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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`UUSI, LLC d/b/a NARTRON
`Patent Owner
`
`____________________
`
`Case IPR2016-00908
`Patent No. 5,796,183
`____________________
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`
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`REBUTTAL DECLARATION OF DR. VIVEK SUBRAMANIAN
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`Page 1 of 13
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`SAMSUNG ET AL. EXHIBIT 1017
`Samsung v. Nartron
`IPR2016-00908
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 2
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`Response to Teaching Away Opinions ............................................................................... 3
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`Response to Incompatibility and Inoperability Arguments ................................................ 7
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`CONCLUSION ................................................................................................................. 12
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`I.
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`II.
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`III.
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`IV.
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`i
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`Page 2 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`I, Vivek Subramanian, declare as follows:
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`I.
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`INTRODUCTION
`1.
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`I have been retained by Samsung Electronics Co., Ltd. (“Petitioner”)
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`as an independent expert consultant in this proceeding before the United States
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`Patent and Trademark Office (“PTO”). I previously provided testimony in this
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`proceeding. (See Ex. 1002; Ex. 2009.) As with my previous work, although I am
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`being compensated at a rate of $600/hour for the time I spend on this matter, no
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`part of my compensation is contingent on the nature of my findings, the
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`presentation of my findings in testimony, or the outcome of this or any other
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`proceeding. I have no other interest in this proceeding. Relevant aspects of my
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`educational background, career history, and other qualifications were provided in
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`my prior testimony. (See Ex. 1002 ¶¶ 5-15).
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`2.
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`I have been asked to respond to certain opinions set forth by Dr.
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`Darran Cairns, who I understand has been retained by the Patent Owner in this
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`proceeding.1 My rebuttal opinions are set forth below. All of my opinions are
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`based on the documents I reviewed and my knowledge and professional judgment.
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`1 I only respond to selected opinions by Dr. Cairns relating to certain
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`positions in his declaration. Doing so does not mean that I agree with any of Dr.
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`Cairns’ opinions that I do not respond to in this rebuttal declaration.
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`2
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`Page 3 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`In forming the opinions in this rebuttal declaration, I considered the Declaration of
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`Dr. Cairns (Ex. 2010), his deposition testimony (which I understand is being
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`submitted as Exhibit 1017 by Petitioner), the exhibits cited in the Declaration of
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`Dr. Cairns, and any other materials I refer to in this declaration in support of my
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`opinions. In forming these opinions, I have also drawn on my knowledge and
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`experience in designing, developing, researching, and teaching touch systems
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`technology. My opinions are set forth below.
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`II. Response to Teaching Away Opinions
`3.
`Dr. Cairns contends that “Ingraham I teaches away from using an
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`oscillator and in fact eliminates it altogether.” (Ex. 2010 at ¶ 93, citing Ex. 1007 at
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`1:28-48.) According to Dr. Cairns, “Ingraham I explains that oscillators can cause
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`a ‘no-pulse condition, to which the switching circuit may detrimentally respond.’”
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`(Id. at ¶ 47.) I disagree.
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`4.
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`The portion in Ingraham I referred to by Dr. Cairns does not support
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`his analysis. As an initial matter, the portion of Ingraham I that Dr. Cairns refers
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`to is not discussing a problem in capacitive responsive systems using oscillators,
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`but rather, is referring to a problem in systems that are not truly capacitive
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`responsive but require physical contact. (Ex. 1007 at 1:10-38). One of ordinary
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`skill in the art would have understood from the portion referred to by Dr. Cairns
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`that Ingraham I’s touch detection circuit would not suffer from the prior art
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`3
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`Page 4 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`problems related to oscillator failure. Ingraham I states that the “circuits disclosed
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`in my patents are not subject to the catastrophic failure of erroneous output
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`switching caused by the failure of an oscillator.” (Ex. 1007, 1:39-47 (emphasis
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`added).) By “my patents,” Ingraham I means “U.S. Pat. Nos. 4,731,548 and
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`4,758,735.” (Id.) Therefore, one of ordinary skill in the art would have understood
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`that Ingraham I acknowledges that the touch detection circuit in U.S. 4,758,735
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`(which is Ingraham III, Ex. 1010) is “not subject to the catastrophic failure of
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`erroneous output switching caused by the failure of an oscillator.” But, as I
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`explained in my opening declaration (Ex. 1002), Ingraham III includes an
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`“oscillator circuit 30” that is coupled to an identical touch detection circuit as in
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`Ingraham I in a portable system. (Ex. 1010 at FIG. 1, 2:15-24; Ex. 1002 at ¶¶ 35,
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`36, 47, 48; Ex. 2010 at ¶ 59, “the detection circuit of Ingraham III is the same as
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`that in Ingraham I”; id. at ¶ 112 (same).) Therefore, in my opinion, one of
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`ordinary skill in the art would have recognized that Ingraham I does not teach
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`away from using an oscillator because Ingraham I’s touch detection circuit is
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`disclosed in Ingraham III (Ex. 1010, figure 1) coupled to an oscillator 30, and as
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`acknowledged by Ingraham I, there is no “catastrophic failure of erroneous output
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`switching caused by the failure of an oscillator” in Ingraham III.
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`5.
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`Dr. Cairns further contends that a person of skill in the art would not
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`have looked to Gerpheide because “[c]ontemporaneous prior art disclose that a
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`4
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`Page 5 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`person of skill in the art at the time of the invention would have no motivation to
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`combine Gerpheide with the Ingraham I-Caldwell system” and that “Gerpheide
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`teaches away from combination with mechanisms similar to Caldwell.” (Ex. 2010
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`at ¶¶ 97, 101.) According to Dr. Cairns, Gerpheide cites to Gerpheide ’017, which
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`in turn cites to Rympalski. (Id. at ¶¶ 97-101.) Dr. Cairns contends that Rympalski
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`(which allegedly is like Caldwell) disparages “the single-point touchpad of
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`Gerpheide” and Gerpheide ’017 distinguishes itself from Rympalski. (Id.) I
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`disagree for several reasons.
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`6.
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`First, Rympalski was
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`filed
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`in 1981 and
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`therefore,
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`is not
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`“contemporaneous” with the January 1996 filing date of the ’183 patent. A person
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`of ordinary skill in the art would have understood that the views in Rympalski
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`relied upon by Dr. Cairns would not necessarily apply to touch responsive systems
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`at the time of the alleged invention, i.e., around January 1996. This is especially
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`true because the statements in Rympalski that Dr. Cairns relies upon (Ex. 2010 at
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`¶ 101, citing Ex. 2012 at 2:7-17) discuss the shortcomings (e.g., considerable
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`power requirements, complex hardware, etc.) of certain devices in 1981. Dr.
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`Cairns provides no evidence to suggest that the same shortcomings existed in
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`January 1996.
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`7.
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`Second, Dr. Cairns does not contend and there is certainly no criticism
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`in Rympalski of any technique for measuring interference and changing the
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`5
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`Page 6 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`oscillator output frequency based on the measured interference in capacitive touch
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`responsive systems. In my opinion, Rympalski would not have dissuaded a person
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`of ordinary skill in the art from adopting a technique in a capacitive touch
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`responsive system that measures electrical interference and changing the oscillator
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`output frequency based on the measured interference to negate the detrimental
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`effect of electrical interference. As explained in my original declaration
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`(Ex. 1002), one of ordinary skill in the art would have looked to Gerpheide for its
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`teachings regarding electrical interference nullification in touch systems by
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`measuring interference and adjusting the oscillator output frequency based on the
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`measured interference. (Ex. 1002 at ¶¶ 69-72.) Therefore, Rympalski would not
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`have dissuaded one of ordinary skill in the art away from using Gerpheide’s
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`interference negation technique. Thus, in my opinion, the disclosure of Caldwell
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`(which Dr. Cairns contends is allegedly similar to Rympaski (Ex. 2010 at ¶ 100))
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`would not have persuaded one of ordinary skill in art from considering and
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`implementing Gerpheide’s interference negation features, as I explained in my
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`original declaration.
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`8.
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`Third, as I explained in my original declaration (Ex. 1002), each of
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`Ingraham I, Caldwell, and Gerpheide disclose capacitive touch responsive systems
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`that detect the location of a touch. (Ex. 1002 at ¶ 70.) Therefore, a person of
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`ordinary skill in the art would have had reason to look to the inter-related teachings
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`6
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`Page 7 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`of all three references regardless of whether they are single-point touch pads or not
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`to create a capacitive touch responsive system as I explained in my declaration,
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`given, for example, the various advantages offered by each of the three references.
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`(Id. at ¶¶ 61, 65, 66, 70, 72.)
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`III. Response to Incompatibility and Inoperability Arguments
`9.
`Dr. Cairns contends that Ingraham I’s touch detection circuits are
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`incompatible and would not work with “frequencies between 100 kHz and 200
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`kHz” as disclosed in Caldwell. (Ex. 2010 at ¶¶ 111-14.) Relying on column 18,
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`lines 1-33 in the ’183 patent, Dr. Cairns contends that the presence of “a capacitor
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`across the base of the detection transistor” and an alleged lack of a “diode selected
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`for high speed” would result in Ingraham I’s touch detection circuit not working at
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`higher frequencies such as between 100 kHz and 200 kHz. (Id.) I disagree.
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`10.
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`In my opinion, one of ordinary skill in the art would have understood
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`that Ingraham I’s touch detection circuit would not have been rendered inoperable
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`simply because of the presence of a capacitor across the base of transistor 50. (See,
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`e.g., Ex. 1007 at FIG. 3, capacitor 47 across the base-emitter junction of transistor
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`50.) This is confirmed by the ’183 patent. Specifically, the ’183 patent discloses
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`“touch circuits 1400a and 1400b” in figure 13 that operate at “at least 800 kHz.”
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`(Ex. 1001 at 19:15-25, FIG. 13.) But the touch circuit 1400a has a capacitor 1416a
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`across its base-emitter junction just like figure 3 in Ingraham I. (Ex. 1001, FIG. 13
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`7
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`Page 8 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`(annotated below).) Hence, the portion of the ’183 patent cited by Dr. Cairns (i.e.,
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`Ex. 1001 at 18:1-33) could not have meant that omission of a capacitor across the
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`base-emitter was an absolute necessity for operation at higher frequency. Rather,
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`one skilled in the art would have understood that the cited portion in the ’183
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`patent indicates that additional characteristics (e.g., “more sensitive” and “operable
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`with lower oscillator amplitude”) could result from the use of a high speed diode
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`and capacitor omission in that circuitry arrangement.
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`8
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`Page 9 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`(Ex. 1001 at FIG. 13 (annotated) to show the conductors coupled to the base and
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`emitter of transistor 1420a, and capacitor 1416(a) across the base-emitter junction
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`of transistor 1420a.)
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`11. Touch circuit 1400a includes the same three components (a resistor,
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`diode, and capacitor) across the base-emitter junction of transistor 1420a as
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`transistor 50 in Ingraham I. (Compare Ex. 1001, FIG. 13, with, Ex. 1007, FIG. 3.)
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`Therefore, in contrast to what Dr. Cairns opined, one of ordinary skill in the art at
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`the time of the alleged invention would have understood that the mere presence of
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`a capacitor across the base of transistor 50 in Ingraham I would not have rendered
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`the circuit of figure 3 in Ingraham I inoperable at higher frequencies such as those
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`disclosed in Caldwell.
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`12. Finally, Dr. Cairns’ reference to the absence of a high speed diode in
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`Ingraham I (Ex. 2010, ¶¶ 112-13) is not supported by the record. This is because
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`the cited portion of the ’183 patent (i.e., Ex. 1001 at 18:1-33) at best suggests that
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`the circuit in Ingraham III may not have a high speed diode. But there is no
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`mention in the cited portion that Ingraham I also does not have a high speed diode.
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`(Ex. 1001 at 18:1-33) Regardless, as I have previously opined, “it would have
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`been simple and straightforward for one of ordinary skill in the art to configure the
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`combined system of Ingraham I-Caldwell to function with an oscillator frequency
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`with higher frequency values such as those greater than 100 kHz or 200 kHz.”
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`9
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`Page 10 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`(Ex. 1002 at ¶ 98.) Dr. Cairns’ opinions do not take into account that one of
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`ordinary skill in the art at the time of the alleged invention would have understood
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`and would have the capability to select the right component values (e.g., speed,
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`size, impedance) to allow operation at a certain frequency, including selecting a
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`diode that operates at the necessary speed for the circuit to function at a high
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`frequency.
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`13. Dr. Cairns further contends that the presence of the capacitor and
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`diode in touch detection circuit of Ingraham I would have also resulted in a user of
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`the system suffering “an electric shock.” (Ex. 2010 at ¶ 114, “[i]f these changes
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`had not been made . . . any user would suffer an electric shock . . . .”) In my
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`opinion, I do not find any support in the ’183 patent, and I do not see any
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`explanation from Dr. Cairns in his declaration that suggests that the omission of
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`the capacitor and use of a high speed diode in the touch detection circuit of
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`Ingraham I were necessary to prevent an electric shock. In my opinion, a user
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`would not have suffered an electric shock if Ingraham I’s touch detection circuitry
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`operated at a high frequency (e.g., between 100 kHz and 200 kHz) because of the
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`presence of resistors 44 and 46 in the current path between the 115 V oscillator
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`voltage and the plate member 18 where the user would touch. (Ex. 1007 at FIG. 3,
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`3:61-64.) A person of ordinary skill in the art would have understood that the
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`resistance values of resistors 44 and 46 would have been extremely high in order to
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`10
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`Page 11 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`ensure that very little current flows to the user when the user touches plate
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`member, and, as such, the resulting voltage present at a user’s finger would also be
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`exceedingly low due to the resulting resistive divider formed by the high value of
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`the aforementioned resistors and the impedance of the human touch. One of
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`ordinary skill in the art would have understood from reviewing the disclosures of
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`these references that Ingraham II, which has the same touch detection circuitry at
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`Ingraham I, confirms that “resistors 44 and 46 . . . each have a value of 4.7
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`megaohms which provides isolation between touch plate 12 and supply line 30 so
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`that no harmful electric current can be supplied to a person touching plate 12.”
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`(Ex. 1008 at 3:16-21; Ex. 1002 at ¶ 34, explaining that Ingraham I incorporates by
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`reference the teachings of Ingraham II relating to the control circuit 14.) This
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`safety function served by resistors 44 and 46 would have remained the same
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`regardless of whether Ingraham I’s touch detection circuit is operated at 60 Hz or
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`between 100-200 kHz.
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`14. Dr. Cairns also contends that “the interference algorithm in Gerpheide
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`would not work in the Ingraham I-Caldwell system” because “the drift in position
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`used to determine interference would not work with” a system having “an array of
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`pads.” (Ex. 2010 at ¶ 117.) I disagree. In my opinion, Dr. Cairns’ general
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`statement ignores the embodiment of Gerpheide in which “the interference
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`evaluation function 106 is not based on position signals.” (Ex. 1012 at 9:8-16; Ex.
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`11
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`Page 12 of 13
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`Rebuttal Declaration of Dr. Vivek Subramanian
`U.S. Patent No. 5,796,183
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`1002 at ¶ 71, citing Ex. 1012 at 8:22-9:33.) Gerpheide would have adequately
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`disclosed to a person of ordinary skill in the art how to measure interference and
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`adjust the oscillator frequency to negate interference, and the person of ordinary
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`skill would have been able to apply these teachings to the combined Ingraham I-
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`Caldwell system as I explained in my original declaration (see e.g., Ex. 1002, at ¶¶
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`70-73).
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`IV. CONCLUSION
`15.
`I declare that all statements made herein of my knowledge are true, and
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`that all statements made on information and belief are believed to be true, and that these
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`statements were made with the knowledge that willful false statements and the like so
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`made arc punishable by fine or imprisonment, or both, under Section 1001 of Title 18
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`of the United States Code.
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`Dated: April 30, 2017
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`Vivek Subramanian
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`12
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`Page 13 of 13
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