Paper No. __
`Filed: May 8, 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
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`

`

`
`I.
`
`II.
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`IPR2016-00908
`Patent No. 5,796,183
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`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`The Evidence Shows That Claims 40, 41, 43, 45, 47, 48, 61-67, 69,
`83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 Are Unpatentable ................. 1
`
`A. A POSITA Would Have Combined the Teachings of Ingraham
`I, Caldwell and Gerpheide .................................................................... 1
`
`1.
`
`2.
`
`Reasons to Combine Caldwell with Ingraham I ......................... 1
`
`Reasons to Combine Gerpheide with Caldwell and
`Ingraham I ................................................................................... 5
`
`B. A POSITA Would Have Expected Reasonable Success in
`Combining the Teachings of Ingraham I, Caldwell and
`Gerpheide .............................................................................................. 8
`
`1.
`
`2.
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`Ingraham I & Caldwell Combination ......................................... 8
`
`Ingraham I, Caldwell, and Gerpheide Combination ................ 13
`
`C. When Viewed as A Whole, the Combined Ingraham I-
`Caldwell-Gerpheide System Discloses or Suggest All Claimed
`Features................................................................................................ 14
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Claim Element 40(a) ................................................................. 14
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`Claim Element 40(b) ................................................................. 15
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`Claim Element 40(c) ................................................................. 17
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`Claim Element 40(d) ................................................................. 19
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`Claim Element 40(e) ................................................................. 21
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`Independent Claims 61, 83, and 94 ........................................... 23
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`Dependent Claims 41, 43, 45, 64-67, 69, 85, 86, 88, 90,
`91, 96, 97, 99, 101, 102 ............................................................. 23
`
`III. Claims 47, 48, 62, 63 and 84 Are Unpatentable .......................................... 25
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`IPR2016-00908
`Patent No. 5,796,183
`Patent No. 5,796,183
`IV. CONCLUSION .............................................................................................. 28
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`IPR2016-00908
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`IV.
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`CONCLUSION ............................................................................................ ..28
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`TABLE OF AUTHORITIES
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`IPR2016-00908
`Patent No. 5,796,183
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`
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`Page(s)
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`
`
`Cases
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992)..............................................................................................6, 25
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007)................................................................................................11
`
`In re Keller,
`642 F.2d 413 (Fed. Cir. 1986)..............................................................................................4, 24
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`iii
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`Exhibit
`No.
`1001 U.S. Patent No. 5,796,183 including reexamination
`certificates issued on April 29, 2013 and June 27, 2014
`1002 Declaration of Dr. Vivek Subramanian
`1003
`Curriculum Vitae of Dr. Vivek Subramanian
`1004
`Prosecution History of U.S. Patent No. 5,796,183
`1005
`Prosecution History of Reexamination Control No.
`90/012,439
`Prosecution History of Reexamination Control No.
`90/013,106
`1007 U.S. Patent No. 5,087,825 to Ingraham (“Ingraham I”)
`1008 U.S. Patent No. 4,731,548 to Ingraham (“Ingraham II”)
`1009 U.S. Patent No. 5,594,222 to Caldwell (“Caldwell”)
`1010 U.S. Patent No. 4,758,735 to Ingraham (“Ingraham III”)
`1011 Walker, Fundamentals of Projected-Capacitive Touch
`Technology (2014)
`1012 U.S. Patent No 5,565,658 to Gerpheide et al.
`(“Gerpheide”)
`Patent Owner’s Infringement Contentions for the ’183
`patent
`Patent Owner’s Opening Claim Construction Brief
`1014
`1015 U.S. Patent No 5,341,036 to Wheeler et al. (“Wheeler”)
`1016 U.S. Patent No. 5,572,205 to Caldwell et al. (“Caldwell
`’205”)
`Rebuttal Declaration of Dr. Vivek Subramanian
`1017
`1018 Deposition of Dr. Darran Cairns, April 21, 2017
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`IPR2016-00908
`Patent No. 5,796,183
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`Previously
`Submitted
`X
`X
`X
`X
`X
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`X
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`X
`X
`X
`X
`X
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`X
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`X
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`X
`X
`X
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`LIST OF EXHIBITS
`
`Description
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`1006
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`1013
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`
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`iv
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`IPR2016-00908
`Patent No. 5,796,183
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`Introduction
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`
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`I.
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`Petitioner Samsung Electronics Co., Ltd. (“Petitioner”) submits
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`the
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`following reply to the Patent Owner UUSI’s (“UUSI”) Response (Paper No. 21,
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`“Response”) taking into account the Board’s decision to institute inter partes
`
`review (Paper No. 12, “Decision”) of U.S. Patent No. 5,796,183 (“the ’183
`
`patent”). UUSI’s arguments should be rejected and challenged claims 40, 41, 43,
`
`45, 47, 48, 61-67, 69, 83-86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 of the ’183
`
`patent found unpatentable and canceled for at least the reasons set forth in the
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`Petition (Paper No. 2) and accompanying exhibits, the Institution Decision, cross-
`
`examination testimony, and the additional reasons below.
`
`II. The Evidence Shows That Claims 40, 41, 43, 45, 47, 48, 61-67, 69, 83-86,
`88, 90, 91, 94, 96, 97, 99, 101, and 102 Are Unpatentable
`A. A POSITA Would Have Combined the Teachings of Ingraham I,
`Caldwell and Gerpheide
`
`UUSI contends that a POSITA would not have been motivated to combine
`
`the teachings of Ingraham I, Caldwell and Gerpheide to achieve the claimed
`
`invention. (Response, 19.) This is incorrect for at least the reasons set forth in the
`
`Petition (Petition, 16-18, 23-29, 44-47) and the following reasons.
`
`1.
`Reasons to Combine Caldwell with Ingraham I
`Addressing the combination of Ingraham I and Caldwell, UUSI initially
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`1
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`contends that Ingraham I discloses an “elementary” circuit that has large spaced
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`apart touch pads with guard bands. (Response, 20-21.) But even if UUSI’s
`
`allegations were assumed true (they are not1), UUSI does not explain or present
`
`evidence why such features would have prevented or dissuaded a POSITA from
`
`modifying the device in Ingraham I based on the teachings of Caldwell. (Id.)
`
`Indeed, a POSITA would have been motivated to combine the teachings of
`
`Ingraham I and Caldwell. (See, e.g., Petition, 16-18, 23-26, 44-47; Decision, 15-
`
`19.)
`
`Relying on Dr. Cairns’ testimony, UUSI next contends that “Ingraham I
`
`teaches away from using an oscillator and in fact eliminates it altogether.”
`
`(Response, 20; Ex. 2010,¶¶47, 92.) Specifically, Dr. Cairns contends that,
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`“Ingraham I explains that oscillators can cause a ‘no-pulse condition, to which the
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`switching circuit may detrimentally respond.’” (Id.,¶47, citing Ex.1007, 1:28-48.)
`
`
`
` 1
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` For example, Ingraham I is not simply related to a “circuit designed for an
`
`appliance such as a lamp” (Response, 20), but rather discloses an invention
`
`especially adapted for a keyboard made up of capacity responsive switches for
`
`controlling device, such as an electric motor. (Petition, 15; Ex.1007, 1:5-9, 2:32-
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`2
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`35, 3:45-47.)
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`Patent No. 5,796,183
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`This is incorrect.
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`First, the portion of Ingraham I that Dr. Cairns relies upon does not discuss a
`
`problem in capacitive responsive systems using oscillators, but rather, refers to a
`
`problem in systems that are not truly capacitive responsive but require physical
`
`contact. (Ex.1007, 1:10-38; Ex.1017,¶4). Moreover, Ingraham I does not teach
`
`away from using an oscillator as evidenced by Ingraham III. Ingraham III
`
`includes an “oscillator circuit 30” that is coupled to an identical touch detection
`
`circuit as in Ingraham I in a portable system. (Ex.1010, FIG. 1, 2:15-24;
`
`Ex.1002,¶¶ 35, 36, 47, 48; Ex. 2010,¶ 59, “the detection circuit of Ingraham III is
`
`the same as that in Ingraham I”; id.,¶112 (same).) Ingraham I states that the
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`“circuits disclosed in my patents are not subject to the catastrophic failure of
`
`erroneous output switching caused by the failure of an oscillator.” (Ex.1007, 1:39-
`
`47 (emphasis added).) As acknowledged by Dr. Cairns, “my patents,” refers to
`
`“U.S. Pat. Nos. 4,731,548 and 4,758,735.”
`
` (Id.; Ex.1018, 89:20-90:15.)
`
`Therefore, Ingraham I acknowledges that Ingraham I’s touch detection circuit
`
`when coupled to an oscillator as disclosed in U.S. 4,758,735 (i.e., Ingraham III
`
`(Ex.1010) is “not subject to the catastrophic failure of erroneous output switching
`
`caused by the failure of an oscillator.” (See also Ex.1017,¶4.)
`
`UUSI’s contention regarding the inoperability of Ingraham I’s circuit at high
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`frequencies and an alleged electric shock to the user (Response, 20-21) is incorrect
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`for reasons discussed below in Section II.B.1.
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`UUSI’s “second” and “third” arguments can be dismissed because they are
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`not responsive to the analysis set forth in the Petition and Institution Decision and
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`constitute an individual attack on Ingraham I and Caldwell. (Response, 21-22.)
`
`Petitioner explained that a POSITA would have been motivated to modify
`
`Ingraham I based on Caldwell in order to provide an oscillator to generate a
`
`periodic signal to allow the system of Ingraham I to function in a portable system,
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`to reduce the number of I/O pins on the microcomputer 80 from 16 to 5 thereby
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`providing a more compact and resilient device, etc. (See, e.g., Petition, 16-18, 23-
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`26.) Petitioner further explained that Caldwell acknowledged the problem of
`
`cross-talk due to contaminates such as water and given the knowledge of one of
`
`ordinary skill that a higher frequency would alleviate this problem, a POSITA
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`would have been found it obvious to optimize the oscillator frequency as well as
`
`substitute the 60 Hz oscillator signal frequency disclosed in Ingraham I with
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`higher oscillator frequency values (e.g., greater than 100 kHz or 200 kHz)
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`disclosed by Caldwell. (Petition, 44-47.) UUSI’s piecemeal arguments should be
`
`dismissed because they do not address Petitioner’s above analysis and are not
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`responsive to the reasons to combine set forth in the Petition. In re Keller, 642
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`F.2d 413 (Fed. Cir. 1986).
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`UUSI’s “fourth” argument (Response, 22-23) can be dismissed because as
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`demonstrated by the Petition and recognized by the Institution Decision, the
`
`Petition sets forth adequately how the combined Ingraham I-Caldwell system
`
`discloses a microcontroller that uses the periodic output signal from the oscillator
`
`and selectively provides it to the touch terminals. (Petition, 22-27; Decision, 16-
`
`19.)
`
`2.
`
`Reasons to Combine Gerpheide with Caldwell and Ingraham
`I
`
`UUSI contends that a POSITA would not have been motivated to combine
`
`the teachings of Gerpheide, Caldwell, and Ingraham I. (Response, 23-26.) This is
`
`incorrect.
`
`UUSI contends that Gerpheide was “directed to reducing electrical
`
`interference on a single-point touchpad, a problem that is entirely different from
`
`that being addressed by the ‘183 Patent.” (Id., 23.)2 But Gerpheide addresses
`
`subject matter (i.e., capacitive touch responsive system) addressed by the ’183
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`patent and a POSITA would have therefore considered its teachings. (See, e.g.,
`
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` Moreover, Dr. Cairns does not provide any support for his conjecture that UUSI
`
` 2
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`relies upon. (Ex. 2010,¶96; Response, 23.)
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`Ex.1001, claim 40 (preamble); Petition, 27; Ex.1002,¶¶70,71.) See In re Clay, 966
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`F.2d 656, 658–59 (Fed. Cir. 1992).
`
`UUSI next contends that a person of skill in the art would not have looked to
`
`Gerpheide because “[c]ontemporaneous prior art disclose that a person of skill in
`
`the art at the time of the invention would have no motivation to combine
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`Gerpheide with the Ingraham I-Caldwell system” and that “Gerpheide teaches
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`away from combination with mechanisms similar to Caldwell.” (Response, 23-
`
`25.) UUSI relies on a tenuous relationship of citations to other patents to support
`
`its position. According to UUSI, Gerpheide cites to Gerpheide ’017, which in turn
`
`cites to Rympalski. (Id.) UUSI alleges that Rympalski is like Caldwell and
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`disparages “the single-point touchpad of Gerpheide” and Gerpheide ’017
`
`distinguishes itself from Rympalski. (Id.) But as explained below, Gerpheide does
`
`not teach away from Caldwell as UUSI contends.
`
`First, UUSI’s analysis is highly attenuated and cannot show that Rympalski
`
`(even assuming arguendo that Rympalski is like Caldwell) teaches away from
`
`Gerpheide because Rympalski does not even cite to Gerpheide. It cannot because
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`it was filed in 1981, more than a decade before Gerpheide’s filing date. In any
`
`event, Rympalski is not “contemporaneous” with the January 1996 filing date of
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`the ’183 patent given its 1981 filing date. A POSITA would have understood that
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`the views in Rympalski relied upon by Dr. Cairns would not necessarily apply to
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`touch responsive systems at the time of the alleged invention, i.e., around January
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`1996. (See Ex.1017,¶¶5-6.) This is especially true because the statements in
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`Rympalski that UUSI and Dr. Cairns rely upon (Response, 23-25; Ex. 2010,¶101,
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`citing Ex. 2012, 2:7-17) discuss the shortcomings (e.g., considerable power
`
`requirements, complex hardware, etc.) of certain devices in 1981. UUSI and Dr.
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`Cairns provide no evidence to support the position that the same shortcomings
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`existed for the device disclosed in Gerpheide around January 1996 (the filing date
`
`of the ’183 patent). (See also Ex.1017,¶6.)
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`Second, as explained by Petitioner and Dr. Subramanian, a POSITA looking
`
`to improve the combined Ingraham I-Caldwell system would have considered
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`Gerpheide for its teachings regarding electrical interference nullification in touch
`
`systems by measuring interference and adjusting the oscillator output frequency
`
`based on the measured interference. (Petition, 27-29; Ex.1002,¶¶ 69-72.) UUSI
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`does not contend and there is certainly no criticism in Rympalski of any technique
`
`for measuring interference and changing the oscillator output frequency based on
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`the measured interference in capacitive touch responsive systems. (See generally
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`Exs. 2010, 2012.) Therefore, Rympalski would not have dissuaded one of ordinary
`
`skill in art from considering and implementing Gerpheide’s interference negation
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`features in the combined Ingraham I-Caldwell system. (See also Ex.1017,¶7.)
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`Third, as explained by Petitioner, each of Ingraham I, Caldwell, and
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`Gerpheide disclose capacitive touch responsive systems that detect the location of
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`a touch. (Petition, 27; Ex.1002,¶70.) Therefore, a POSITA would have looked to
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`the inter-related teachings of all three references regardless of whether they are
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`single-point touch pads or not to create a capacitive touch responsive system given
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`the advantages of
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`the combined Ingraham I-Caldwell-Gerpheide system.
`
`(Ex.1002,¶¶61, 65, 66, 70, 72.) (See also Ex.1017,¶8.)
`
`B. A POSITA Would Have Expected Reasonable Success
`in
`Combining the Teachings of Ingraham I, Caldwell and Gerpheide
`1.
`UUSI and Dr. Cairns contend that a POSITA would not have a reasonable
`
`Ingraham I & Caldwell Combination
`
`expectation of success in combining the teachings of Ingraham I and Caldwell.
`
`(Response, 27-30; Ex. 2010,¶¶108-14.)
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` Specifically, UUSI contends that
`
`Ingraham I’s touch detection circuitry would have been inoperable at Caldwell’s
`
`frequency of “between 100 kHz to 200 kHz” and “any user would suffer an electric
`
`shock if they were to attempt to operate this hypothetical system.” (Id.) UUSI
`
`bases its argument on column 18, lines 1-35 of the ’183 patent and contends that
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`the presence of “a capacitor across the base of the detection transistor” and an
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`alleged lack of a “diode selected for high speed” would result in Ingraham I’s
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`touch detection circuit being inoperable at higher frequencies such as between 100
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`kHz and 200 kHz. (Id.) This is incorrect both technically and legally.
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`UUSI’s above argument is technically flawed. Ingraham I’s touch detection
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`circuit would not have been rendered inoperable simply because of the presence of
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`a capacitor across the base of transistor 50. (See, e.g., Ex.1007, FIG. 3, capacitor
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`47 across the base-emitter junction of transistor 50; see also Ex.1017,¶¶9-12.) This
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`is confirmed by the ’183 patent, which discloses touch circuits that operate at high
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`frequencies that include such a capacitor . As acknowledged by Dr. Cairns, the
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`’183 patent discloses “touch circuits 1400a and 1400b” in figure 13 that operate at
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`“at least 800 kHz.” (Ex.1001, 19:15-25, FIG. 13; Ex.1018, 55:1-56:18.) But the
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`touch circuit 1400a has a capacitor 1416a across its base-emitter junction just like
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`figure 3 in Ingraham I. (Ex.1001, FIG. 13 (annotated below).)
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`(Ex.1017,¶10; Ex.1001 at FIG. 13 (annotated) to show the conductors coupled to
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`the base and emitter of transistor 1420a, and capacitor 1416(a) across the base-
`
`emitter junction of transistor 1420a.)
`
`Hence, the portion of the ’183 patent cited by Dr. Cairns (i.e., Ex.1001,
`
`18:1-33) does not mean that omission of a capacitor across the base-emitter was an
`
`absolute necessity for operation at higher frequency. Indeed, touch circuit 1400a
`
`includes the same three components (a resistor, diode, and capacitor) across the
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`base-emitter junction of transistor 1420a as transistor 50 in Ingraham I. (Compare
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`Ex.1001, FIG. 13, with, Ex.1007, FIG. 3; see also Ex.1017,¶11.)
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`Further, UUSI and Dr. Cairns’ reference to the absence of a high speed
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`diode in Ingraham I Response, is not supported by the ’183 patent. (Response, 29;
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`Ex. 2010,¶¶ 112-13.) This is because the cited portion of the ’183 patent (i.e.,
`
`Ex.1001, 18:1-33) does not mention that Ingraham I lacks a high speed diode, and
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`UUSI fails to provide evidence to support that it does not. (Ex.1001, 18:1-33.)
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`In addition to the above technical flaws, UUSI’s arguments are legally
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`flawed in that they “ignore the modifications that one skilled in the art would make
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`to a device borrowed from the prior art.” In re ICON Health & Fitness, Inc., 496
`
`F.3d 1374, 1382 (Fed. Cir. 2007). UUSI’s argument does not take into account
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`that a POSITA at the time of the alleged invention would have understood and
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`would have the capability to select the right component values (e.g., speed, size,
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`impedance) to allow operation at a certain frequency, including selecting a diode
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`that operates at the necessary speed for the circuit to function at a high frequency.
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`(Ex.1002,¶98; see also Ex.1017,¶12.) That a POSITA would have had such
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`capability is acknowledged by both the ’183 patent and Dr. Cairns. (Ex.1001,
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`18:10-13, explaining that a POSITA would have known how to “make appropriate
`
`choices in component values” to allow operation at higher frequencies; Ex.1018,
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`53:7-54:25, acknowledging that it was “routine” to adjust the value of circuit
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`components to obtain a desired frequency operation.)
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`UUSI’s final argument that the presence of the capacitor and diode in touch
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`detection circuit of Ingraham I would have resulted in a user of the Ingraham I-
`
`Caldwell system suffering “an electric shock” is also incorrect. (Response, 29,
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`citing Ex.1001, 18:1-35; Ex. 2010,¶114.) The cited portion of the ’183 patent (i.e.,
`
`18:1-35) or the ’183 patent as a whole does not disclose that the omission of the
`
`capacitor and use of a high speed diode in the touch detection circuit of Ingraham I
`
`were necessary to prevent an electric shock. (See also e.g., Ex.1017,¶13.)
`
`Moreover, a user would not have suffered an electric shock if Ingraham I’s touch
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`detection circuitry as modified in combination with Caldwell and Gerpheide
`
`operated at a high frequency (e.g., between 100 kHz and 200 kHz) because
`
`resistors 44 and 46 in Ingraham I’s circuit would protect the user from harmful
`
`current. (Ex.1007, FIG. 3, 3:61-64; see also Ex.1017,¶13.) Indeed, UUSI ignores
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`that Ingraham II, which has the same touch detection circuitry at Ingraham I,
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`confirms that “resistors 44 and 46 . . . each have a value of 4.7 megaohms which
`
`provides isolation between touch plate 12 and supply line 30 so that no harmful
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`electric current can be supplied to a person touching plate 12.” (Ex.1008, 3:16-
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`21; Ex.1002,¶ 34, explaining that Ingraham I incorporates by reference the
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`teachings of Ingraham II relating to the control circuit 14.) This safety function
`12
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`served by resistors 44 and 46 would have remained the same regardless of whether
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`Ingraham I’s touch detection circuit is operated at 60 Hz or between 100-200 kHz.
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`(Ex.1017,¶13.)
`
`Ingraham I, Caldwell, and Gerpheide Combination
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`2.
`UUSI contends that “[a] person of skill in the art would understand that
`
`Gerpheide would not work with multiple individual touch pads because Gerpheide
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`ties all electrodes together to form a single electrode” and “sends the same
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`frequency to all rows or columns of the touch pad at the same time.” (Response,
`
`30-31.) As the Board recognized in the Institution Decision, this argument is
`
`inapplicable to the combination set forth in the Petition, which is that the
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`“microcomputer of Ingraham I uses Caldwell’s sequential scanning to selectively
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`provide each of Gerpheide’s signal output frequencies.” (Decision, 22-23;
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`Petition, 26-29.)
`
`UUSI also contends that “the interference algorithm in Gerpheide would not
`
`work in the Ingraham I-Caldwell system” because “the drift in position used to
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`determine interference would not work with” a system having “an array of pads.”
`
`(Response, 31.) But this ignores the disclosure in Gerpheide where “the
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`interference evaluation function 106 is not based on position signals.” (Ex.1012,
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`9:8-16; Pet. 28; Ex.1002,¶71, citing Ex.1012, 8:22-9:33.) Gerpheide would have
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`adequately disclosed to a POSITA how to measure interference and adjust the
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`oscillator frequency to negate interference, and such a person would have been
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`able to apply these teachings to the combined Ingraham I-Caldwell system. (See
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`e.g., Pet., 27-29; Ex.1002,¶¶70-73; see also Ex.1017,¶14.)
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`UUSI’s last argument that “it would not be possible to sequence through
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`each touch pad and there would be no benefit of using multiple frequencies to
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`differentiate between neighboring touch pads as disclosed in the ’183 Patent”
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`(Response, 31) is misplaced. First, the sequential scanning in the combined system
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`is carried out by the combination of Ingraham I and Caldwell. (Decision, 22-23;
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`Petition, 26-29.) Second, utilizing a varying oscillator frequency to nullify
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`electrical interference without expensive nulling circuitry was certainly a benefit
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`that would have motivated a POSITA to modify the combined Ingraham I-
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`Caldwell system using Gerpheide. (Ex.1002,¶¶70-72.)
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`C. When Viewed as A Whole, the Combined Ingraham I-Caldwell-
`Gerpheide System Discloses or Suggest All Claimed Features
`1.
`Claim Element 40(a)3
`UUSI’sole argument is that there would not have been any motivation to
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` Petitioner refers to UUSI’s numbering of claim elements, which differs from the
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`numbering provided in the Petition.
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`combine Ingraham I and Caldwell, and that the combined system would have been
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`inoperable. (Response, 33.) But as discussed above (see II.A.1 and II.B.1),
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`UUSI’s arguments should be rejected.
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`2.
`Claim Element 40(b)
`UUSI initially contends that Caldwell does not “selectively” provide signal
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`output frequencies to the array of touch pad terminals. (Response, 34-36.) But
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`then UUSI immediately acknowledges that Caldwell does “send[] the same
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`frequency . . . sequentially to every row.” (Id.) UUSI also acknowledges that
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`Petitioner relied on Gerpheide for the disclosure of multiple frequencies as recited
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`in claim element 40(b). (Id.)
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`UUSI further contends that Gerpheide is distinct from “multiple touch input
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`systems or closely spaced dense arrays of touchpads” and refers back to its analysis
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`in Sections V.A. and V.B. (Response, 36-37.) UUSI’s arguments should be
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`rejected for the reasons discussed above in sections II.A.2 and II.B.2. As
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`explained by Dr. Subramanian, each of Ingraham I, Caldwell, and Gerpheide
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`disclose capacitive touch responsive systems that detect the location of a touch,
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`and therefore, a POSITA would have looked to Gerpheide for interference
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`negation features that can be applied to capacitive touch responsive systems such
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`as those disclosed in Ingraham I and Caldwell. (Petition, 27-29; Ex.1002,¶¶70-
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`72.) UUSI also repeats the same argument that the Board previously rejected
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`because it is not responsive to the Petition’s analysis. (Response, 37, “Gerpheide .
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`. . can only send one frequency to the entire touch pad” and does not disclose
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`“selectively” sending a frequency to each row; Decision, 22-23.)
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`Finally, UUSI draws several distinctions between the combined Ingraham I-
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`Caldwell-Gerpheide system and the ’183 patent. (Response, 37-38.) For instance,
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`UUSI contends that “the ‘183 Patent allows for a different frequency to be sent
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`selectively to each row,” and “Gerpheide . . . is distinct from the ‘183 Patent,
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`which is able to change the frequencies each time they are sent.” (Id.) But as
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`explained in the Petition, the combined Ingraham I-Caldwell-Gerpheide system
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`changes the oscillator frequency and provides different frequencies to the touch
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`pad array based on interference measurements. (Petition, 27-29; Ex.1002,¶¶70-
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`72.) To the extent UUSI is arguing that each row of the touch pad must receive a
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`different frequency during a single scan operation, such a limitation is not recited
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`in claim 40(b) and UUSI never pursued a construction requiring such features.
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`Indeed, UUSI’s attempt at this narrow interpretation is rebutted by claim 45 of the
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`’183 patent, which depends from claim 40, and confirms that the frequency
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`provided to each row can be the same. (Ex.1001, claim 45, “each signal output
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`frequency selectively provided to each row . . . has a same Hertz value.”)
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`Claim Element 40(c)
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`3.
`UUSI contends that input portions 13 in Ingraham I are not “in a close
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`array4 because they require the use of guard rings in order to function properly.”
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`(Response, 39.) This is incorrect.
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`First, Petitioner explained that input portions 13 in Ingraham I form “a
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`closely spaced array of input touch terminals” because they are disclosed as being
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`in a physically close array, such as a keyboard. (Petition, 20-21; Ex.1002,¶55;
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`Ex.1007, 1:5-9, 1:50-54, FIG. 1.)
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`(Id., FIGS. 1, 2 (annotated); Ex.1002,¶ 29.)
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` The “closely spaced array” limitation is not recited in claim 40. It is, however,
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`recited in other independent claims (83, 94).
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`Second, as the Board recognized, input touch terminals having guard bands
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`can still meet the claimed limitation of “closely spaced array of input touch
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`terminals of a keyboard.” (Decision, 10-11, 21-22.) Indeed, there is no
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`requirement in the claims that excludes touch terminals having guard bands or
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`rings nor does the ’183 patent specification provide a definition of a “closely
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`spaced array” that excludes terminals with guard rings.5 Contrary to UUSI’s
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`allegation of the lack of use of guard rings in the ’183 patent, an embodiment of
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`the ’183 patent discloses a touch terminal with a guard band 460. (Ex.1001, 7:21-
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`24, 15:48-53, FIG. 4.)
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`Third, the ’183 patent refers to Ingraham I and notes that the “these methods
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`(guard rings . . .) have gone a considerable way in allowing touch switches to be
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`spaced in comparatively close proximity . . . .” (Ex.1001, 4:3-16 (emphasis
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`added).) Furthermore, the ’183 patent supports that Ingraham I’s input portions 13
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` During his deposition, Dr. Cairns would only define “closely spaced” in the
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`negative, i.e., what would not be closely spaced, and was unable to provide any
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`insight as to what spacing between touch terminals would be sufficient for the
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`touch terminals to constitute a “closely spaced” array of touch terminals.
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`(Ex.1017, 71:3-73:20.)
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`form a “closely spaced array” because they form a “keyboard.” (See Ex.1001, 3:29
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`(“dense array such as a keyboard”), 5:57 (“physically close array such as a
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`keyboard”).)
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`UUSI and Dr. Cairns use the same faulty analysis above to argue that
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`Ingraham I’s input touch portions are not small, i.e., because they have guard
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`rings. (Response, 39.) For the same reasons as above, this argument should be
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`rejected because the claims do not exclude touch terminals having guard rings and
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`the ’183 patent contradicts UUSI’s allegations of a lack of guard rings. Moreover,
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`as noted in the Petition, the ’183 patent confirms that touch terminals that are size
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`of user’s finger are “small sized.” (Petition, 21, citing Ex.1001, 6:1-3.) Input
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`portions 13 in Ingraham I are finger sized (id., citing Ex.1002,¶55), which UUSI
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`does not dispute. Therefore, input portions 13 are “small sized” in the context of
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`the ’183 patent.
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`Claim Element 40(d)
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`4.
`UUSI’s “first” argument (Response, 42) should be dismissed for reasons
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`discussed in sections II.A.1 and II.B.1. UUSI’s “second” argument (id., 43) should
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`also be dismissed because Ingraham I can discriminate between intentional and
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`unintentional touches as the Board found. (Decision, 24-25.)
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`Moreover, UUSI’s argument that Ingraham I cannot generate the claimed
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`“control output signal” only “when the operator is proximal or touches said
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`second touch terminal after the operator is proximal or touches said first
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`touch terminal” (Response, 43 (emphasis added)) is based on claim language not
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`recited in claim element 40(d), and therefore should be dismissed.6
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`UUSI’s “third argument” is that “Ingraham I is not able to detect when an
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`operator is proximal, and at the same time, have the touch pads be small-sized or
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`closely spaced.” (Response, 43.) But as discussed above in section II.C.3, the
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`input portions 13 in Ingraham I are small-sized and formed a closed spaced array.
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`Moreover, UUSI’s argument that “Ingraham I is not able to detect when an
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` Claims 83 and 94 recite generation of the control signal “when the operator is
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`proximal or touches said second touch terminal after the operator is proximal or
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`touches said first touch terminal.” As the Board recognized and the Petition
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`explained, Ingraham I discloses this feature. (Decision, 26; Petition, 52-54;
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`Ex.1002,¶¶84, 118, 127.) To the extent UUSI contends that claims 83 and 94
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`require generation of the control signal only after the touching of two touch
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`terminals, that is a feature not recited in claims 83 and 94. This is confirmed by
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`claim 84, which depends from claim 83 and recites the generation of the control
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`signal only after the touching of two touch terminals.
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