.” Id. at 6:1-22; 18:66-19:6. The oscillator supplies a
`
`continuous and periodic signal to the touch circuits. Id. at 19:15-18.
`
`The floating common provides a reference that is 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 minimizes noise that otherwise would be
`
`generated due to the presence of contaminants on the touch pad, such as liquids or
`
`skin oils. Ex. 1001 at 4:18-20; 5:48-53; 16:12-24; Ex. 2010 ¶¶19-29.
`
`The ‘183 Patent also provides advantages “in the manner in which the touch
`
`terminal detection circuit is interfaced to the touch terminals and to external control
`
`systems,” such as the microcontroller. Ex. 1001 at 6:13-16. The microcontroller
`
`“selects each row of the touch circuits” and provides the signal from the oscillator
`
`to selected rows of the touch circuits. Id. at 18:39-49. “In this manner,
`
`microcontroller 500 can sequentially activate the touch circuit rows and associate
`
`the received inputs from the columns of the array with the activated touch circuit(s).”
`
`Id.
`
`The microcontroller has an “expanded ability to detect faults.” Id. at 6:22-30.
`
`As recited in the claims, the microcontroller selectively provides signal frequencies
`
`to the small sized input touch terminals. The ’183 Patent discloses extensive testing
`
`that was performed in order to determine frequency ranges required to 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; Fig 3A. “This . . . result[s] in
`
`a much lower incidence of inadvertent actuation of adjacent touch pads to that of the
`
`touched pad.” Id.; see also id. at 11:19-25; Ex. 2010 ¶¶19-29.
`
`
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`B. Claims
`
`
`
`The four independent claims at issue include claims 40, 61, 83, and 94.
`
`Independent claim 40 is exemplary. The text in brackets is added for reference
`
`purposes.
`
`Independent claim 40 recites:
`
`
`
`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;
`
`[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,
`
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`[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.
`
`III. PROPER CLAIM CONSTRUCTION
`
`
`The ’183 Patent is expired, and therefore, the claim terms should be construed
`
`according to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). In re Rambus
`
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Petitioner asserts that “the Board need not
`
`construe” the claim terms and further proposes that, to the extent that any claim
`
`terms require construction, the Board should adopt Petitioner’s Markman
`
`constructions set forth in the related District Court litigation. Petition at 12. Those
`
`positions are irrelevant here because, as a party opposing an infringement claim,
`
`Petitioner’s litigation-induced constructions are inherently unreliable and can suffer
`
`from bias. Phillips, 415 F.3d at 1318.
`
`Patent Owner proposed constructions of three terms in its preliminary
`
`response and the Board addressed these terms in the Institution Decision. Paper 12
`
`at 8-12. In the Institution Decision, the Board did not construe any specific terms.
`
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`Patent Owner preserves its arguments with respect to the construction of the three
`
`terms it advanced in the preliminary response and relies on the declaration of Dr.
`
`Cairns in that regard. Ex. 2010 ¶¶30-39. For purposes of this proceeding only,
`
`Patent Owner submits that 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.
`
`IV. THE ASSERTED PRIOR ART
`INVENTION.
`
`IS DISTINCT FROM THE
`
`
`
`Petitioner makes sweeping remarks about what the combined system shows
`
`or how it would purportedly meet the claim limitations without any explanation as
`
`to differences between the prior art and the claimed invention. When stripped of
`
`Petitioner’s sleight of hand regarding what the prior art references show, the
`
`deficiencies in the prior art become apparent.
`
`The asserted prior art is distinct from the invention and was attempting to
`
`solve different problems. Ex. 2010 ¶40. At the time of the invention, critical
`
`questions remained about how to bring touchpads closer together and yet retain high
`
`sensitivity. One barrier to sensitivity was crosstalk, which occurs when touchpads
`
`are sufficiently close such that a neighboring touchpad is inadvertently actuated. Ex.
`
`1001 3:64-4:8. Another barrier to sensitivity was susceptibility to surface
`
`contamination. Id. 4:17-24.
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`At the time of the invention, it was believed that one solution would solve
`
`both problems, the solution being either to use guard rings around each touchpad
`
`(which prevented the touchpads from being sufficiently small or in a dense array) or
`
`to make sensitivity adjustments such that a user’s finger would have to overlap the
`
`touch terminal or come into contact with the face plate (which prevented the
`
`touchpads from being activated by proximal touch). Id. 4:4-14; Ex. 2010 ¶41.
`
`At the time of the invention, a person of skill in the art would not have
`
`expected to overcome these problems in one circuit design that did not employ either
`
`of the known solutions. Ex. 2010 ¶42. Conventional wisdom at the time would have
`
`suggested focusing on sensitivity and using guard rings (thus sacrificing small touch
`
`pad size and touch pad density), or sensitivity adjustment (thus sacrificing the ability
`
`to detect touch when proximate a touchpad). Id. The patented claims go the opposite
`
`way in that they teach a dense array of small sized touch pads that can detect
`
`proximal touch with improved sensitivity, reduction of crosstalk and improved
`
`resistance to contaminants. Id.
`
`A. The Problem Solved by the ‘183 Patent
`
`
`
`The specification of the ‘183 Patent explains the problems existing at the time
`
`of the invention. For one, the prior art utilized means such as conductive guard rings
`
`around the touchpads or adjustments in the detection voltage to prevent unintentional
`
`actuations. Ex. 1001 3:64-4:15. But guard rings necessarily require space in order
`
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`for the system to function as intended. Ex. 2010 ¶43. And, even with guard rings,
`
`sensitivity to contaminants that can capacitively couple adjacent touchpads remained
`
`a problem. Ex. 1001 4:14-23. The prior art also used sensitivity adjustment. Id.
`
`4:8-14. But sensitivity adjustment necessarily required the user’s finger to touch the
`
`face plate or entirely overlap the touchpad. Id; Ex. 2010 ¶43.
`
`The ‘183 Patent solves these problems. Ex. 2010 ¶44. The surprising
`
`discovery of the ‘183 Patent is the development of a very dense array of small sized
`
`capacitive touch terminals that are sensitive enough to detect proximate touch but
`
`yet avoid crosstalk and are able to work in the presence of contaminants. Ex. 1001
`
`5:33-42. Existing technologies at the time of the invention had struggled with this
`
`and failed to find a way to address these problems. Ex. 2020 ¶44. The ‘183 Patent
`
`accomplished this, in part, by utilizing a sensitive touch detection circuit at high
`
`frequencies coupled with the sophisticated capabilities of a microcontroller to
`
`dynamically send input frequencies to rows of a densely spaced array of small sized
`
`touchpads. Id.
`
`When looking at the prior art as a whole, it is unmistakable that none of the
`
`references relate to the problems that the ‘183 Patent solved. For example, as
`
`explained further below, Ingraham I seeks to develop a capacitive touch circuit for
`
`an appliance but makes no reference
`
`to operation
`
`in
`
`the presence of
`
`contaminants. Ex. 2010 ¶45. Caldwell seeks to solve immunity to short circuits—
`
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`not touch detection sensitivity—caused by water on the front surface of two sided
`
`capacitive sensors by developing a single sided design. Id. And Gerpheide seeks to
`
`reduce electrical interference in single-point touch pads that only strives to
`
`determine location, not anything about contaminants or proximity of touch. Id.
`
`B.
`
`Ingraham I is Distinct From the Inventions.
`
`
`
`Ingraham I, Petitioner’s primary reference, as well as Ingraham II and III, are
`
`Nartron inventions that were before the PTO during prosecution and re-examination.
`
`Ex. 2010 ¶46. Indeed, Natron invented much of the early touchscreen technology
`
`upon which today’s smartphone and tablet touchscreens are based. Ex. 1014, at 1.
`
`The ’183 Patent distinguishes Ingraham I (including Ingraham II by reference) and
`
`Ingraham III numerous times on several grounds. Ex. 1001, 3:44-50; 4:3-8; 5:43-
`
`50; 6:6-16; 8:11-18; 18:1-10.
`
`Ingraham I differs from the ’183 Patent in several ways and was seeking to
`
`solve a different problem. Ex. 2010 ¶47. First, it intentionally eliminated an
`
`oscillator because of the failures and problems with the use of high frequency
`
`oscillators that were known in the art at the time the ‘183 Patent was filed. Ex. 1007
`
`at 1:35-48; Ex. 2010 ¶¶47-50. Ingraham I explains that oscillators can cause a “no-
`
`pulse condition, to which the switching circuit may detrimentally respond.” Ex.
`
`1007 at 1:35-48. Ingraham I therefore eliminates the oscillator in order to avoid
`
`“catastrophic failure of erroneous output switching caused by the failure of an
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`oscillator.” Id. at 1:45-49. Thus, Ingraham I lacks an oscillator, as Petitioner admits
`
`(Petition at 16; Ex. 1002, ¶44), and in fact teaches away from using an oscillator,
`
`which is an essential component of the claims. Ex. 2010 ¶¶47-50.
`
`The other problem Ingraham I sought to solve is crosstalk between touch
`
`switches. Id. at 2:3-13; Ex. 2010 ¶51. Ingraham I explains that it seeks to overcome
`
`crosstalk by employing a guard band around each adjacent plate member. Id. A
`
`person of skill in the art would have known that Ingraham I’s guard band physically
`
`limits the closeness and size of the touch terminals because, by its very nature, a
`
`guard band prevents touch terminals from being small or close. Ex. 2010 ¶¶51-58.
`
`Ingraham I explains that the guard band requires the input touch terminals to
`
`be spaces apart, not in a dense array. Id. As seen in Figure 3, the input portions 13
`
`include all of touch plate assembly 12, not discrete components of it. Both input
`
`portions 13 and touch plate assembly 12 include a guard band 20. Ex. 1007 at 2:41-
`
`55. Both input portions 13 and touch plate assembly 12 also include touch plate
`
`member 18 which Ingraham I explains are separated by spaces 24 and are “spaced
`
`apart in order to insulate plates 18 from one another and from ground.” Ex. 1007 at
`
`2:41-53. As seen in the figures, the input portions 13 require a guard band (20)
`
`(equivalent of a guard ring) and spaces (24) that surround each of the touch plates
`
`(18). Id. at 2:41-55; FIG. 1. Thus, the use of a guard band requires that the input
`
`portions be large and prohibits them from being as close as they could be without
`
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`the use of the guard band. Ex. 2010 ¶¶51-58. As also seen in Figure 3, each of the
`
`input lines (57) carrying the touch signal are connected directly to the
`
`microcomputer. Thus, one line is required per touch input terminal, which
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`additionally prevents close spacing of input touch terminals. Ex. 2010 ¶51-58.
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`Ingraham I also is distinct from the ‘183 Patent because it uses a detection
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`circuit that was not suitable for providing the enhanced sensitivity to crosstalk and
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`contaminants taught by the ‘183 Patent. Ex. 2010 ¶59. As explained in the
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`specification of the ‘183 Patent, Ingraham I’s detection circuitry was not able to
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`avoid susceptibility to surface contamination. Ex. 1001 at 4:3-27. The ‘183 Patent
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`explains the advantages of its detection circuitry over that of Ingraham I in that,
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`unlike Ingraham I’s detector circuit, it uses a diode selected for high speed and omits
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`a capacitor coupled across the base of the detection transistor to make the circuit
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`more sensitive. Id. at 18:1-33.1 At the time of the invention a person of skill in the
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`art would not have expected that the use of the detector circuitry disclosed in the
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`‘183 Patent would lead to the increased sensitivity to touch achieved by the patented
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`invention. Ex. 2010 ¶¶59-60.
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`1 The ‘183 Patent cites to Ingraham III in column 18 (Ex. 1001 at 18:1-5), but the
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`detection circuit of Ingraham III is the same as that in Ingraham I. Ex. 2010 ¶59.
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`For the foregoing reasons, Ingraham I is distinct from the ‘183 Patent, which
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`claims ways to employ a very dense array of small sized capacitive touch terminals
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`that do not require a guard band (ring) but still are sensitive enough to detect
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`proximate touch but yet avoid crosstalk. Id. at ¶¶46-61. Ingraham I only addresses
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`avoidance of crosstalk between adjacent touchpads—not the additional problem of
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`touch sensitivity in the presence of contaminants—and it uses a guard band to
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`address crosstalk. Id. Ingraham I does not teach or suggest the invention of the ’183
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`Patent, which provides for a vastly different capacitive response switching circuit
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`with heightened sensitivity to detect faults. Id.
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`C. Caldwell is Distinct from the Inventions.
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`Caldwell attempts to solve the problem of touch panel malfunction due to
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`moisture interference on appliances such as microwaves which have a two-sided
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`design with high impedance sensors. Ex. 1009 at 1:39-50. Caldwell discloses a
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`touch pad system for use in kitchens. Ex. 1009 at 1:42-44; 2:45-48. Caldwell
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`explains that “[e]xisting touch panel designs provide touch pad electrodes attached
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`to both sides of the substrate.” Id. at 1:28-30. According to Caldwell, the problem
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`with such touch pads is that they have “openings [for mounting the switch], as well
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`as openings in the switch itself, [that] allow dirt, water and other contaminants to
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`pass though the substrate or become trapped within the switch.” Ex. 1009 at 1:18-
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`21; Ex. 2010, ¶¶63-64.
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`Caldwell sought to address this problem by creating a single sided sensor
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`design on the back side of a substrate and replacing high impedance circuitry with
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`low impedance circuitry. Id. at 2:20-32; 5:12-13. In essence, Caldwell seeks to
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`reduce the sensitivity of the sensor in an effort to improve moisture resistance. Ex.
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`2010 ¶65. However, Caldwell was only concerned with large, simple buttons and
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`not with a dense array or small sized touchpads. Ex. 1009 at 2:32-48. Caldwell was
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`also not concerned about proximate touch but rather required that the user’s finger
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`come in full contact with the substrate. Id. 3:34-36. A person of skill in the art
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`would have known that Caldwell’s simplistic approach would not be useful in
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`applications where accurate determination of sequential activations are required, or
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`for touchpads that are very close together as taught in the ‘183 Patent. Ex. 2010
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`¶¶66-69, ¶¶74-81.
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`That Caldwell’s touch pads are quite large can be seen in Figures 3 and 4:
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`These figures demonstrate that central electrode 16 is not small since it is
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`significantly larger than surface mount transistor 26. Further, it must be surrounded
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`by outer electrode 18 to produce an electrical field and isolate adjacent touch pads.
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`These components are integral to the operation of the sensor and must be present
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`and connected to the sense lines 24 through the surface mount transistor 26. Further,
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`as shown in Caldwell’s Figure 6, the spacing between neighboring central electrodes
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`16 is increased by the use of the outer electrode and surface mount components. Ex.
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`2010 ¶¶66-69, ¶¶74-81.
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`Further, like Ingraham I, Caldwell does not selectively activate rows with a
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`signal output from the oscillator as in the ’183 Patent. Ex. 2010, ¶¶70-73. Caldwell
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`sequentially detects touch by sending a signal to a single strobe line and a signal to
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`a single sense line to address it and detecting whether the electrostatic field has been
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`interrupted on that pad. Ex. 1009 at 8:13-24. If the electrostatic field is not
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`interrupted, the strobe moves to the next touch row and repeats (Figures 14a and
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`14b). Thus, Caldwell performs sequential monitoring, always sending the same
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`frequency to every row, sequentially. Id at 6:59-62. Caldwell’s microprocessor is
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`programmed to sequentially select each strobe line and each sense line, not randomly
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`or dynamically, but always in a programmed sequence, beginning with the first
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`strobe and sense lines and following the sequence all the way to the last strobe and
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`sense line. Id. at 8:21-9:15. Once each strobe and sense line have been sequentially
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`selected, the program is reset and starts at the beginning. Id. 9:15-21.
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`By contrast, the ’183 Patent performs continuous, dynamic selection of
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`frequencies so that when a touch is detected, the microprocessor can determine
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`where the touch took place. Ex. 2010, ¶¶70-73; Ex. 1001 at 11:3-10 (explaining that
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`the selection of frequencies “allows the detection threshold for the touched pad to
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`be set well below that of an adjacent pad”); id. at 11:19-25 (describing that
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`frequencies are dynamically selected to be “sufficient enough to accurately
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`distinguish between an intended touch and the touch of an adjacent pad”); id. at
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`10:10-35 (selecting frequencies to discriminate between touch and inadvertent
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`actuation between individual touchpads).
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`D. Gerpheide is Distinct from the Claimed Inventions.
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`The Gerpheide reference, Petitioner’s third reference, was presented to the
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`PTO during the second reexamination. Petitioner relies on Gerpheide for just one
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`claim element,